[Federal Register Volume 60, Number 193 (Thursday, October 5, 1995)]
[Notices]
[Pages 52170-52171]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-24777]
[[Page 52170]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
RIN 0651-XX04
[Docket No. 950921236-5236-01]
Interim Guidelines for Examination of Design Patent Applications
for Computer-Generated Icons
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice and request for public comments.
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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: 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 20, 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, DC 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, DC 20231.
SUPPLEMENTARY INFORMATION: Written comments should include the
following information:
--Names 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).
Dated: September 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 icon \2\ 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 characteristics 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 describe \9\
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 Section 171
and 112, second paragraph. Suggest amendments which would bring the
claim into compliance with Section 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 Case.
37 CFR 1.71, 1.181-85, 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,
[[Page 52171]]
monitor, other display panel, or portion thereof.
5. If a preponderance of the evidence \10\ 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 claim 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 1.53.
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;'' ``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.
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.'').
[FR Doc. 95-24777 Filed 10-4-95; 8:45 am]
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