[Federal Register Volume 61, Number 55 (Wednesday, March 20, 1996)]
[Notices]
[Pages 11380-11382]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-6655]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 950921236-6049-03]
RIN 0651-XX04
Guidelines for Examination of Design Patent Applications For
Computer-Generated Icons
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The Patent and Trademark Office (PTO) is publishing the final
version of guidelines to be used by Office 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).
EFFECTIVE DATE: April 19, 1996.
FOR FURTHER INFORMATION CONTACT: John Kittle by telephone at (703) 308-
1495, by telefax at (703) 305-3600, by electronic mail through the
INTERNET to ``[email protected],'' or by mail addressed to the
Assistant Commissioner for Patents, Washington, D.C. 20231, Attn: John
Kittle, Director, Group 1100/2900, Crystal Plaza 3, 8D19.
SUPPLEMENTARY INFORMATION:
I. Discussion of Public Comments
Comments were received by the PTO from eleven different individuals
in response to the request for comments on the interim guidelines for
examination of design patent applications for computer-generated icons
published October 5, 1995 (60 FR 52170). All comments have been
carefully considered.
Two comments suggested the adoption of the interim guidelines as
proposed. However, a number of changes have been made to the interim
guidelines in response to the other comments.
[[Page 11381]]
One comment suggested that computer-generated icons are not
``ornamental'' designs within the meaning of 35 U.S.C. 171 because they
are dictated by purely functional considerations. These guidelines do
not address the procedures to be used by PTO personnel in assessing
design ornamentality. Compliance with the ornamentality requirement of
35 U.S.C. 171 will be addressed on a case-by-case basis pursuant to
prevailing laws, rules, and regulations. In this regard, prevailing
case law, such as Avia Group Int'l, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557, 1563 (Fed. Cir. 1988), indicates that a distinction
exists between the functionality of an article and the functionality of
the design of the article that performs the function. Based on this
distinction, the design of a computer-generated icon may not be
dictated by the function associated with the computer-generated icon.
Many of the comments suggested that the PTO delete the requirement
for a solid line depiction of the article of manufacture on the ground
that it is not legally required. The PTO has adopted this suggestion.
The final guidelines simply require a depiction of an article of
manufacture in either solid or broken lines.
Two comments suggested that the PTO delete any requirement to
depict an article of manufacture on the ground that indication of an
article of manufacture in the title should be sufficient. This
suggestion was not adopted. The depiction of an article of manufacture
is necessary to ensure that any design patent covers more than mere
abstract, two-dimensional, surface ornamentation.
One comment suggested that the language in the guidelines be
amended to clarify that the guidelines satisfy the ``design for an
article of manufacture'' requirement of 35 U.S.C. 171. This suggestion
has not been followed. Computer-generated icons are designs within the
meaning of 35 U.S.C. 171, but must be embodied in an article of
manufacture to satisfy the statute. These guidelines are directed to
determining whether the icon is embodied in an article of manufacture,
not whether it is a design.
One comment suggested that the guidelines be amended to clarify
that the drawing must contain a sufficient number of views to
constitute a complete disclosure of the appearance of the article as
required by 37 CFR 1.152. This suggestion was based on the language in
the interim guidelines that a computer-generated icon may be embodied
in a portion of computer screen, monitor, or other display panel. This
suggestion has been adopted. See footnote 6.
One comment suggested that the interim guidelines be modified to
require the depiction of a central processing unit (CPU). This
suggestion has not been adopted. The dependence of a computer-generated
icon on a CPU for its existence is not a reason for requiring depiction
of a CPU.
One comment suggested deleting the rejection under 35 U.S.C. 112,
second paragraph for failure to depict the article of manufacture in
solid lines. This suggestion has been adopted. Compliance with 35
U.S.C. 112, second paragraph, will be addressed on a case-by-case basis
under the usual laws, rules, and regulations applied to such questions.
One comment suggested that the guidelines include a statement that
a portion of a computer screen can be represented by a breakout of a
screen portion without screen borders, and some shade lines adjacent to
the icon in the breakout portion to indicate a glass surface. The
suggestion for a statement regarding a breakout portion was not
specifically adopted. However, a statement was added to footnote 6
indicating that the design drawing must meet the requirements of 37 CFR
1.84 which provides for exploded, partial, and sectional views.
One comment suggested that the guidelines include a statement that
the characteristic feature statement can be an appropriate invention
title and that the title could be repeated as the characteristic
feature statement. This suggestion has not been adopted. The
characteristic feature statement should describe a particular feature
of the design that is considered a feature of novelty or non-
obviousness over the prior art. The guidelines already suggest
appropriate titles.
One comment suggested that some other form of intellectual property
protection would be a more appropriate method of protecting rights in
computer-generated icons. The availability of other forms of protection
is not grounds for denying design patent protection to computer-
generated icons which meet the requirements of section 171.
One comment suggested that the interim guidelines may be construed
as substantive rulemaking. The final guidelines have been amended to
indicate that they govern the internal operations of the PTO. The
guidelines have been developed to assist PTO personnel in their review
of design patent applications covering computer-generated icons for
compliance with the ``article of manufacture'' requirement of 35 U.S.C.
171.
II. Guidelines for Examination of Design Patent Applications for
Computer-Generated Icons
The following guidelines have been 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
The PTO considers designs for computer-generated icons 2
embodied in articles of manufacture to be statutory subject matter
eligible for design patent protection under section 171. Thus, if an
application claims a computer-generated icon shown on a computer
screen, monitor, other display panel, or a portion thereof,3 the
claim complies with the ``article of manufacture'' requirement of
section 171.4
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 shown. 37 CFR
1.152.6
b. Review the title to determine whether it clearly describes the
claimed subject matter.7 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.8
2. If the drawing does not depict a computer-generated icon
embodied in a computer screen, monitor, other display panel, or a
portion thereof, in either solid or broken lines, reject the claimed
design under section 171 for failing to
[[Page 11382]]
comply with the article of manufacture requirement.
a. If the disclosure as a whole does not suggest or describe 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 fatally defective under section 171;
and (ii) amendments to the written description, drawings and/or claim
attempting to overcome the rejection will not be entered because they
would lack a written descriptive basis under 35 U.S.C. 112, first
paragraph, and would constitute new matter under 35 U.S.C. 132.
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 rejection under section 171.
Suggest amendments which would bring the claim into compliance with
section 171.
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. Approve entry of any amendments which have support in the
original disclosure; and
b. Review all arguments and the entire record, including any
amendments, 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, by a preponderance of the evidence,9 the applicant has
established that the computer-generated icon is embodied in a computer
screen, monitor, other display panel, or portion thereof, withdraw the
rejection under section 171.
III. Effect of the Guidelines on Pending Design Applications Drawn
to Computer-Generated Icons
PTO personnel shall follow the procedures set forth in this Notice
when examining design patent applications for computer-generated icons
pending in the PTO as of the effective date of these Guidelines.
IV. Treatment of Type Fonts
Traditionally, type fonts have been 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.
V. 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; 1504.01.A.
4. ``We do not see that the dependence of the existence of a
design on something outside itself is a reason for holding it is not
a design `for an article of manufacture.' '' In re Hruby , 153 USPQ
61, 66 (CCPA 1967) (design of water fountain patentable design for
an article of manufacture). The dependence of a computer-generated
icon on a central processing unit and computer program for its
existence itself is not a reason for holding that the design is not
for an article of manufacture.
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. Although a computer-generated icon may be embodied in only a
portion of a computer screen, monitor, or other display panel, the
drawing ``must contain a sufficient number of views to constitute a
complete disclosure of the appearance of the article.'' 37 CFR
1.152. In addition, the drawing must comply with 37 CFR 1.84.
7. 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.''
8. 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).
9. 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.'').
Dated: March 14, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-6655 Filed 3-19-96; 8:45 am]
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