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 "icon-pat@uspto.gov."
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.").