Appeal No. 98-1690
Application No. 07/715,257
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 JOB
MANAGER 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
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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