Appeal No. 98-1897
Application No. 07/715,144
itself, for use with or on a computer display, which was of
interest. The original claim, too, was for a “KEYBOARD INPUT
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
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