Appeal No. 98-1900
Application D-07/715,260
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
constitute statutory subject matter had the icon been embodied
in the display of a computer, showing the computer and the
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