Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
EX PARTE KAREN DONOGHUE
Appeal No. 92-0543
April 2, 1992
*1 Application for
Design Patent filed February 10, 1989, Serial No. 07/261281. Icon for an
Address List Function or the Like.
Michael H. Shanahan for appellant
Primary Examiner--Susan J. Lucas
Before Manbeck
Commissioner
Comer
Samuels
Assistant Commissioner
Serota
Chairman
Stahl and Pellman
Examiners-in-Chief
Manbeck
Commissioner
ON BRIEF
This is an appeal from
the examiner's decision finally rejecting the sole claim in the application.
The subject matter on
appeal is a design for an icon. The sole claim on appeal follows:
The ornamental design
for an Icon for an Address List Function or the Like as shown and described.
The design as shown in the drawing figure is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
The complete
specification, as amended, is reproduced in footnote 1. [FN1]
The sole claim stands
rejected as unpatentable under 35 U.S.C. §
171. After careful consideration of appellant's arguments, we affirm the
examiner's rejection.
Section 171 provides:
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.
The examiner concluded
that the claimed design was nonstatutory, finding that the design was not an
"ornamental design for an article of manufacture...." The thrust of
the rejection is that the design as claimed is merely a picture or surface
ornamentation per se rather than a design applied to an article. The examiner
notes that the specification does not describe, claim or show the claimed
designs applied to any article of manufacture.
In response appellant
argues that the "article of manufacture is the functionally active area of
the computer display screen associated with an address list." See brief,
page 7. Appellant also notes that the "two- dimensional surface
ornamentation-type design is fully disclosed by a plan view illustration."
The respective positions
of the examiner and appellant require us to consider the meaning of
"ornamental design for an article of manufacture."
The phrase "design
for an article of manufacture" has long appeared in the design statutes.
The phrase appears in Revised Statutes §
4929, May 9, 1902, ch. 783, 32 Stat. 209; was reenacted in 35 U.S.C.
§ 73 (1946) and again reenacted in 35
U.S.C. § 171 (1952). The CCPA construed
the phrase in In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931). The court
noted that the language "new, original and ornamental design for an
article of manufacture" encompassed at least three kinds of designs: 1) a
design for an ornament, impression, print or picture to be applied to an
article of manufacture (surface ornamentation); 2) a design for the shape or
configuration of an article of manufacture; and 3) a combination of the first
two categories. 46 F.2d at 209, 8 USPQ at 25. With respect to the first
category, the Court indicated that the statute required more than a mere
picture:
*2 We think that
Assistant Commissioner Clay was right in saying [in Ex parte Cady, 1916 Dec.
Com'r.Pat. 57, 58] that the design must be shown not to be the mere invention
of a picture, irrespective of its manner of use, but that the applicant should
be required to show by an appropriate drawing the manner of its application.
46 F.2d at 209, 8 USPQ at 26. The Court went on to state:
[I]t is the application
of the design to an article of manufacture that Congress wishes to promote, and
an applicant has not reduced his invention to practice and has been of little
help to the art if he does not teach the manner of applying his design.
46 F.2d at 209, 8 USPQ at 26.
The CCPA again
interpreted the language in In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
The issue in Zahn was whether or not §
171 permitted claiming a design for a portion of an article of
manufacture, a drill tool. The court noted that under § 171 a design must be "embodied" in
an article:
Section 171 authorizes
patents on ornamental designs for articles of manufacture. While the design
must be embodied in some article, the statute is not limited to designs for
complete articles, or "discrete" articles, and certainly not to
articles separately sold,.... Here the design is embodied in the shank portion
of a drill and a drill is unquestionably an article of manufacture. It is thus
applied design as distinguished from abstract design. (Emphasis original.)
617 F.2d at 268, 204 USPQ at 995.
These decisions indicate
that a picture standing alone is not protectable by a design patent. The factor
which distinguishes statutory design subject matter from mere pictures or
surface ornamentation per se (i.e., abstract designs) is the embodiment of the
design in an article of manufacture. In order to meet this threshold requirement of an applied
design, we conclude that an applicant's specification must expressly state an
article of manufacture ornamented by the design.
We find that appellant's
claimed design, as disclosed in the application before us, is merely a picture.
Appellant's specification does not show or describe the claimed design embodied
or applied in any article of manufacture. Only a picture of the icon is shown
or described. The claimed subject matter, therefore, does not meet the
requirements of 35 U.S.C. § 171.
Appellant asserts that
the design is a surface ornamentation-type design for the functionally active
area of a computer display screen showing the design. We have no doubt that the
claimed design, like all surface ornamentation-type designs, could be used to
ornament a wide variety of articles, including computers. [FN2] However, the phrase
"design for an article of manufacture" in § 171 requires more than a depiction of the surface ornamentation
alone. It requires disclosure of the ornamentation applied to or embodied in
some article of manufacture. More than an applicant's generalized intent to
ornament some article is required. It is the application of the design to an
article which separates mere pictures from a design protectable by a patent.
Without explicit disclosure of an article in the specification, the design is
not an applied design contemplated for protection under § 171.
*3 Consistent with
§ 171, PTO regulations expressly
require such disclosure. Thus, 37 CFR § 1.153(a) states:
(a) The title of the
design must designate the particular article. No description, other than a
reference to the drawing, is ordinarily required. The claim shall be in formal
terms to the ornamental design for the article (specifying name) as shown, or
as shown and described....
37 CFR § 1.152 states:
The design must be
represented by a drawing made in conformity with the rules laid down for
drawings of mechanical inventions and must contain a sufficient number of views
to constitute a complete disclosure of the appearance of the article.
Appropriate surface shading must be used to show the character or contour of
the surfaces represented. Broken lines may be used to show visible
environmental structure, but may not be used to show hidden planes and surfaces
which cannot be seen through opaque materials. (Emphasis added.)
Appellant's specification does not describe or show the design as
surface ornamentation for a computer system. As we stated above, appellant's
designs, as shown and described, are merely pictures which have not been
applied to any article.
Appellant also urges reversal
because PTO has previously issued design patents to purportedly similar subject
matter. We recognize that patents have issued directed to designs referred to
as icons. [FN3] However, appellant has not
cited any authority which holds that the issuance of a patent has any
significant precedential value. In evaluating compliance with 35 U.S.C. § 171, each design application must be
evaluated on the record developed in the PTO. See, In re Gyurik, 596 F.2d 1012,
1018 n. 15, 201 USPQ 552, 558 n. 15 (CCPA 1979); In re Phillips, 315 F.2d 943,
137 USPQ 369 (CCPA 1963). To the extent any error has been made in the
rejection or issuance of claims in a particular application, PTO and its
examiners are not bound to repeat that error in subsequent applications. Accord,
In re Cooper, 254 F.2d 611, 617, 117 USPQ 396, 401 (CCPA), cert. denied 358
U.S. 840 (1958) (Decision in a trademark application in accordance with law is
not governed by possibly erroneous past decisions of the Patent Office); In re
Zahn, 617 F.2d at 267, 204 USPQ at 995 ("[W]e are not saying the issuance
of one patent is a precedent of much moment.") Compliance with § 171 requires analysis of the statute and
interpreting case law. Mere reference to possibly contrary decisions of an
examiner in other applications, applications which do not even discuss the
issue raised, are not helpful in this analysis.
Appellant asserts that
the design depends upon computer hardware and software which forms no part of
the invention and need not be disclosed. Appellant relies on In re Hruby, 373
F.2d 997, 153 USPQ 61 (CCPA 1967) to support his position. We do not think
Hruby helps appellant under the circumstances of this case. In Hruby the court
held that water fountains were configuration of goods- type designs eligible for protection under
§ 171. 373 F.2d at 1001, 153 USPQ at
65. An illustration of a configuration type-design inherently discloses the
article of manufacture defined by the shape of the design. The configuration
designs in Hruby were inherently applied designs. The designs here admittedly
are surface ornamentation-type designs. E.g., brief, p. 8. As we indicated
above in order to bring a surface ornamentation-type design within the scope of
the statute, it must be disclosed and shown in the specification applied to
some article of manufacture. And 37 CFR §
1.152 requires a complete disclosure of the article in the drawings, not
just disclosure of the design. Appellant has failed to make such a disclosure
or showing. Accordingly, we affirm the examiner's rejection under 35 U.S.C.
§ 171.
*4 The examiner's
decision rejecting the claim under 35 U.S.C. §
171 is affirmed.
Under 37 CFR § 1.196(b), the following new ground of
rejection is entered against the claim:
The claim is rejected
under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
subject matter appellant regards as her invention. The phrase "or the
like" renders the claim indefinite. It is not apparent from the record of
this case what articles are "like" an address list function. The
specification does not provide any standards for determining the other things
which may fall within the scope of the
claim. See, Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 574 (Fed.Cir.1984) (when words of degree are used in a
claim, the specification must provide some standard for measuring the degree).
A clear and definite statement of the article is important so that others may
determine if the use of the design would directly infringe under 35 U.S.C.
§ 271 or infringe only under the
additional remedy of 35 U.S.C. § 289.
Any request for
reconsideration or modification of this decision by the Board of Patent Appeals
and Interferences based upon the same record must be filed within one month
from the date hereof (37 CFR § 1.197).
With respect to the new
rejection under 37 CFR § 1.196(b),
should appellant elect the alternate option under that rule to prosecute
further before the Primary Examiner by way of amendment or showing of facts, or
both, not previously of record, a shortened statutory period for making such
response is hereby set to expire two months from the date of this decision. In
the event appellant elects this alternate option, in order to preserve the
right to seek review under 35 U.S.C. § §
141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the
examiner unless, as a mere incident to the limited prosecution, the affirmed
rejection is overcome.
If the appellant elects
prosecution before the examiner and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned to us for final
action on the affirmed refection, including any timely request for
reconsideration thereof.
No time period for taking
any subsequent action in connection with this appeal may be extended under 37
CFR § 1.136(a). 37 CFR § 1.136(a)(3).
AFFIRMED 37 CFR § 1.196(b)
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
Douglas B. Comer
Deputy Commissioner
Saul I. Serota
Chairman
Robert F. Stahl
Examiner-in-Chief
Irving R. Pellman
Examiner-in-Chief
FN1. Be it known that I, Karen Donoghue, have invented a new,
original and ornamental design for an Icon For An Address List Function Or The
Like, of which the following is a
specification, reference being had to the following drawing forming a part
thereof.
A portion of the
disclosure of this patent document contains material to which a claim for
copyright is made. The copyright owner has no objection to the facsimile
reproduction by anyone of the patent document or the patent disclosure, as it
appears in the Patent and Trademark Office patent file or records, but reserves
all other copyright rights whatsoever.
The figure is a face view
of an icon for an address list function or the like showing my new design.
FN2. The word "icon" does not limit the design to use
with a display screen of a computer or any other article of manufacture. Icons
are and have been used with a variety of articles.
FN3. The rejection in this case was authorized by Commissioner
Quigg.
26 U.S.P.Q.2d 1271
END OF DOCUMENT