Ex parte Herceg et al.

Board of Patent Appeals and Interferences

Oct 5, 1998

07343182 (B.P.A.I. Oct. 5, 1998)

Application for patent filed April 24, 1989. 1
According to appellants, the application is a continuation-in-
part of Application 07/164,365, filed March 4, 1988, now
Patent No. 5,079,723.
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS J. HERCEG, JAMES B. WILLIAMS, JR.,
EUGENE L. SMITH, and JOSEPH L. FILION
__________
Appeal No. 98-1693
Application D-07/343,1821
__________
ON BRIEF
__________
Before FRANKFORT, KRASS, and WEIFFENBACH, Administrative
Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1693
Application D-07/343,182
2
This is a decision on appeal from the final rejection of
the
only claim pending:
-- The ornamental design for the touch video graphic
icon for copy trim function as shown. --
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 April 26, 1993) of a rectangular screen in
broken lines around the previously depicted icon constitutes
new matter as there is inadequate support for a video touch
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 appellants and the examiner.
OPINION
Appeal No. 98-1693
Application D-07/343,182
Those drawings depict the icon on a display screen of a2
computer, the computer processor and the video monitor having
the display screen being all in dotted lines.
3
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.
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
Appeal No. 98-1693
Application D-07/343,182
4
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).
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 the
touch video graphic icon for copy trim function as shown” as
being directed to nonstatutory subject matter under 35 U.S.C.
§ 171.
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 description of the drawings and, most importantly,
Appeal No. 98-1693
Application D-07/343,182
5
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
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, at least inferentially, a
“touch video screen” and a touch video icon cannot exist
without a touch video screen. Therefore, contend appellants,
there is adequate support in the original disclosure for that
which is now claimed.
We agree with the examiner [answer-page 5] that the mere
mention of a “touch video” 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
Appeal No. 98-1693
Application D-07/343,182
6
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 touch video graphic icon for copy trim function embodied
in a touch video 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.
Particularly with regard to the Herceg declaration, we
agree with the examiner that there is no dispute that the icon
which is the subject of the claimed design is for use on a
computer-related display or touch video display. We also
agree with declarant that touch video screens are well known.
The question before us, however, is whether there was adequate
support in the original disclosure for that which is now
claimed, i.e., the icon originally shown in the drawings
surrounded by a broken line purporting to depict a touch video
screen. We find nothing in the declaration that convinces us
Appeal No. 98-1693
Application D-07/343,182
7
that there was, indeed, adequate support for that which is now
claimed.
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 touch video screen having a touch
video graphic icon for copy trim function, but, rather,
appellants were interested only in obtaining protection for
the design of the icon, itself. It was clearly the icon,
itself, for use with or on a video touch screen, which was of
interest. The video touch screen 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
video touch screen as an article of manufacture. We find that
there clearly was no disclosure in the specification, as
originally filed, for the now claimed design (as depicted in
the amended drawings) for a touch video graphic icon for copy
trim function incorporated into a video touch screen as an
article of manufacture. Moreover, we note that the design
Appeal No. 98-1693
Application D-07/343,182
8
claim before us in this appeal is directed to "The ornamental
design for the touch video graphic icon for copy trim function
as shown" (emphasis added) and not to any article of
manufacture embodying that icon. In addition, the title and
description in appellants' specification have not been amended
to clarify that the claimed design is embodied in an article
of manufacture. Note, particularly, 37 CFR § 1.153 and the
requirement therein that the title of the design "must
designate the particular article" and the further requirement
that the claim "shall be in formal terms to the ornamental
design for the article . . . as shown, or as shown and
described" (emphasis added).
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.
Appeal No. 98-1693
Application D-07/343,182
9
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
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 video
touch screen, 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
Appeal No. 98-1693
Application D-07/343,182
10
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,
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.
Appeal No. 98-1693
Application D-07/343,182
11
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 )
Ronald Zibelli
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