[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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