Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
EX PARTE JANAIA DONALDSON
Appeal No. 92-0546
April 2, 1992
*1 Application for
Design Patent filed July 27, 1989, Serial No. 07/224649. Icon for Softkey
Display Screen or the Like.
Robert Barr 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 states:
The ornamental design
for a softkey display or the like, as shown and described.
The design as shown in the drawing figures is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
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 presented in
the briefs and at oral hearing, we affirm the examiner's rejection.
Section 171 of Title 35
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...." While the
examiner set forth her reasoning in great detail, the thrust of her position is
that the design, as claimed, is merely a picture or surface ornamentation per se rather than a design
applied to an article. [FN2] The examiner notes that the specification does not
describe, claim or show the claimed design applied to any article of
manufacture. Appellant argues that the
claimed invention is an
ornamental design for the display screen of a programmed computer system. A
programmed computer system, comprising a processor, a display device and a
program executing on the processor is an article of manufacture. The claimed
design is surface ornamentation for a particular region of the display screen,
and thus qualifies as statutory subject matter.
The examiner responded stating:
The fact that a
programmed computer system running the necessary software may be an article of
manufacture, does not help appellant here. No programmed computer system is
either depicted or described. Section 1.152 [of 37 CFR] is explicit in
requiring that the article of manufacture be shown in the drawings.
The respective positions
of the examiner and appellant require us to consider the meaning of
"ornamental design for an article of manufacture" as used in § 171.
The phrase "design
for an article of manufacture" has long appeared in the design statutes.
The language 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 26. With respect to the first category the court
indicated the design 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 phrase 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
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 disclose some 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, describe or claim the design embodied
in any article of manufacture. Only pictures
of the icon are shown or described. The claimed subject matter, therefore, does
not meet the requirements of 35 U.S.C. §
171.
Appellant asserts that
the design should be considered surface ornamentation upon the display screen
of a computer system. 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. 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 an 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 express
disclosure of an article, 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 has not described, shown or claimed the design as
surface ornamentation for acomputer system. 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. As we stated above, appellant's design, as shown and described, is
merely a picture which has not been disclosed applied to any article.
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 icons are "like" a softkey display. The specification
does not provide any standards for determining the other icons which would 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.
*4 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. I, Janaia M. Donaldson, have invented a new, original and
ornamental design for a ICON FOR SOFTKEY DISPLAY OR THE LIKE of which the following
is a specification, reference being had to the accompanying drawings forming a
part hereof.
Fig. 1 is a face view of
an icon for a softkey display or the like showing my new design in display
mode;
Fig. 2 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 3 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 4 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 5 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 6 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 7 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 8 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 9 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 10 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 11 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 12 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 13 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 14 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 15 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 16 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 17 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 18 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 19 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode;
Fig. 20 is a face view of
an icon for a softkey display or the like showing a modified form of my new
design in display mode.
FN2. The question of
whether this design is "ornamental", as required by the statute,
should be considered in any future prosecution of the present subject matter.
26 U.S.P.Q.2d 1250
END OF DOCUMENT