Ex parte Williams et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

07715262 (B.P.A.I. Sep. 29, 1998)

Application for patent filed June 14, 1991.1
Requests for reconsideration are now designated requests2
for rehearing.
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not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES B. WILLIAMS JR., EDWARD P. REGAN JR.,
THOMAS M. SHEEHAN and STEPHEN K. BRIGHT
__________
Appeal No. 98-1691
Application No. 07/715,2621
__________
ON BRIEF
__________
Before FRANKFORT, KRASS and WEIFFENBACH, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
ON REQUEST FOR REHEARING2
Appeal No. 98-1691
Application No. 07/715,262
2
Appellants request that we reconsider our decision of
July 13, 1998 wherein we affirmed the examiner’s decision in
rejecting the design claim under 35 U.S.C. 112, first
paragraph, as relying on an inadequate written description and
under 35 U.S.C. 171 as being directed to nonstatutory subject
matter.
Appellants’ request alleges three fundamental errors in
our decision:
1. The sustaining of a “new matter” rejection for the
addition of a broken-line background “computer display” to the
drawings, notwithstanding repeated express disclosures of
“computer display” in the filed design patent application.
2. The application of a “no intent to claim” doctrine,
notwithstanding the legal inapplicability of any such doctrine
to original design patent applications.
3. Application of a standard for patentable subject
matter and disclosure that is inconsistent with USPTO
guidelines for computer display icons and CAFC precedent.
We will respond to appellants’ allegations in the order
in which they are made:
Appeal No. 98-1691
Application No. 07/715,262
3
1. We find no error in our sustaining of the examiner’s
rejection under the first paragraph of 35 U.S.C. 112.
Appellants argue that there was plenty of support for a
“computer display” since the claim and title of the originally
filed application stated that the design is for a “computer
display.” We do not dispute that there was adequate support
in the originally filed application for the term “computer
display.” The problem is that, as explained by the examiner,
and adopted by us at pages
5-6 of our decision, the mere mention of a “computer display”
by the originally filed application could entail any of a
myriad of things such as a 3-D computer display, a photocopier
display, a display on an automobile dashboard, an ATM display,
different shaped screens, etc. The instant claimed invention,
however, is for a design and, as such, is directed to a very
specific and particular article of manufacture.
There is no evidence of record that appellants had
possession of the particular design, i.e., the edit icon
embodied in a computer display in the particular manner shown
by the amended drawings, at the time of filing the
application.
Appeal No. 98-1691
Application No. 07/715,262
4
It may be true, as appellants point out, that a broken
line showing is for illustrative purposes only and forms no
part of the claimed invention. However, it would still
constitute new matter for the broken line to be added by
amendment since, prior to this amendment and at the time of
filing the application, the claimed design was for an icon and
now, through amendment for which there is no adequate support
in the originally filed application, appellants attempt to
change the design to one for the icon for use with a
particular computer display. Accordingly, we find no error in
our finding that there is no adequate support for the subject
matter (including the broken line depiction of a computer
display) now attempted to be claimed.
2. We did not mean to imply that we were applying an
“intent to claim” standard as per reissue issues and we regret
any misunderstanding by appellants on this issue. We merely
meant to point out, in sustaining the written description
rejection, that at the time of filing the application, there
was no evidence that appellants were in possession of a
computer display having an edit icon for computer display, as
is now attempted to be claimed, since no such computer display
Appeal No. 98-1691
Application No. 07/715,262
We note that the USPTO guidelines do not have the force3
of law and, to whatever extent our decision may be
inconsistent with those guidelines, the guidelines must fall
until or unless our decision is overturned by a higher
authority.
5
was shown in the drawing of the design constituting the claim.
Therefore, it was clear to us then, and it remains clear to
us, that there is inadequate support for the broken lines now
shown in the drawing and that the examiner’s rejection under
the first paragraph of 35 U.S.C. 112, based on an inadequate
written description, was proper. The provision of the broken
lines in the drawing was clearly an afterthought, with no
adequate basis within the meaning of 35 U.S.C. 112, first
paragraph, conceived in response to the holding in Ex parte
Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Interferences
1992).
3. With regard to the statutory subject matter question,
contrary to appellants’ contention, our decision is not
inconsistent with the USPTO guidelines or CAFC precedent.3
Because we have held the inclusion of the broken lines in
the drawing to be improper under 35 U.S.C. 112, first
paragraph, the design claim is clearly drawn to an icon, per
Appeal No. 98-1691
Application No. 07/715,262
6
se. As such, Strijland is controlling and the claim is held
to be directed to nonstatutory subject matter under 35 U.S.C.
171. Appellants have convinced us of no error in our
reasoning, set forth at pages 7-8 of our decision, with regard
to the instant claim constituting nonstatutory subject matter.
Appeal No. 98-1691
Application No. 07/715,262
7
We have granted appellants’ request with regard to
reconsidering our decision but we deny the request with
respect to making any changes therein.
DENIED
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. 98-1691
Application No. 07/715,262
8
Ronald Zibelli
Xerox Corporation
Xerox Square - 20A
Rochester, NY 14644