Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
EX PARTE SHUICHI TAYAMA
Appeal No. 92-0624
April 2, 1992
*1 HEARD: January 31, 1992
Application for Design
Patent filed December 30, 1988, Serial No. 07/291985. Icon for Set Up Operation
Gregory J. Maier et al. for appellant
Primary Examiner--Susan J. Lucas
Before Manbeck
Commissioner
Deputy Commissioner
Samuels
Assistant Commissioner
Serota
Chairman
Stahl and Pellman
Examiners-in-Chief
Manbeck
Commissioner
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 A SET UP OPERATION, as shown and described.
The design as shown in the drawing figures is reproduced below:
[FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
The complete
specification, as amended, is reproduced in a footnote. [FN2]
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 argument, 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...." 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. The examiner notes that the
specification does not describe, claim or show the claimed design applied to
any article of manufacture. Appellant, on the other hand, argues that
the article of
manufacture is a computer having a display screen. As can thus be appreciated,
the design should be considered to be surface ornamentation upon a computer
system, with the computer system being an article
of manufacture.
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 ntoed
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 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 or describe the claimed 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. [FN3]
Appellant asserts that
the design "should be considered to be surface ornamentation upon a
computer system, with the computer system being an article of
manufacture." 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. [FN4] 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
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 or shown 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.
Referring to 37 CFR §
1.152, appellant argues that no further illustration or disclosure is
necessary because only the design of an icon is being claimed. However,
applicant ignores the express language of the rule that requires complete
disclosure of the appearance of the article not just the design. The rule also permits the depiction of unclaimed
environmental features with broken lines. Appellant could have easily complied
with § 1.153 by showing a complete
article with broken lines.
Appellant also appears to
argue that further disclosure of an article of manufacture is not necessary
because this is a design rather than a utility application. As indicated above,
we view § 171 as requiring, at a
minimum, express disclosure of an article to be ornamented by the design. In
any event, 37 CFR § 1.152 expressly
requires disclosure of a complete article. To the extent appellant implies that
there is a lesser legal standard for the disclosure in design applications than
for utility applications, we cannot agree. Appellant's assertion is directly
contrary to the second paragraph of §
171 which states:
The provisions of this
title relating to patents for inventions shall apply to patents for designs,
except as otherwise provided.
Thus, for example, design applications must meet the requirements
of 35 U.S.C. § 112, first paragraph.
While this ordinarily requires little if any detailed description, some design
applications may require a disclosure as detailed as that in a complex utility
application. There is no "per se" rule with respect to the extent of
the disclosure necessary in a design application. The adequacy of the
disclosure must be determined on a case-by-case basis.
*4 Appellant
asserts that affirmance of the rejection would be inconsistent with case law holding that it is
permissible to obtain design protection for a portion of an article. We
recognize that the Zahn case held that §
171 is not limited to designs for complete articles. We do not think the
holding in Zahn helps appellant under the facts of this case. The design in
Zahn was for a portion of a drill tool. Not only did Zahn expressly claim a
design for a drill tool, the drawings showed the design applied to a complete
drill bit. Zahn's Figure 1 is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
Thus, Zahn's design was clearly disclosed and shown embodied in an
article. Unlike the facts in Zahn, appellant has not disclosed, claimed or
shown the design as part of a computer or any other article of manufacture.
Appellant also asserted
at oral argument that the claimed designs are indistinguishable from type or
character fonts as far as § 171 is
concerned. Moreover, appellant asserted that affirmance of the rejection will
bring into question the validity of numerous design patents directed to type
fonts. We disagree. The phrase "type font" may be properly
interpreted as referring to letter blocks or pieces used in a conventional
printing press. The blocks or pieces constitute an article or articles of
manufacture. Unlike the designs here, which are stated to be surface
ornamentation, type font designs are reasonably interpreted to be the shape or
configuration of the letter blocks. The fact that the meaning of "type
font" may have expanded in usage to include letters or numbers appearing on paper or on a
computer screen does not invalidate the long-standing interpretation of type
font designs as configuration-type designs for pieces or blocks of type.
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. [FN5] 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. We fully agree with appellant's statement in the supplemental reply
brief that "the issue of design patentability should most certainly be
decided based upon legal precedent and principles...."
*5 The examiner's
decision rejecting the claim under 35 U.S.C. §
171 is affirmed.
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
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. We note that the examiner did not require restriction between
the designs as shown in Figures 1, 2 and 3. The designs shown in the figures,
while sharing common features, appear to be directed to three patentably
distinct designs. Requiring restriction, when appropriate, is particularly
important in design cases because of the single claim requirement. The presence
of patentably distinct designs raises a question asto whether or not the claim
encompasses subject matter in addition to what is shown in the drawings. In
view of our affirmance, we will not enter a new ground of rejection under 35
U.S.C. § 112, second paragraph, but
rather call it to the examiner's attention in the event of further prosecution
in this case or any continuing case.
FN2. Be it known that I, Shuichi TAYAMA, have invented a new,
original and ornamental design for AN ICON FOR SET UP OPERATION of which the
following is a specification, reference being had to the accompanying drawings
forming a part hereof and in which:
Fig. 1 is a face view
of an icon for set up operation showing my new design;
Fig. 2 is a face view
of a second embodiment of my new design;
Fig. 3 is a face view
of a fourth embodiment of my new design;
Fig. 5 is a face view
of a fifth embodiment of my new design;
Fig. 6 is a face view
of a sixth embodiment of my new design;
Fig. 7 is a face view
of a seventh embodiment of my new design;
Fig. 8 is a face view
of a eighth embodiment of my new design;
Fig. 9 is a face view
of a ninth embodiment of my new design.
(It is noted that the specification does not contain any
description of Fig. 4.)
FN3. We also note that the design is said to be "for an icon
for a set up operation." It is not clear to us what appellant means by
"set up operation." The phrase is not defined or explained in the
specification. At best the phrase appears to refer to a process rather than an
article of manufacture. Design patents, however, are limited by the statute to
articles of manufacture.
FN4. 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.
FN5. The rejection in this case was authorized by Commissioner
Quigg.
24 U.S.P.Q.2d 1614
END OF DOCUMENT