Appeal No. 98-1693
Application D-07/343,182
claim before us in this appeal is directed to "The ornamental
design for the touch video graphic icon for copy trim function
as shown" (emphasis added) and not to any article of
manufacture embodying that icon. In addition, the title and
description in appellants' specification have not been amended
to clarify that the claimed design is embodied in an article
of manufacture. Note, particularly, 37 CFR § 1.153 and the
requirement therein that the title of the design "must
designate the particular article" and the further requirement
that the claim "shall be in formal terms to the ornamental
design for the article . . . as shown, or as shown and
described" (emphasis added).
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.
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