DETAILED ACTION
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Refusal - 35 USC 171
The 35 U.S.C. 171 refusal set forth below is applied with the understanding that the instant application, as it stands, includes reference views in Reproductions 1.2, 2.2, 3.2, 4.2, 5.2, 6.2, 7.2, 8.2, 9.2, and 10.2 which are treated as additional views of the claimed design. The reference views are addressed in the 35 U.S.C. 112(a) and (b) refusal following the below refusal.
The claim is refused under 35 USC 171 as directed to non-statutory subject matter because the design is not shown and described as embodied in, or applied to, an article of manufacture.
Statutory basis for a rejection under 35 USC 171
Federal statute 35 USC 171 defines the proper subject matter for a design patent:
(a) IN GENERAL.—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.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
MPEP 1504.01(a). Computer-Generated Electronic Images
The claim is understood to be directed to the class of designs referred to as Computer-Generated Electronic Images, described in MPEP 1504.01(a). Guidelines for statutory subject matter for this class of designs require that
The claim language and title must be directed to the article of manufacture (e.g. display screen) with integral and active component (e.g. icon or graphical user interface). See MPEP 1504.01.B.A.4.
The article of manufacture must be clearly shown and described. See MPEP 1504.01.B.A.5.
Explanation of refusal
In view of these requirements, the claimed design is considered insufficient for the following reason(s):
The subject matter of the instant application does not appear to meet these conditions. There is insufficient indication that a display screen, computer screen, monitor, other display panel, or a portion of any of those articles, is shown in the drawings as required above. Disclosure of a circular or round graphic design is insufficient indication that an article of manufacture is being shown, because a graphic design may represent any form of two-dimensional picture or surface ornamentation. Furthermore, description of a design showing a GRAPHICAL USER INTERFACE fails to direct the claim to a design embodied in an article of manufacture as required above. To comply with 35 USC 171, the article of manufacture must be both clearly shown and specifically described.
Consequently, a design for a GRAPHICAL USER INTERFACE per se is unpatentable since it is not clearly shown and described as embodied in an article of manufacture which meets the guidelines for Computer-Generated Electronic Images.
Suggestions
To overcome this rejection, applicant may amend the claim so that the article of manufacture is clearly shown and described, without the introduction of new matter. New matter is prohibited by 35 USC 132 and 37 CFR 1.121. Amendment of the DRAWING DISCLOSURE, TITLE, CLAIM and BROKEN LINE STATEMENT are suggested, as outlined below.
Drawing Disclosure
It is the understanding of the examiner that a graphical user interface is commonly embodied in a display screen, the edges of which may be shown flush with the edges of the design. Therefore, it may be possible to show the article of manufacture in the drawings by including a broken line no more than two line-widths away from the outer edge perimeter of the graphical user interface to show a display screen. Applicant is reminded that the addition of lines, broken or full, that enclose or define additional areas or boundaries (including white space) that were not shown in the original disclosure may be considered new matter. New matter is prohibited by 35 USC 132 and 37 CFR 1.121. The title and broken line statement should also be amended as discussed below.
Guidelines for corrected drawing sheets/reproductions are provided further below in the 35 USC 112(a) and (b) refusal.
Title and Claim
It is the understanding of the examiner that a graphical user interface is commonly embodied in a display screen. If the display screen is shown in the drawings, it may be possible to overcome this portion of the rejection by amending the title so that the claim is clearly directed to an article of manufacture which meets the guidelines for Computer-Generated Electronic Images. An example of a title properly directed to the article of manufacture is:
“Display screen or portion thereof with graphical user interface”
If amending the title, applicant is reminded that for clear identification of the subject matter (35 USC 112(b), 37 CFR 1.121), the title must be amended throughout the application, original oath or declaration excepted. The claim must be consistent with any amended title (37 CFR 1.153 or 37 CFR 1.1025).
Broken Line Statement
To clearly and completely account for all broken line subject matter (MPEP 1503.01.II and 1503.02.III), all broken lines including those showing an article of manufacture must be described. If an amended drawing as suggested above is submitted, an appropriate broken line statement must be inserted as a special description following the description of the figures. A statement similar to the following is suggested:
“The broken line at the perimeter of the drawings shows the display screen or portion thereof, and forms no part of the claimed design.”
CLAIM REFUSAL - 35 U.S.C. 112
The claim is refused under 35 U.S.C. 112(a) and (b), as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Statutory basis for a rejection under 35 USC 112
The following is a quotation of 35 USC 112:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Explanation for rejection
The claim is not enabled, and is indefinite, for the following reason(s):
1. Reference Views
Although Reproductions 1.2, 2.2, 3.2, 4.2, 5.2, 6.2, 7.2, 8.2, 9.2, and 10.2 are described as reference views in the description of the reproductions that “are for reference views for illustrating purpose and each of them forms no part of the claimed design,” in the special description, they have been included as part of the formal drawing disclosure describing the claim. This description creates ambiguity as to whether additional design elements shown in Reproductions 1.2, 2.2, 3.2, 4.2, 5.2, 6.2, 7.2, 8.2, 9.2, and 10.2 form part of the claim, leaving one to conjecture in determining the appearance of the design being claimed.
Accordingly, the reference view will be treated as another view of the design, and any inconsistencies between the reference view and the other figures of the claimed design may cause uncertainty as to the scope of the claim, resulting in a rejection under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite.
A reference view described in the description as not included in the claimed design may result in uncertainty as the scope of the design claimed where the reference view includes features of the claimed design shown in the other views. MPEP 2920.04(a)(II).
2. Unclear Embodiments or Transitional Sequences
There is no understandable single claim for an ornamental design. The description of the Reproductions 1.1-10.2 describes a sequence of views. This description of a sequence may suggest that the claimed design consists of a single embodiment showing a transitional or animated graphical user interface consisting of multiple images, where the intended design is directed to the class of designs known as Changeable Computer Generated Icons (MPEP 1504.01(a)(III)), yet no animated sequence of views is explicitly described. Without a clear, understandable sequence of the images being described and exactly what forms part of the claim, the appearance of the claim is unclear. If the claimed design is not a transitional or animated graphical user interface, then the sequences described in the specification may refer to ten separate embodiments. Consequently, the description is insufficient to enable a designer of ordinary skill in the art to make an article having the appearance of the claimed design. Such a designer, tasked with recreating the claimed design using the provided drawings and descriptions, would be forced to rely upon conjecture to understand which precise combination of features is intended by applicant to illustrate the claimed design.
If the appearance of the design cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure, fails to particularly point out and distinctly claim the subject matter the inventor(s) regard as their invention MPEP 1504.04(I)(A).
The claim is indefinite because the statement(s) mentioned above broaden the claim’s scope to include undefined types of other designs that cannot be determined from the drawings. Variations and modifications of the design, which are not shown in the drawings, are not permitted in a design patent MPEP 1503.01.
SUGGESTIONS
In order to overcome this refusal, applicant should amend the specification to clarify the scope of the claim.
Reference Views
If the reference views are not intended to form a part of the claimed design, the drawing and corresponding description of reproductions for Reproductions 1.2, 2.2, 3.2, 4.2, 5.2, 6.2, 7.2, 8.2, 9.2, and 10.2 may be cancelled.
Descriptions of the Reproductions
If the design is a transitional design in which one image to transitions to another, the specification must clearly describe the transition including a description of each figure in any sequences so that the overall appearance of the claimed design is clearly understood. If reproductions 1.1, 2.1, 3.1, 4.1, 5.1, 6.1, 7.1, 8.1, 9.1, and 10.1 show a transitional/animated design consisting of ten images in a single sequence and if the reference views are canceled because they form no part of the claimed design, a description such as the following is suggested:
--1.1 is a front view of a first image in a sequence for a [insert amended title here];
2.1 is a second image thereof;
3.1 is a third image thereof;
4.1 is a fourth image thereof;
5.1 is a fifth image thereof;
6.1 is a sixth image thereof;
7.1 is a seventh image thereof;
8.1 is an eighth image thereof;
9.1 is a ninth image thereof; and
10.1 is a tenth image thereof.--
In patent applications for Changeable Computer Generated Icons (MPEP 1504.01(a)(III)), a descriptive statement must be included in the specification describing the specific sequence of images comprising the transitional design and making it clear that the scope of the claim does not include anything that is not shown (MPEP 1504.1(a) III). To comply with this requirement, a statement such as the following must be included in the specification after the figure descriptions:
-- The appearance of the transitional image sequentially transitions between the images shown in Reproductions 1.1 – 10.1. The process or period in which one image transitions to another image forms no part of the claimed design. –
Alternatively, if reproductions 1.1, 2.1, 3.1, 4.1, 5.1, 6.1, 7.1, 8.1, 9.1, and 10.1 are intended to show separate embodiments related by function only, each figure must be described as a separate embodiment. In this scenario, the examiner suggests the figure descriptions and special description be amended as follows:
--FIG. 1.1 is a front view of a [insert amended title here] showing a first embodiment of the claimed design;
FIG. 1.2 is a second embodiment thereof;
FIG. 1.3 is a third embodiment thereof;
FIG. 1.4 is a fourth embodiment thereof;
FIG. 1.5 is a fifth embodiment thereof;
FIG. 1.6 is a sixth embodiment thereof;
FIG. 1.7 is a seventh embodiment thereof;
FIG. 1.8 is an eighth embodiment thereof;
FIG. 1.9 is a ninth embodiment thereof; and
FIG. 1.10 is a tenth embodiment thereof.
In this alternative scenario, where ten embodiments are described, applicant is cautioned that a restriction requirement would likely follow in any subsequent office action.
Replacement Reproductions
Corrected drawing sheets/reproductions in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should conform to the following guidelines:
Include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended.
The figure or figure number of an amended drawing should not be labeled as amended.
If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and appropriate changes made to the brief description of the several views of the drawings for consistency. To ensure compliance with 37 CFR 1.1026 and Section 405 of the Administrative Instructions, and for ease of comparison with the International Registration, the numbering of the drawing figures should not be changed even if one or more figures are canceled.
If all the figures on a drawing sheet are canceled, a replacement sheet is not required.
A marked-up copy of the drawing sheet (labeled as "Annotated Sheet") including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings.
Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d).
If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Conclusions
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. The prior art is relevant due to similarities with the ornamental appearance of the claim.
The claim is refused under 35 USC 171 and 35 USC 112(a) and (b), as set forth above.
Reevaluation of a restriction requirement will be made pending resolution of the above rejection.
Responding to Official USPTO Correspondence
Reply Reminder – signature required
Applicant is reminded that any reply to this communication 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. See below for additional information regarding interviews.
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 not 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 below.
Submitting replies to the USPTO
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle actions, Notice of Allowances, or Notice of Abandonments, please note the following:
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 Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only)
https://www.uspto.gov/patents/apply
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 USPTO's Alexandria, Virginia Customer Service Window
For more information, see https://www.uspto.gov/patents/maintain/responding-office-actions
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M SPIVEY whose telephone number is (571)272-9680. The examiner can normally be reached on Monday-Friday, 8:30am-5:00pm Pacific.
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, Chris McLean can be reached on 571-270-1996. 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.
/CHRISTOPHER M SPIVEY/Examiner, Art Unit 2923