Appeal No. 98-1692
Application No. 07/715,145
Had appellants’ specification, as originally
filed, included the language added by the above
referred to amendment, and included drawings of the
type shown in the addendum to this opinion, we would 3
have held that the claimed design is statutory
subject matter, and the design would have been
patentable in the absence of other grounds for
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
O.G. 60 (April 16, 1996) and incorporated into MPEP 1504.01.
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 a
MERGE ICON FOR A COMPUTER DISPLAY OR THE LIKE as shown and
described” as being directed to nonstatutory subject matter
under 35 U.S.C. § 171. 4
3Those drawings depict the icon on a display screen of a
computer, the computer processor and the video monitor having
the display screen being all in dotted lines.
4This claim would also be properly rejectable under 35
U.S.C. § 112, second paragraph, for the reasons set forth in
Strijland, at 26 USPQ2d 1262 regarding the language “OR THE
4
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