Computer-Generated Electronic Images

To be directed to statutory subject matter, design applications for

computer-generated electronic images must comply with the article of manufacture

requirement of

35

U.S.C. 171

.

I.

GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR

COMPUTER-GENERATED ELECTRONIC IMAGES

The following guidelines have been developed to assist USPTO

personnel in determining whether design patent applications for computer-generated

electronic images comply with the article of manufacture requirement of

35 U.S.C.

171

.

A.

General Principles Governing Compliance With the Article of

Manufacture Requirement

As discussed in

MPEP §

1504.01

, a picture standing alone is not protectable

by a design patent. Additionally, “[m]ere display of a picture on a screen is

not significantly different … from the display of a picture on a piece of

paper” and is not enough “to convert a picture into a design for an article of

manufacture.”

Ex parte Strijland,

26 USPQ2d 1259, 1263 (Bd.

Pat. App. & Int. 1992). Therefore, images merely displayed on a display

panel (e.g., computer screen, monitor, computer display system, mobile phone

screen, virtual reality/augmented reality goggles), or portion thereof are not

considered eligible under

35 U.S.C. 171

. However, the

USPTO considers a computer icon or a graphical user interface (GUI) shown on a

display panel, or a portion thereof, to be more than a mere display of a

picture on a screen because a computer icon or a GUI is an integral and active

component in the operation of—

i.e.,

embodied in and/or

applied to—a programmed computer displaying the computer icon or the GUI.

Therefore, a computer icon or a GUI is eligible under

35 U.S.C.

171

, if properly presented and claimed (e.g., the

drawing(s) fully discloses the design as embodied in the article of

manufacture).

Computer-generated icons, such as full screen displays and

individual icons, are 2-dimensional images which alone are surface

ornamentation. See, e.g.,

Ex parte Strijland,

26 USPQ2d 1259

(Bd. Pat. App. & Int

efore, a computer icon or a GUI is eligible under

35 U.S.C.

171

, if properly presented and claimed (e.g., the

drawing(s) fully discloses the design as embodied in the article of

manufacture).

Computer-generated icons, such as full screen displays and

individual icons, are 2-dimensional images which alone are surface

ornamentation. See, e.g.,

Ex parte Strijland,

26 USPQ2d 1259

(Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely

surface ornamentation). A patentable design is inseparable from the object to

which it is applied and cannot exist alone merely as a scheme of surface

ornamentation. See

MPEP § 1502

. Thus, a computer

icon or a GUI must be embodied in a display panel, or portion thereof, to

satisfy

35

U.S.C. 171

. Therefore, if properly presented and claimed,

a display panel (or portion thereof) with a computer icon or a GUI constitutes

statutory subject matter under

35 U.S.C. 171

.

“We do not see that the dependence of the existence of a

design on something outside itself is a reason for holding it is not a design

‘for an article of manufacture.’” See

In re Hruby,

373 F.2d

997, 1001, 153 USPQ 61, 66 (CCPA 1967) (design of water fountain patentable

design for an article of manufacture). The dependence of a computer icon or a

GUI on a central processing unit and computer program for its existence itself

is not a reason for holding that the design is not for an article of

manufacture.

B.

Procedures for Evaluating Whether Design Patent Applications

Drawn to Computer-Generated Electronic Images Comply With the Article of

Manufacture Requirement

USPTO personnel shall adhere to the following procedures when

reviewing design patent applications drawn to computer-generated electronic

images for compliance with the article of manufacture requirement of

35 U.S.C.

171

.

The complete disclosure must be considered when

evaluating a design claim that includes a computer-generated electronic image

Comply With the Article of

Manufacture Requirement

USPTO personnel shall adhere to the following procedures when

reviewing design patent applications drawn to computer-generated electronic

images for compliance with the article of manufacture requirement of

35 U.S.C.

171

.

The complete disclosure must be considered when

evaluating a design claim that includes a computer-generated electronic image.

More specifically, USPTO personnel must read the disclosure to determine what

is claimed as the design and whether the design is embodied in an article of

manufacture. USPTO personnel must:

(A) Review the title and claim language to determine whether

the title and claim adequately describe a design for an article of

manufacture under

35 U.S.C. 171

. USPTO

personnel must also consider the following and, where appropriate, make

the noted objections and rejections.

(1) A computer-generated electronic image shown on a

display panel that is not a computer icon or a GUI (i.e., that is

not an integral and active component in the operation of a

computer) is a mere illustration of a picture displayed

electronically. Therefore, a claim to the image

per

se,

to a display panel (or a portion thereof) with the

image, or to the image for display on a display panel, will not

satisfy the article of manufacture requirement, and such a claim

should be rejected under

35 U.S.C. 171

for failing to comply with the article of manufacture

requirement.

(2) The USPTO considers computer icons or GUIs to be

two-dimensional images which standing alone are surface

ornamentation (i.e., an ornament, impression, print, or picture).

Therefore, the title and the claim should not be for a computer

icon or a GUI alone, but must be for an article of manufacture, for

example, a “display panel with computer icon.”

y with the article of manufacture

requirement.

(2) The USPTO considers computer icons or GUIs to be

two-dimensional images which standing alone are surface

ornamentation (i.e., an ornament, impression, print, or picture).

Therefore, the title and the claim should not be for a computer

icon or a GUI alone, but must be for an article of manufacture, for

example, a “display panel with computer icon.”

(3) When a design claim is to a display panel with a

computer-generated image, the USPTO considers the term “icon” or

“GUI” in the title and the claim to be indicating that the image on

the display panel is not merely a displayed picture, but an

integral and active component in the operation of a programmed

computer displaying the image. See

Strijland,

26

USPQ2d at 1263. Therefore, a claim and title directed to a display

screen with an icon or a GUI adequately describes a design for an

article of manufacture under

35 U.S.C. 171

.

(Note that though the underlying article of manufacture for an icon

or a GUI has functional properties, the design of the icon or the

GUI itself is not functional, and thus this subsection is not in

tension with, nor does it contradict, the functionality doctrine,

which requires that design patent protection extend only to the

“ornamental design” of an article of manufacture. See

35 U.S.C.

171(a)

;

MPEP §

1504.01(c)

, subsection I).

(4) The following are examples of claim

language and titles that

do not

adequately

describe a design for an article of manufacture under

35 U.S.C. 171

:

“display screen with virtual image,” “virtual image for display on

computer screen,” “computer icon,” and “icon for computer screen.”

This list of examples is not exhaustive. These types of claims and

titles should be objected to under

37 CFR

1.153(a)

or

37 CFR

1.1067(a)

for failing to designate a

particular article of manufacture, and the objection should be

maintained until the title and the claim language are appropriately

amended. See

MPEP § 707.07(e)

lay on

computer screen,” “computer icon,” and “icon for computer screen.”

This list of examples is not exhaustive. These types of claims and

titles should be objected to under

37 CFR

1.153(a)

or

37 CFR

1.1067(a)

for failing to designate a

particular article of manufacture, and the objection should be

maintained until the title and the claim language are appropriately

amended. See

MPEP § 707.07(e)

.

Note that a determination must be made as to whether a rejection

under

35 U.S.C. 171

is appropriate (e.g., the application fails to provide support for

an icon or a GUI). See item (A)(1) above; see also item (C) and

subsection I.C, example 2 below.

(5) The following are examples of claim

language and titles that do adequately describe a design for an

article of manufacture under

35 U.S.C. 171

:

“computer screen with an icon,” “display panel with GUI,” “display

screen or portion thereof with icon,” “portion of a computer screen

with an icon,” “portion of a display panel with an icon,” and

“portion of a monitor displayed with an icon.” This list of

examples is not exhaustive.

(B) Review the specification to determine

whether a characteristic feature statement is present. If a

characteristic feature statement is present, determine whether it

describes the claimed subject matter as a computer icon or a GUI embodied

in a display panel, or portion thereof. See

McGrady v. Aspenglas

Corp.,

487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980)

(descriptive statement in design patent application narrows claim scope).

(C) Review the drawing to determine whether a

display panel, or a portion thereof, is shown in sufficient views to

fully disclose the design as embodied in the article. See

Changes to Patent Practice and Procedure,

62 FR

53132, 53164 (October 10, 1997). Since the claim must be in formal terms

to the design “as shown, or as shown and described,” the drawing provides

the best description of the claim.

37 CFR

1.153

or

1.1025

. USPTO personnel must also consider the

following and, where appropriate, make the noted rejections.

se the design as embodied in the article. See

Changes to Patent Practice and Procedure,

62 FR

53132, 53164 (October 10, 1997). Since the claim must be in formal terms

to the design “as shown, or as shown and described,” the drawing provides

the best description of the claim.

37 CFR

1.153

or

1.1025

. USPTO personnel must also consider the

following and, where appropriate, make the noted rejections.

(1) If the drawing

does not

depict a computer icon or a GUI embodied in a display panel, or a

portion thereof, in either solid or broken lines, reject the

claimed design under

35 U.S.C. 171

for failing to comply with the article of manufacture requirement.

(a) If the disclosure as a whole

does

not

suggest or describe the claimed subject

matter as a computer icon or a GUI embodied in a display

panel, or a portion thereof, indicate that:

(i) The claim is fatally defective under

35 U.S.C.

171

; and

(ii) Amendments to the written description,

drawings and/or claim attempting to overcome the

rejection will ordinarily be entered, however, any new

matter will be required to be canceled from the written

description, drawings and/or claims. If new matter is

added that affects the claim, the claim should be

rejected under

35 U.S.C.

112(a)

.

(b) If the disclosure as a whole suggests or

describes the claimed subject matter as a computer icon or a

GUI embodied in a display panel, or a portion thereof, USPTO

personnel must indicate that the drawing may be amended to

overcome the rejection under

35 U.S.C.

171

. Suggest amendments that would

bring the claim into compliance with

35 U.S.C.

171

.

(D) Indicate all objections to the disclosure for failure to

comply with the requirements of the Rules of Practice in Patent Cases.

See e.g.

37 CFR 1.71

,

1.81

-

1.85

, and

1.152

-

1.154

. Suggest

amendments which would bring the disclosure into compliance with the

requirements of the Rules of Practice in Patent Cases.

(E) Upon reply by applicant:

(1) Enter any appropriate amendments; and

C.

171

.

(D) Indicate all objections to the disclosure for failure to

comply with the requirements of the Rules of Practice in Patent Cases.

See e.g.

37 CFR 1.71

,

1.81

-

1.85

, and

1.152

-

1.154

. Suggest

amendments which would bring the disclosure into compliance with the

requirements of the Rules of Practice in Patent Cases.

(E) Upon reply by applicant:

(1) Enter any appropriate amendments; and

(2) Review all arguments and the entire record,

including any amendments, to determine whether the drawing, title,

and specification clearly disclose a computer icon or a GUI

embodied in a display panel, or a portion thereof.

(F) If, by a preponderance of the evidence (see

In

re Oetiker,

977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.

Cir. 1992)) (“After evidence or argument is submitted by the applicant in

response, patentability is determined on the totality of the record, by a

preponderance of evidence with due consideration to persuasiveness of

argument.”), the applicant has established that the computer icon or a

GUI is embodied in a display panel, or a portion thereof, withdraw the

rejection under

35 U.S.C. 171

.

C.

Examples

The following examples are provided to assist USPTO

personnel in determining whether design patent applications for computer-generated

electronic images comply with the article of manufacture requirement of

35 U.S.C.

171

and whether other objections are appropriate.

Example 1

Title:

Computer display screen with

icon

Description:

The figure is a front

view of a computer display screen with icon, showing the new design. The broken

lines showing a portion of the computer display screen form no part of the claimed

design.

Claim:

The ornamental design for

computer display screen with icon as shown and described.

As presented, the claimed design in this example

complies with

35

U.S.C

mputer display screen with

icon

Description:

The figure is a front

view of a computer display screen with icon, showing the new design. The broken

lines showing a portion of the computer display screen form no part of the claimed

design.

Claim:

The ornamental design for

computer display screen with icon as shown and described.

As presented, the claimed design in this example

complies with

35

U.S.C. 171

because:

• the USPTO considers a computer icon or a GUI

on a display panel to be an integral and active component in the operation of a

programmed computer displaying the design and more than a displayed picture;

and

• the application fully discloses the design as

embodied in an article of manufacture, as the drawing depicts the design

embodied in a computer screen in broken lines.

In addition, the title and claim comply with

37 CFR

1.153(a)

or

37 CFR 1.1067(a)

because the

title and claim adequately designate a particular article of manufacture (i.e.,

the computer display screen).

Example 2

Title:

Virtual paper stack

Description:

The figure is a front

view of a computer display screen with a virtual paper stack showing the new

design. The broken lines showing a portion of the computer display screen form no

part of the claimed design.

Claim:

The ornamental design for a

virtual paper stack as shown and described.

As presented, the claimed design in this example

does not comply with

35 U.S.C. 171

. The image is

merely a picture displayed on a computer display screen. Because the original

disclosure does not provide support for amending the claim to include a computer

icon, the claim is fatally defective under

35 U.S.C. 171

and should be

rejected under

35 U.S.C. 171

, as set forth in subsection I.B above. In

addition, the title and claim should be objected to under

37 CFR

1.153(a)

or

37 CFR 1.1067(a)

for failing

to designate a particular article of manufacture.

Example 3

Title:

Paper stack icon for use on a

mobile device screen

Description:

The figure is a front

view of a paper stack icon showing the new design

. 171

and should be

rejected under

35 U.S.C. 171

, as set forth in subsection I.B above. In

addition, the title and claim should be objected to under

37 CFR

1.153(a)

or

37 CFR 1.1067(a)

for failing

to designate a particular article of manufacture.

Example 3

Title:

Paper stack icon for use on a

mobile device screen

Description:

The figure is a front

view of a paper stack icon showing the new design.

Claim:

The ornamental design for a

paper stack icon for use on a mobile device screen as shown and described.

As presented, the claimed design in this example

would not comply with

35 U.S.C. 171

because the

drawing does not depict an article of manufacture (e.g., a display panel) in

either solid or broken lines. Therefore, the claim should be rejected under

35 U.S.C.

171

, as set forth in subsection I.B above. In addition, the

title and claim should be objected to under

37 CFR

1.153(a)

or

37 CFR 1.1067(a)

for failing

to designate a particular article of manufacture. Specifically, the language “for

use on a mobile device screen” does not adequately designate a particular article

of manufacture. However, because the original disclosure provides support for a

mobile device screen, the application could be amended as follows:

Title:

Mobile device screen

with a paper

Paper

stack icon

for use on a

mobile device screen

Claim:

The ornamental design for

a mobile device screen with

a paper stack icon

for use on a mobile device

as shown and described.

Description:

The figure is a front

view of

a mobile device screen with

a paper stack icon

showing the new design.

The broken lines showing a portion of the

mobile device screen form no part of the claimed design.

Note that a replacement figure showing the portion

of a mobile device screen in either solid or broken lines must not introduce new

matter. The replacement figure shown represents a best practice for applicants as

it is the most likely amendment to be supported by the original disclosure

new design.

The broken lines showing a portion of the

mobile device screen form no part of the claimed design.

Note that a replacement figure showing the portion

of a mobile device screen in either solid or broken lines must not introduce new

matter. The replacement figure shown represents a best practice for applicants as

it is the most likely amendment to be supported by the original disclosure.

Replacement Figure:

Example 4

Title:

Icon for computer display

screen

Description:

The figure is a front

view of a computer display screen with icon, showing the new design. The broken

lines showing a portion of the computer display screen form no part of the claimed

design.

Claim:

The ornamental design for an

icon for computer display screen as shown and described.

As presented, the title and claim should be

objected to under

37 CFR 1.153(a)

or

37

CFR 1.1067(a)

for failing to designate a particular article

of manufacture. In particular, the language “for computer display screen” does not

adequately designate a particular article of manufacture. However, as presented,

the claimed design in this example complies with

35 U.S.C.

171

because:

• the USPTO considers a computer icon or a GUI

on a display panel to be an integral and active component in the operation of a

programmed computer displaying the design and more than a displayed picture;

and

• the application fully discloses the design as

embodied in an article of manufacture, as the description and drawing depict

the design embodied in a computer display screen in broken lines and the

description (i.e., the broken line statement) describes a portion of a computer

display screen.

To address the objections to the title and claim,

the application could be amended as follows:

Title:

lcon for

computer

Computer

display screen

with icon

Claim:

The ornamental design for

an icon for

a

computer display screen

with icon

as shown and described.

II

ter display screen in broken lines and the

description (i.e., the broken line statement) describes a portion of a computer

display screen.

To address the objections to the title and claim,

the application could be amended as follows:

Title:

lcon for

computer

Computer

display screen

with icon

Claim:

The ornamental design for

an icon for

a

computer display screen

with icon

as shown and described.

II.

TREATMENT OF TYPE FONTS

Traditionally, type fonts have been generated by solid blocks

from which each letter or symbol was produced. Consequently, the USPTO has

historically granted design patents drawn to type fonts. USPTO personnel should

not reject claims for type fonts under

35 U.S.C. 171

for failure to

comply with the article of manufacture requirement on the basis that more modern

methods of typesetting, including computer-generation, do not require solid

printing blocks.

III.

CHANGEABLE COMPUTER-GENERATED ELECTRONIC IMAGES

Computer-generated electronic images that change in appearance

during viewing may be the subject of a design claim. Such a claim may be shown in

two or more views. The images are understood as viewed sequentially, no ornamental

aspects are attributed to the process or period in which one image changes into

another. A descriptive statement must be included in the specification describing

the transitional nature of the design and making it clear that the scope of the

claim does not include anything that is not shown. Examples of such a descriptive

statement are as follows:

“The subject matter in this patent includes a process or period

in which an image changes into another image. This process or period forms no part

of the claimed design;” or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8. The process or period in which

one image transitions to another image forms no part of the claimed design;”

or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8

another image. This process or period forms no part

of the claimed design;” or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8. The process or period in which

one image transitions to another image forms no part of the claimed design;”

or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8. No ornamental aspects are

associated with the process or period in which one image transitions to another

image.”

Example

The following example is provided to assist

USPTO personnel in determining whether design patent applications for

changeable computer-generated electronic images comply with the article of

manufacture requirement of

35 U.S.C. 171

and whether

other objections are appropriate.

Title:

Animated Icon

Description:

Figure 1 is a front

view showing a first image in a sequence for an animated icon showing a new

design. Figure 2 is a second image thereof. The appearance of the animated

image sequentially transitions between the images shown in Figs. 1-2. The

process or period in which one image transitions to another image forms no part

of the claimed design. The broken lines showing a portion of a computer display

screen form no part of the claimed design.

Claim:

The ornamental design for an

animated icon as shown and described.

As presented, the title and claim should be

objected to under

37 CFR 1.153(a)

or

37 CFR 1.1067(a)

for failing to designate a particular

article of manufacture. However, as presented, the claimed design in this

example does comply with

35 U.S.C

showing a portion of a computer display

screen form no part of the claimed design.

Claim:

The ornamental design for an

animated icon as shown and described.

As presented, the title and claim should be

objected to under

37 CFR 1.153(a)

or

37 CFR 1.1067(a)

for failing to designate a particular

article of manufacture. However, as presented, the claimed design in this

example does comply with

35 U.S.C. 171

because:

• the USPTO considers a computer icon or a

GUI on a display panel to be an integral and active component in the

operation of a programmed computer displaying the design and more than a

displayed picture; and

• the application fully discloses the design

as embodied in an article of manufacture, as the drawing depicts the design

embodied in a computer display screen in broken lines and the description

(i.e., the broken line statement) describes a portion of a computer display

screen.

To address the objections to the title and

claim, the application could be amended as follows:

Title:

Computer display

screen with

A

a

nimated icon

Claim:

The ornamental design for

a computer display screen with

an animated icon as

shown and described.

The objections should be maintained until the

title and the claim are appropriately amended.