Appeal No. 98-1691
Application No. 07/715,262
was shown in the drawing of the design constituting the claim.
Therefore, it was clear to us then, and it remains clear to
us, that there is inadequate support for the broken lines now
shown in the drawing and that the examiner’s rejection under
the first paragraph of 35 U.S.C. 112, based on an inadequate
written description, was proper. The provision of the broken
lines in the drawing was clearly an afterthought, with no
adequate basis within the meaning of 35 U.S.C. 112, first
paragraph, conceived in response to the holding in Ex parte
Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Interferences
1992).
3. With regard to the statutory subject matter question,
contrary to appellants’ contention, our decision is not
inconsistent with the USPTO guidelines or CAFC precedent. 3
Because we have held the inclusion of the broken lines in
the drawing to be improper under 35 U.S.C. 112, first
paragraph, the design claim is clearly drawn to an icon, per
3We note that the USPTO guidelines do not have the force
of law and, to whatever extent our decision may be
inconsistent with those guidelines, the guidelines must fall
until or unless our decision is overturned by a higher
authority.
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007