Appeal No. 98-1694
Application 07/715,261
have held that the claimed design is statutory
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
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 an
ACCESS CONTROL ICON FOR A COMPUTER DISPLAY OR THE LIKE as
shown and described” as being directed to nonstatutory subject
matter under 35 U.S.C. § 171.3
Unfortunately for appellant, Strijland was decided after
the filing of this application. So, in a valiant effort to
comply with Strijland and the Guidelines, appellant amended
This claim would also be properly rejectable under 35 U.S.C. § 112,3
second paragraph, for the reasons set forth in Strijland at 26 USPQ2d 1262
regarding the language “OR THE LIKE.” The examiner withdrew this rejection
in light of appellant’s amendment of December 19, 1996.
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