Department of Commerce Patent and Trademark Office Interim Guidelines for Examination of Design Patent Applications For Computer-Generated Icons RIN: 0651-XX04 [Docket No. 950921236-5236-01] Agency: Patent and Trademark Office, Commerce. Action: Notice and request for public comments. Summary: The Patent and Trademark Office (PTO) requests comments from any interested member of the public on interim guidelines that will be used by PTO personnel in their review of design patent applications for computer-generated icons. Because these guidelines govern internal practices, they are exempt from notice and comment rulemaking under 5 U.S.C. 553(b)(A). Dates: Effective Date October 5, 1995. Written comments on the interim guidelines will be accepted by the PTO until November 6, 1995. Written comments will be available for public inspection on November 21, 1995, in Room 8D19 of Crystal Plaza 3, 2021 Jefferson Davis Highway, Arlington, Virginia. In addition, comments provided in machine-readable format will be available through anonymous file transfer protocol (ftp) via the Internet (address: comments.uspto.gov) and through the World Wide Web (address: www.uspto.gov). Addresses: Written comments should be addressed to the Assistant Commissioner for Patents, Washington, D.C. 20231, marked to the attention of John Kittle, Director, Group 1100/2900, Crystal Plaza 3, 8D19. Comments may also be submitted by telefax at (703) 305-3600 or by electronic mail through the INTERNET to "firstname.lastname@example.org." For Further Information Contact: John Kittle by telephone at (703) 308-1495 or by mail to his attention addressed to the Assistant Commissioner for Patents, Group 1100/2900, Washington, D.C. 20231. Supplementary Information: Written comments should include the following information: --Name and affiliation of the individual responding; --An indication of whether the comments offered represent views of the respondent's organization or are the respondent's personal views; and --If applicable, information on the respondent's organization, including the type of organization and general areas of interest. Parties presenting written comments are requested, where possible, to provide their comments in machine-readable format. Such submissions may be provided by electronic mail messages sent over the Internet, or on a 3.5" floppy disk formatted for use in either a Macintosh or MS-DOS based computer. Machine-readable submissions should be provided as unformatted text (e.g., ASCII or plain text). Sept. 29, 1995 LAWRENCE J. GOFFNEY, JR. Acting Assistant Secretary of Commerce and Acting Commissioner of Patents and Trademarks I. INTERIM GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED ICONS The following guidelines have been primarily developed to assist PTO personnel in determining whether design patent applications for computer-generated icons comply with the "article of manufacture" requirement of 35 U.S.C. 171.1 A. General Principle Governing Compliance with the "Article of Manufacture" Requirement A design for a computer-generated icon2 which is embodied in an article of manufacture is statutory subject matter for a design patent under Section 171. Thus, if an application claims a computer-generated icon embodied in a computer screen, monitor, other display panel, or a portion thereof,3 that is drawn in solid lines,4 the claim complies with the "article of manufacture" requirement of Section 171. B. Procedures for Evaluating Whether Design Patent Applications Drawn to Computer-Generated Icons Comply With the "Article of Manufacture" Requirement PTO personnel shall adhere to the following procedures when reviewing design patent applications drawn to computer-generated icons for compliance with the "article of manufacture" requirement of Section 171. 1. Read the entire disclosure to determine what the applicant claims as the design,5 and to determine whether the design is embodied in an article of manufacture. 37 CFR 1.71 and 1.152-54. a. Review the drawing to determine whether a computer screen, monitor, other display panel, or portion thereof, is depicted in solid lines. 37 CFR 1.152. b. Review the title to determine whether it clearly describes the claimed subject matter.6 37 CFR 1.153. c. Review the specification to determine whether a characteristic feature statement is present. 37 CFR 1.71. If a characteristic feature statement is present, determine whether it describes the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof.7 2. If the drawing does not depict a computer-generated icon embodied in a computer screen, monitor, or a portion thereof, in solid lines, reject the claimed design under Section 171 and 35 U.S.C. 112, second paragraph, for failing to: (i) comply with the article of manufacture requirement; and (ii) particularly point out and distinctly claim the subject matter which the applicant regards as the invention.8 a. If the disclosure as a whole does not suggest or describe9 the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that: (i) the claim is defective under Sections 171 and 112, second paragraph; and (ii) amendments to the written description, drawings and/or claim attempting to overcome the rejections will be rejected under 35 U.S.C. 112, first paragraph, for lack of written description and changes to the written description and drawings will be disapproved under 35 U.S.C. 132 as constituting new matter. b. If the disclosure as a whole suggests or describes the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that the drawing may be amended to overcome the rejections under Sections 171 and 112, second paragraph. Suggest amendments which would bring the claim into compliance with Sections 171 and 112, second paragraph. 3. Indicate all objections to the disclosure for failure to comply with the formal requirements of the Rules of Practice in Patent Cases. 37 CFR 1.71, 1.81-85, and 1.152-154. Suggest amendments which would bring the disclosure into compliance with the formal requirements of the Rules of Practice in Patent Cases. 4. Upon response by applicant: a. Review applicant's arguments and any amendments; b. Approve entry of any amendments which have support in the original disclosure; c. Review all arguments and evidence of record to determine whether the drawing, title, and specification clearly disclose a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof. 5. If a preponderance of the evidence10 establishes that the computer-generated icon is embodied in a computer screen, monitor, other display panel, or portion thereof, withdraw the rejection under Sections 171 and 112, second paragraph. II. Effect of the Interim Guidelines on Pending Design Applications Drawn to Computer-Generated Icons PTO personnel shall follow the procedures set forth in Section I of these Interim Guidelines when examining design patent applications drawn to computer-generated icons which are pending in the PTO as of the date of publication of these Interim Guidelines in the Federal Register. III. Treatment of Type Fonts Traditionally, type fonts were generated by solid blocks from which each letter or symbol was produced. Consequently, the PTO has historically granted design patents drawn to type fonts. PTO personnel should not reject claims for type fonts under Section 171 for failure to comply with the "article of manufacture" requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks. However, PTO personnel should treat applications specifically drawn to computer-generated type fonts in accordance with the procedures set forth in Section I of these Interim Guidelines. IV. Notes 1. Further procedures for search and examination of design patent applications to ensure compliance with all other conditions of patentability are found in the Manual of Patent Examining Procedure, Chapter 1500. 2. Computer-generated icons, such as full screen displays and individual icons, are two-dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259, 1262 (Bd. Pat App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). 3. Since a patentable "design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation," a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof, to satisfy Section 171. MPEP 1502. 4. Strijland indicated that a computer-generated icon might be statutory subject matter if the solid-line icon is displayed on a computer screen which is shown as a broken-line drawing. 26 USPQ2d at 1263, 1266. However, since broken lines may be used to show visible environmental structure and not claimed subject matter, representation of a computer screen, monitor, other display panel, or portion thereof, in broken lines does not satisfy Section 171. See, e.g., In re Zahn, 617 F.2d 261, 268, 204 USPQ 988, 995 (CCPA 1980) (broken lines in design drawing show environmental structure, not claim). Broken lines may, however, be used to show other environmental structure, such as a central processing unit which contains equipment to operate the computer screen, monitor, or other display panel. 5. Since the claim must be in formal terms to the design "as shown, or as shown and described," the drawing provides the best description of the claim. 37 CFR 1.153. 6. The following titles do not adequately describe a design for an article of manufacture under Section 171: "computer icon;" or "icon." On the other hand, the following titles do adequately describe a design for an article of manufacture under Section 171: "computer screen with an icon;" "display panel with a computer icon;" "portion of a computer screen with an icon image;" "portion of a display panel with a computer icon image;" or "portion of a monitor displayed with a computer icon image." 7. See McGrady v. Aspenglas Corp., 487 F. Supp. 859, 861, 208 USPQ 242, 244 (S.D.N.Y. 1980) (descriptive statement in design patent application narrows claim scope). 8. A computer screen, monitor, or other display panel is clearly described by showing a larger surface area than that immediately behind the icon image. 9. A broken line drawing of a computer screen shown in the original disclosure suggests that the applicant originally had possession of the invention as embodied in an article of manufacture. Accordingly, the broken line drawing may be converted to a solid line drawing without violating the prohibition against new matter. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981) (An applicant is entitled to claims as broad as the original disclosure will allow). However, a solid line drawing of a computer screen in the original disclosure may not be amended to a solid line drawing of only a portion of the computer screen without support in the original disclosure for such an amendment. See, e.g., Ballew v. Watson, 290 F.2d 353, 355, 129 USPQ 48, 50 (Comm'r Pat. 1961) (an amendment to the claim which changes the appearance of the original disclosure and would "create newness by the difference achieved" is new matter). 10. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) ("After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.").