Ex parte Bright

Board of Patent Appeals and Interferences

Oct 5, 1998

07715261 (B.P.A.I. Oct. 5, 1998)

Application for patent filed June 14, 1991.1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte STEPHEN K. BRIGHT
______________
Appeal No. 98-1694
Application Des. 07/715,2611
_______________
ON BRIEF
_______________
Before FRANKFORT, KRASS and WEIFFENBACH, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
the only claim pending:
The ornamental design for A COMPUTER DISPLAY as shown and
Appeal No. 98-1694
Application 07/715,261
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described.
The claim was amended to read as such in an amendment
filed December 19, 1996 (Paper No. 10). As originally filed,
the claim read as follows:
The ornamental design for an ACCESS CONTROL ICON FOR A
COMPUTER DISPLAY OR THE LIKE as shown and described.
There are no references relied on by the examiner.
The sole claim on appeal stands rejected under 35 U.S.C.
§ 112, first paragraph, as relying on an inadequate written
description, the examiner contending that the proposed drawing
amendment (filed May 24, 1993) of a rectangular display screen
in broken lines around the previously depicted icon
constitutes new matter as there is inadequate support for a
computer display screen in the application as originally
filed.
The claim stands further rejected under 35 U.S.C. § 171
as being directed to nonstatutory subject matter regarding
design claims.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
Appeal No. 98-1694
Application 07/715,261
Those drawings depict the icon on a display screen of a computer, the2
computer processor and the video monitor having the display screen being all
in dotted lines.
3
OPINION
We affirm.
The controlling case for the issue presented under § 171
is Ex parte Strijland, 26 USPQ2d 1259, 1262 (Bd. Pat. App. &
Int. 1992), wherein it was held that icons, of the type of
interest herein, per se, are not protectable by design patent
because
37 CFR §§ 1.152 and 1.153(a), consistent with 35 U.S.C. § 171,
require that the design must be applied to an article of
manufacture since the “factor which distinguishes statutory
design subject matter from mere picture or surface
ornamentation per se (i.e., abstract designs) is the
embodiment of the design in an article of manufacture.”
Strijland, supra.
The majority in Strijland went further and, in dicta,
stated, at 26 USPQ2d 1263,
Had appellant’s specification, as originally
filed, included the language added by the above
referred to amendment, and included drawings of the
type shown in the addendum to this opinion , we would2
Appeal No. 98-1694
Application 07/715,261
This claim would also be properly rejectable under 35 U.S.C. § 112,3
second paragraph, for the reasons set forth in Strijland at 26 USPQ2d 1262
regarding the language “OR THE LIKE.” The examiner withdrew this rejection
in light of appellant’s amendment of December 19, 1996.
4
have held that the claimed design is statutory
subject matter, and the design would have been
patentable in the absence of other grounds of
rejection.
While not having the force of law, this dicta was the
subject of the Guidelines for Examination of Design Patent
Applications for Computer-Generated Icons (Guidelines), 1185
O.G. 60 (April 16, 1996) and incorporated into MPEP § 1504.01.
Since an icon, per se, as depicted in the instant case,
as originally filed, is a mere picture, not part of any
embodiment of an article of manufacture, the examiner quite
properly, and in accordance with Strijland and the Guidelines,
rejected the design claim for “The ornamental design for an
ACCESS CONTROL ICON FOR A COMPUTER DISPLAY OR THE LIKE as
shown and described” as being directed to nonstatutory subject
matter under 35 U.S.C. § 171. 3
Unfortunately for appellant, Strijland was decided after
the filing of this application. So, in a valiant effort to
comply with Strijland and the Guidelines, appellant amended
Appeal No. 98-1694
Application 07/715,261
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the claim to read, “The ornamental design for A COMPUTER
DISPLAY as shown and described.” Further, appellant amended
the description of the drawings and entered a disclaimer into
the specification regarding broken line illustrations in the
drawings. Most importantly, appellant amended the drawings to
show broken lines around the original depiction of the icon.
The examiner contends that such amendments constitute new
matter and that there is no support in the original disclosure
for that which is now claimed, within the meaning of the
written description requirement of 35 U.S.C. § 112, first
paragraph.
Appellant contends that there is adequate support since
the original disclosure specified that the Access Control Icon
is “for a computer display” and that the original disclosure
of a “computer display” should constitute adequate support for
that which is now claimed.
We agree with the examiner [answer-page 5] that the mere
mention of a “computer display” could “mean a multiplicity of
visual representations--a three dimensional computer monitor,
a display on a photocopier, a display on a dashboard of an
automobile, a display on an automatic teller machine, a narrow
Appeal No. 98-1694
Application 07/715,261
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display screen, a large display screen, a circular screen, a
curved screen, etc.” Thus, there is no support for an icon
embodied in the article of manufacture now attempted to be
shown by appellant with broken lines. There is no evidence
that appellant had possession of the particular design, i.e.,
the access control icon embodied in a screen in the particular
manner shown by the amended drawings, at the time of filing
the application. For the reasons given by the examiner at
pages 4-11 of the answer, which we adopt as our own, we will
sustain the rejection of the design claim under 35 U.S.C. §
112, first paragraph.
As an additional reason for sustaining this rejection, we
note that the evidence indicates that at the time of filing
the original application, appellant had no intention of
disclosing or claiming a computer display with an access
control icon, but, rather, appellant was interested only in
obtaining protection for the design of the icon, itself. We
note the title of the application, “Access Control Icon For a
Computer Display” [emphasis ours]. Thus, the display, itself,
and/or the icon’s relationship with such display appears to
have been of no interest to appellant. It was clearly the
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Application 07/715,261
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icon, itself, for use with or on a computer display, which was
of interest. The original claim, too, was for an “ACCESS
CONTROL ICON” which was only “FOR” a computer display. Thus,
again, the display was never intended, in the original
disclosure, to form any part of the invention. The originally
disclosed and claimed design was clearly for the icon, per se,
and not for any embodiment of that icon in a display as an
article of manufacture. We find that there clearly was no
disclosure in the specification, as originally filed, for the
now claimed design for a computer display.
Because we sustain the examiner’s rejection of the claim
under 35 U.S.C. § 112, first paragraph, the broken lines
around the icon in the drawings do constitute new matter and
are not permissible. Accordingly, with the original drawings
then before us, the design claim is clearly drawn to an icon,
per se and
such a claim, under Strijland, is directed to nonstatutory
subject matter under 35 U.S.C. § 171. Accordingly, we also
sustain the rejection of the claim under 35 U.S.C. § 171.
Moreover, we note that the panel in Strijland indicated
that the claimed design therein would have been deemed to
Appeal No. 98-1694
Application 07/715,261
8
constitute statutory subject matter had the icon been embodied
in the display of a computer, showing the computer and the
video monitor (having the display with the icon shown thereon)
in broken lines. While this was mere dicta, and we are not
bound thereby, we would note that whereas the suggested
embodiment therein was at least directed to a computer system,
showing the computer processor and the video monitor in broken
line, wherein the icon was clearly shown on the display of a
computer, this is a far cry from appellant’s attempted
amendment, placing a mere broken line rectangle around the
icon, wherein the rectangle, albeit said to represent a
computer display, may, in reality, represent almost anything,
including, for example, a sheet of paper on which the icon is
placed. Quite clearly, a sheet of paper having the icon
imprinted thereon would not constitute patentable subject
matter under 35 U.S.C. § 171. A simple, broken, rectangular
line placed around an icon, in our view, does not, alone,
constitute an embodiment of the icon design in an article of
manufacture. In this regard, we direct attention to
Strijland, at 26 USPQ2d 1263, wherein that panel of the Board
indicated that:
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Application 07/715,261
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It should be noted, however, we do not think
that merely illustrating a picture displayed on the
screen of a computer or other display device, such
as a television or movie screen, is sufficient,
alone, to convert a picture into a design for
article of manufacture. Mere display of a picture
on a screen is not significantly different, in our
view, from the display of a picture on a piece of
paper. Only the medium of display is different.
Note also the special concurrence by Examiner-in-Chief
Stahl at 26 USPQ2d 1264-1266.
We have sustained both the rejection under 35 U.S.C. §
112, first paragraph, and the rejection under 35 U.S.C. § 171.
Accordingly, the examiner’s decision is affirmed.
Appeal No. 98-1694
Application 07/715,261
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )

Appeal No. 98-1694
Application 07/715,261
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Ronald Zibelli
Xerox Corporation
Xerox Square 020
Rochester, NY 14644
Appeal No. 98-1694
Application 07/715,261
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EAK/cam