Ex parte BRIGHT et al.

Board of Patent Appeals and Interferences

Jul 29, 1998

07715260 (B.P.A.I. Jul. 29, 1998)

Application for patent filed June 14, 1991.1
1
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(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEPHEN K. BRIGHT and
JAMES B. WILLIAMS, JR.
__________
Appeal No. 98-1900
Application D-07/715,2601
__________
ON BRIEF
__________
Before FRANKFORT, KRASS, and WEIFFENBACH, Administrative
Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1900
Application D-07/715,260
2
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 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 EDGE TRIM 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.
Appeal No. 98-1900
Application D-07/715,260
3
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 appellants and the examiner.
OPINION
We affirm.
The controlling case for the issue presented under § 171
is Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. &
Interferences 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, 26 USPQ2d 1259, 1262.
Appeal No. 98-1900
Application D-07/715,260
Those drawings depict the icon on a display screen of2
a computer, the computer processor and the video monitor
having the display screen being all in dotted lines.
4
The majority in Strijland went further and, in dicta,
stated, at 26 USPQ2d 1263,
Had appellants’ specification, as originally
filed, included the language added by the above
referred to amendments, and included drawings of the
type shown in the addendum to this opinion we would2
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
Off. Gaz. Pat. & Trademark Off. 60 (April 16, 1996) and
incorporated into the Manual of Patent Examining Procedures
(MPEP) § 1504.01 (6th ed., rev. 3, July 1997) § 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
Appeal No. 98-1900
Application D-07/715,260
This claim would also be properly rejectable under 3
35 U.S.C. § 112, 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
appellants’ amendment of December 19, 1996.
5
EDGE TRIM 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 appellants, Strijland was decided after
the filing of this application. So, in a valiant effort to
comply with Strijland and the Guidelines, appellants amended
the claim to read, “The ornamental design for A COMPUTER
DISPLAY as shown and described.” Further, appellants amended
the
description of the drawings and entered a disclaimer into the
specification regarding broken line illustrations in the
drawings. Most importantly, appellants 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
Appeal No. 98-1900
Application D-07/715,260
6
for that which is now claimed, within the meaning of the
written description requirement of 35 U.S.C. § 112, first
paragraph.
Appellants contend that there is adequate support since
the original disclosure specified that the Edge Trim 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
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 appellants with broken lines. There is no evidence
that appellants had possession of the particular design, i.e.,
the edge trim icon embodied in a screen in the particular
Appeal No. 98-1900
Application D-07/715,260
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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, appellants had no intention of
disclosing or claiming a computer display with an edge trim
icon, but, rather, appellants were interested only in
obtaining protection for the design of the icon, itself. We
note the title of the application, “Edge Trim 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
appellants. It was clearly the icon, itself, for use with or
on a computer display, which was of interest. The original
claim, too, was for an “EDGE TRIM ICON” which was only “FOR” a
computer display. Thus, again, the display was never
Appeal No. 98-1900
Application D-07/715,260
8
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
constitute statutory subject matter had the icon been embodied
in the display of a computer, showing the computer and the
Appeal No. 98-1900
Application D-07/715,260
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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 appellants’ 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 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:
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,
Appeal No. 98-1900
Application D-07/715,260
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alone, to convert a picture into a design for an
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 12 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.
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 )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 98-1900
Application D-07/715,260
11
Ronald Zibelli
Xerox Corporation
Xerox Square 020
Rochester, NY 14644