Appeal No. 98-1689
Application No. 07/715,259
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
PAGE RETRIEVAL 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 appellants, Strijland was decided after
the filing of this application. So, in a valiant effort to
comply with Strijland and the Guidelines, appellants amended
the claim to read, “The ornamental design for A COMPUTER
DISPLAY as shown and described.” Further, appellants amended
3This 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
LIKE.” The examiner withdrew this rejection in light of
appellants’ amendment of December 19, 1996.
4
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