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 .
General Information
Embodiments 1, 2, 4 to 9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Election was made without traverse in the reply filed on 12/11/2025.
35 U.S.C. 171
The claim is rejected 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."1 The phrase "an article of manufacture" has been interpreted to be a tangible object or physical substance.2
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, 81 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,3 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.
Applicant’s claim refers to the portion of a display screen in which the computer- generated image is embodied. However, it is unclear if the portion of a display screen is not shown in the drawing or if the portion of a display screen is shown underlying the image. The computer-generated image must comply with the “article of manufacture” requirement of 35 USC 171. The title of the claimed design suggests that the article of manufacture is the display screen.
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 perimeter of the graphical user interface to represent a portion of a display screen (see D567,249 for an example of an immediately adjacent broken line). Note that if a broken line is added to the drawing, a special description must be inserted into the specification.
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.
Reply Reminder to all Refusals
Applicant is reminded that any reply to this Refusal 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 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 “When Responding to Official USPTO Correspondence” below.
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 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 https://www.uspto.gov/patents/maintain/responding-office-actions
Conclusion
The claim stands rejected under 35 USC 171.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-YEN THI NGUYEN whose telephone number is (571)270-0217. The examiner can normally be reached on 9-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using aUSPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/patents/laws/interview-practice
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Holly Thurman can be reached on (571) 272-8068. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: httos://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 or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BAO-YEN T NGUYEN/
Primary Examiner, Art Unit 2919
1 In re Zahn, 617 F.2d 261, 268, 204 U.S.P.Q. 988, 995 (CCPA 1980).
2 See Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635,640, 123
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); 1 E. Lipscomb, Walker on Patents, 2:11 (1984), 1 W. Robinson, The Law of Patents, 200 (1890).
3 1185 O.G. 60, 61 F.R. 11380 (1996).
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