Appeal No. 98-1689
Application No. 07/715,259
display, which was of interest. The original claim, too, was
for a “PAGE RETRIEVAL ICON” which was only “FOR” a computer
display. Thus, again, the display was never intended, in the
original disclosure, to form any part of the invention. The
originally disclosed and claimed design was clearly for the
icon, per se, and not for any embodiment of that icon in a
display as an article of manufacture. We find that there
clearly was no disclosure in the specification, as originally
filed, for the now claimed design for a computer display.
Because we sustain the examiner’s rejection of the claim
under 35 U.S.C. 112, first paragraph, the broken lines around
the icon in the drawings do constitute new matter and are not
permissible. Accordingly, with the original drawings then
before us, the design claim is clearly drawn to an icon, per
se and such a claim, under Strijland, is directed to
nonstatutory subject matter under 35 U.S.C. 171. Accordingly,
we also sustain the rejection of the claim under 35 U.S.C.
171.
Moreover, we note that the panel in Strijland indicated
that the claimed design therein would have been deemed to
constitute statutory subject matter had the icon been embodied
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