DETAILED ACTION – REFUSAL
NOTICE OF PRE-AIA OR AIA STATUS
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
RESTRICTION – APPLICANT’S ELECTION
Applicant has elected Group V. Groups I – IV and VI are withdrawn from further consideration by the examiner, as per 37 CFR 1.142(b), as being for the nonelected design. Election was made without traverse in the reply filed on October 1, 2025.
OBJECTIONS
Title
The title is objectionable. The title is written in such a way that it could lead to confusion and misunderstanding, as it could suggest that there are other embodiments that are not shown in the current design disclosure. The examiner reminds the applicant that statements which describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure are not permitted in the specification of an issued patent. See MPEP § 1503.01(II)(B)(2).
Therefore, the title must be amended throughout the application, original declaration excepted, so that it is directed to the display screen. The examiner recommends any one of the following titles:
-- Display Screen or Portion Thereof with Animated Graphical User Interface –
-- Display Screen or Portion Thereof with Transitional Graphical User Interface –
Drawings
In view of the election of Group V (Reproductions 5.1 – 5.9), the non-elected drawings of Reproductions 1.1 – 4.8 and 6.1 – 6.9 must all be canceled in their entirety.
Applicant is reminded that renumbering the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even though the non-elected embodiments have been cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions).
Reproduction Descriptions
The reproduction descriptions are objectionable. Applicant elected Group V, which consists of Reproductions 5.1 – 5.9, thus canceling the remaining reproductions. This objection also applies to the “Design No./Product(s):” section of the specification. As stated in the drawing objection above, the reproduction descriptions are not required to be renumbered.
Transitional Nature Statement
The transitional nature statement is objectionable. As mentioned in the drawing objection and reproduction objection above, applicant elected Group V, which consists of Reproductions 5.1 – 5.9, thus canceling the remaining reproductions. The present transitional nature statement must be amended to only state the elected drawings and the examiner recommends the following:
-- The appearance of the images sequentially transitions between Repro. Nos. 5.1 – 5.9. The process or period in which one image transitions to another forms no part of the claimed design. --
REFUSAL – 35 U.S.C. § 171
The claim is under 35 U.S.C. § 171 as being directed to nonstatutory subject matter. 35 U.S.C. § 171 defines the proper subject matter for a design patent:
“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”
To be considered statutory subject matter under 35 U.S.C. 171, a claimed design must be embodied in an article of manufacture (In re Zahn, 617 F.2d 261,268, 204 U.S.P.Q. 988, 995 (CCPA 1980)). The phrase “an article of manufacture" has been interpreted to be a tangible object or physical substance (Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635,640, 123 U.S.P.Q. 3, 6 (5th Cir. 1959); Pelouze Scale & Mfg. Co. v. American Cutlery Co., 102 F. 916, 918 (7th Cir. 1900); Kim Craftsmen, Ltd. v. Astra Products, Inc., 212 U.S.P.Q. 268 (D.N.J. 1980); and 1 E. Lipscomb, Walker on Patents, 2:11 (1984), 1 W. Robinson, The Law of Patents, 200 (1890)).
A design may be embodied in an article of manufacture (1) as a configuration for an article of manufacture, (2) as a surface ornamentation for an article of manufacture, or (3) a combination of both. Gorham v. White, 82 U.S. 511, 525 (1871); In re Schnell, 46 F.2d 203, 209 (CCPA 1931); MPEP § 1502.
Pursuant to the guidelines for examination of design patent applications for computer generated icons (1185 O.G. 60, 61 F.R. 11380 (1996)), a design for a computer-generated icon may be considered statutory subject matter if the following conditions are present:
The computer screen, monitor, other display panel, or portion thereof is shown in broken or solid lines with the icon displayed on it; and
The claim is directed to the subject matter as embodied in an article of manufacture.
The subject matter of the instant application does not meet these conditions. Consequently, a design for a computer-generated icon / graphical user interface per se is unpatentable since it is not shown embodied in a specific article of manufacture.
It may be possible for applicant to show a portion of a display screen in broken line without introducing new matter. For example, applicant may include a broken line immediately adjacent to the outer edge of the perimeter of the graphical user interface to illustrate a portion of a display screen (see U.S. Design Patent D567,249 for an example of an immediately adjacent broken line in a graphical user interface design). The examiner also recommends viewing MPEP 1504.01(a)(I)(C)(Example 3). The examiner notes that if the applicant amends the drawings to show a broken line immediately adjacent to the claimed design, a broken line statement must be added. The examiner recommends the following:
-- The broken lines illustrate a display screen and form no part of the claimed design. --
If applicant prepares new drawings, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. Also note that the solid line subject matter must not change in character because the appearance of these lines is part of the original disclosure of the claimed design. In 2D type design patents, the solid line image is exactly the claimed design, and is not representative of the claimed design, as is the case with 3D type design patents. While line work may be amended so that the illustration is consistent in all drawing views, no "improvement" of line quality in the claimed solid lines is possible without failing the written description requirement of 35 U.S.C. § 112(a).
CONCLUSION
Accordingly, the claim stands rejected under 35 U.S.C. § 171, as set forth above. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Reply Reminder
Applicant is reminded that any reply to this correspondence must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or in-person interviews
A telephonic or in-person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or no of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, available at https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing, and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
When Responding to Official USPTO Correspondence
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the USPTO’s Patent Center (Registered eFilers only)
https://patentcenter.uspto.gov/
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Facsimile to the USPTO’s Official Fax Number (571-273-8300)
Hand-carry to the USPTO’s Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents/maintain/responding-office-actions
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILEE VOIGT whose telephone number is (703)756-1216. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Messina Smith can be reached at (571) 272-3137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/E.V./Examiner, Art Unit 2936
/CHRISTIAN P. MCLEAN/Supervisory Patent Examiner, Art Unit 2923