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1504    Examination

MPEP SECTION SUMMARY In design patent applications, ornamentality, novelty, nonobviousness enablement and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.

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MPEP SECTION SUMMARY This section covers statutory subject matter for designs. It goes over the three types of designs that are patentable. A picture alone is not patentable.

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The factor which distinguishes statutory design subject matter from mere picture or ornamentation, per se (i.e., abstract design), is the embodiment of the design in an article of manufacture.

• The design must be shown as applied to or embodied in an article of manufacture.

Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation.

• It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements.

MPEP SECTION SUMMARY This section covers guidelines for computer-generated icons. Essentially, the USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171.

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I. GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED ICONS

A. General Principle Governing Compliance With the “Article of Manufacture” Requirement

Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation.

The USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171.

• Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement of 35 U.S.C. 171.
  
• Since a patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation, a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof, to satisfy 35 U.S.C. 171.
  
  
  

MPEP SECTION SUMMARY While the claimed design must be embodied in an article of manufacture, it may encompass multiple articles or multiple parts within that article.

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When the design involves multiple articles, the title must identify a single entity of manufacture made up by the parts (e.g., set, pair, combination, unit, assembly).

• A descriptive statement should be included in the specification making it clear that the claim is directed to the collective appearance of the articles shown.

 

MPEP SECTION SUMMARY This section discusses functionality versus ornamentality. A design must be created for the purpose of ornamenting. Also covered is a brief outline of establishing a prima facie basis for rejections under 35 U.S.C. 171 which are based on a lack of ornamentality. This section outlines how to overcome a 35 U.S.C. 171 rejection based on a lack of ornamentality and evaluation of evidence submitted to overcome a rejection under 35 U.S.C. 171.

I.   FUNCTIONALITY VS. ORNAMENTALITY

An ornamental feature or design has been defined as one which was “created for the purpose of ornamenting” and cannot be the result or “merely a by-product” of functional or mechanical considerations.

• It is clear that the ornamentality of the article must be the result of a conscious act by the inventor, as 35 U.S.C. 171 requires that a patent for a design be given only to “whoever invents any new, original, and ornamental design for an article of manufacture.”
• Therefore, for a design to be ornamental within the requirements of 35 U.S.C. 171, it must be “created for the purpose of ornamenting.”

II.   ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171

To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing.

Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be:

• common knowledge in the art;
• the appearance of the design itself;
• the specification of a related utility patent; or
• information provided in the specification.

III.   REJECTIONS MADE UNDER 35 U.S.C. 171

Rejections under 35 U.S.C. 171 for lack of ornamentality based on a proper prima facie showing fall into two categories:

• a design visible in its ultimate end use which is primarily functional based on the evidence of record; or
• a design not visible in its normal and intended use as evidence that its appearance is not a matter of concern.

IV.   OVERCOMING A 35 U.S.C. 171 REJECTION BASED ON LACK OF ORNAMENTALITY

A rejection under 35 U.S.C. 171 based on lack of ornamentality may be overcome by the following:

• An affidavit or declaration submitted from the applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claimed design were created with:
• a concern for enhancing the saleable value or increasing the demand for the article.
• a concern primarily for the esthetic appearance of the article;
• Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection.
• Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design.
• Evidence may be provided by a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design;
• When the rejection asserts that the design is purely dictated by functional considerations, evidence may be presented showing possible alternative designs which could have served the same function indicating that the appearance of the claimed design was not purely dictated by function.
• When the rejection asserts no period in the commercial life of the article when its ornamentality may be a matter of concern, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.”

V.    EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER 35 U.S.C. 171

In order to overcome a rejection of the claim under 35 U.S.C. 171 as lacking in ornamentality, applicant must provide evidence that he or she created the design claimed for the “purpose of ornamenting”.

The mere display of the article embodying the design at trade shows or its inclusion in catalogs is insufficient to establish ornamentality.

There must be some clear and specific indication of the ornamentality of the design in this evidence for it to be given probative weight in overcoming the prima facie lack of ornamentality.

In a rejection of a claim under 35 U.S.C. 171 in which some of the evidentiary basis for the rejection is that the design would be hidden during its end use, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.”

• This concern may be shown by the submission of evidence that the appearance of the article was of concern during its period of commercial life by declarations from prospective/actual customers/users attesting that the ornamentality of the article was of concern to them.
• Unless applicant is directly involved with the sale of the design or works with users of the design, he or she cannot provide factual evidence as to the reasons for the purchase/selection of the article embodying the design.

The requirement that the design was created for the 'purpose of ornamenting' must be met with appropriate evidence concerning visibility for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use.

MPEP SECTION SUMMARY 35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality.

MPEP SECTION SUMMARY Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.

 

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