Appeal No. 98-1693
Application D-07/343,182
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 Off. Gaz. Pat. & Trademark Off. 60 (April 16, 1996) and
incorporated into the Manual of Patent Examining Procedures
(MPEP) § 1504.01 (6th ed., rev. 3, July 1997).
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 the
touch video graphic icon for copy trim function as shown” as
being directed to nonstatutory subject matter under 35 U.S.C.
§ 171.
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 description of the drawings and, most importantly,
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