35 U.S.C. 171 Patents for designs.

1. (a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
2. (b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
3. (c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

The language "new, original and ornamental design for an article of manufacture" set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs:

1. (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);
2. (B) a design for the shape or configuration of an article of manufacture; and
3. (C) a combination of the first two categories.

See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int. 1992).

A picture standing alone is not patentable under 35 U.S.C. 171. 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. Consistent with 35 U.S.C. 171, case law and USPTO practice, the design must be shown as applied to or embodied in an article of manufacture.

A claim to a picture, print, impression, etc. per se, that is not applied to or embodied in an article of manufacture should be rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter. The following paragraphs may be used.

The following is a quotation of 35 U.S.C. 171:

(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. (b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided. (c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.

Examiner Note:

This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either full or broken lines.

The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.

Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.

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 (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).

Form paragraphs 15.38 and 15.40 may be used in a second or subsequent action, where appropriate (see MPEP § 1504.02).

To be directed to statutory subject matter, design applications for computer-generated electronic images must comply with the article of manufacture requirement of 35 U.S.C. 171.

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

The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171.

A. General Principles Governing Compliance With the Article of Manufacture Requirement

As discussed in MPEP § 1504.01, a picture standing alone is not protectable by a design patent. Additionally, "[m]ere display of a picture on a screen is not significantly different … from the display of a picture on a piece of paper" and is not enough "to convert a picture into a design for an article of manufacture." Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Therefore, images merely displayed on a display panel (e.g., computer screen, monitor, computer display system, mobile phone screen, virtual reality/augmented reality goggles), or portion thereof are not considered eligible under 35 U.S.C. 171. However, the USPTO considers a computer icon or a graphical user interface (GUI) shown on a display panel, or a portion thereof, to be more than a mere display of a picture on a screen because a computer icon or a GUI is an integral and active component in the operation of— i.e., embodied in and/or applied to—a programmed computer displaying the computer icon or the GUI. Therefore, a computer icon or a GUI is eligible under 35 U.S.C. 171, if properly presented and claimed (e.g., the drawing(s) fully discloses the design as embodied in the article of manufacture).

Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). A patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. See MPEP § 1502. Thus, a computer icon or a GUI must be embodied in a display panel, or portion thereof, to satisfy 35 U.S.C. 171. Therefore, if properly presented and claimed, a display panel (or portion thereof) with a computer icon or a GUI constitutes statutory subject matter under 35 U.S.C. 171.

"We do not see that the dependence of the existence of a design on something outside itself is a reason for holding it is not a design ‘for an article of manufacture.’" See In re Hruby, 373 F.2d 997, 1001, 153 USPQ 61, 66 (CCPA 1967) (design of water fountain patentable design for an article of manufacture). The dependence of a computer icon or a GUI on a central processing unit and computer program for its existence itself is not a reason for holding that the design is not for an article of manufacture.

B. Procedures for Evaluating Whether Design Patent Applications Drawn to Computer-Generated Electronic Images Comply With the Article of Manufacture Requirement

USPTO personnel shall adhere to the following procedures when reviewing design patent applications drawn to computer-generated electronic images for compliance with the article of manufacture requirement of 35 U.S.C. 171.

The complete disclosure must be considered when evaluating a design claim that includes a computer-generated electronic image. More specifically, USPTO personnel must read the disclosure to determine what is claimed as the design and whether the design is embodied in an article of manufacture. USPTO personnel must:

1. (A) Review the title and claim language to determine whether the title and claim adequately describe a design for an article of manufacture under 35 U.S.C. 171. USPTO personnel must also consider the following and, where appropriate, make the noted objections and rejections.
   1. (1) A computer-generated electronic image shown on a display panel that is not a computer icon or a GUI (i.e., that is not an integral and active component in the operation of a computer) is a mere illustration of a picture displayed electronically. Therefore, a claim to the image per se, to a display panel (or a portion thereof) with the image, or to the image for display on a display panel, will not satisfy the article of manufacture requirement, and such a claim should be rejected under 35 U.S.C. 171 for failing to comply with the article of manufacture requirement.
   2. (2) The USPTO considers computer icons or GUIs to be two-dimensional images which standing alone are surface ornamentation (i.e., an ornament, impression, print, or picture). Therefore, the title and the claim should not be for a computer icon or a GUI alone, but must be for an article of manufacture, for example, a "display panel with computer icon."
   3. (3) When a design claim is to a display panel with a computer-generated image, the USPTO considers the term "icon" or "GUI" in the title and the claim to be indicating that the image on the display panel is not merely a displayed picture, but an integral and active component in the operation of a programmed computer displaying the image. See Strijland, 26 USPQ2d at 1263. Therefore, a claim and title directed to a display screen with an icon or a GUI adequately describes a design for an article of manufacture under 35 U.S.C. 171. (Note that though the underlying article of manufacture for an icon or a GUI has functional properties, the design of the icon or the GUI itself is not functional, and thus this subsection is not in tension with, nor does it contradict, the functionality doctrine, which requires that design patent protection extend only to the "ornamental design" of an article of manufacture. See 35 U.S.C. 171(a); MPEP § 1504.01(c), subsection I).
   4. (4) The following are examples of claim language and titles that do not adequately describe a design for an article of manufacture under 35 U.S.C. 171: "display screen with virtual image," "virtual image for display on computer screen," "computer icon," and "icon for computer screen." This list of examples is not exhaustive. These types of claims and titles should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture, and the objection should be maintained until the title and the claim language are appropriately amended. See MPEP § 707.07(e). Note that a determination must be made as to whether a rejection under 35 U.S.C. 171 is appropriate (e.g., the application fails to provide support for an icon or a GUI). See item (A)(1) above; see also item (C) and subsection I.C, example 2 below.
   5. (5) The following are examples of claim language and titles that do adequately describe a design for an article of manufacture under 35 U.S.C. 171: "computer screen with an icon," "display panel with GUI," "display screen or portion thereof with icon," "portion of a computer screen with an icon," "portion of a display panel with an icon," and "portion of a monitor displayed with an icon." This list of examples is not exhaustive.
2. (B) Review the specification to determine whether a characteristic feature statement is present. If a characteristic feature statement is present, determine whether it describes the claimed subject matter as a computer icon or a GUI embodied in a display panel, or portion thereof. See McGrady v. Aspenglas Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) (descriptive statement in design patent application narrows claim scope).
3. (C) Review the drawing to determine whether a display panel, or a portion thereof, is shown in sufficient views to fully disclose the design as embodied in the article. See Changes to Patent Practice and Procedure, 62 FR 53132, 53164 (October 10, 1997). Since the claim must be in formal terms to the design "as shown, or as shown and described," the drawing provides the best description of the claim. 37 CFR 1.153 or 1.1025. USPTO personnel must also consider the following and, where appropriate, make the noted rejections.
   1. (1) If the drawing does not depict a computer icon or a GUI embodied in a display panel, or a portion thereof, in either solid or broken lines, reject the claimed design under 35 U.S.C. 171 for failing to comply with the article of manufacture requirement.
      1. (a) If the disclosure as a whole does not suggest or describe the claimed subject matter as a computer icon or a GUI embodied in a display panel, or a portion thereof, indicate that:
         1. (i) The claim is fatally defective under 35 U.S.C. 171; and
         2. (ii) Amendments to the written description, drawings and/or claim attempting to overcome the rejection will ordinarily be entered, however, any new matter will be required to be canceled from the written description, drawings and/or claims. If new matter is added that affects the claim, the claim should be rejected under 35 U.S.C. 112(a).
      2. (b) If the disclosure as a whole suggests or describes the claimed subject matter as a computer icon or a GUI embodied in a display panel, or a portion thereof, USPTO personnel must indicate that the drawing may be amended to overcome the rejection under 35 U.S.C. 171. Suggest amendments that would bring the claim into compliance with 35 U.S.C. 171.
4. (D) Indicate all objections to the disclosure for failure to comply with the requirements of the Rules of Practice in Patent Cases. See e.g. 37 CFR 1.71, 1.81 -1.85, and 1.152 -1.154. Suggest amendments which would bring the disclosure into compliance with the requirements of the Rules of Practice in Patent Cases.
5. (E) Upon reply by applicant:
   1. (1) Enter any appropriate amendments; and
   2. (2) Review all arguments and the entire record, including any amendments, to determine whether the drawing, title, and specification clearly disclose a computer icon or a GUI embodied in a display panel, or a portion thereof.
6. (F) If, by a preponderance of the evidence (see In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)) ("After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument."), the applicant has established that the computer icon or a GUI is embodied in a display panel, or a portion thereof, withdraw the rejection under 35 U.S.C. 171.

C. Examples

The following examples are provided to assist USPTO personnel in determining whether design patent applications for computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171 and whether other objections are appropriate.

Example 1

Title: Computer display screen with icon

Description: The figure is a front view of a computer display screen with icon, showing the new design. The broken lines showing a portion of the computer display screen form no part of the claimed design.

Claim: The ornamental design for computer display screen with icon as shown and described.

As presented, the claimed design in this example complies with 35 U.S.C. 171 because:

• the USPTO considers a computer icon or a GUI on a display panel to be an integral and active component in the operation of a programmed computer displaying the design and more than a displayed picture; and

• the application fully discloses the design as embodied in an article of manufacture, as the drawing depicts the design embodied in a computer screen in broken lines.

In addition, the title and claim comply with 37 CFR 1.153(a) or 37 CFR 1.1067(a) because the title and claim adequately designate a particular article of manufacture (i.e., the computer display screen).

Example 2

Title: Virtual paper stack

Description: The figure is a front view of a computer display screen with a virtual paper stack showing the new design. The broken lines showing a portion of the computer display screen form no part of the claimed design.

Claim: The ornamental design for a virtual paper stack as shown and described.

As presented, the claimed design in this example does not comply with 35 U.S.C. 171. The image is merely a picture displayed on a computer display screen. Because the original disclosure does not provide support for amending the claim to include a computer icon, the claim is fatally defective under 35 U.S.C. 171 and should be rejected under 35 U.S.C. 171, as set forth in subsection I.B above. In addition, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture.

Example 3

Title: Paper stack icon for use on a mobile device screen

Description: The figure is a front view of a paper stack icon showing the new design.

Claim: The ornamental design for a paper stack icon for use on a mobile device screen as shown and described.

As presented, the claimed design in this example would not comply with 35 U.S.C. 171 because the drawing does not depict an article of manufacture (e.g., a display panel) in either solid or broken lines. Therefore, the claim should be rejected under 35 U.S.C. 171, as set forth in subsection I.B above. In addition, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture. Specifically, the language "for use on a mobile device screen" does not adequately designate a particular article of manufacture. However, because the original disclosure provides support for a mobile device screen, the application could be amended as follows:

Title: Mobile device screen with a paper Paper stack icon for use on a mobile device screen

Claim: The ornamental design for a mobile device screen with a paper stack icon for use on a mobile device as shown and described.

Description: The figure is a front view of a mobile device screen with a paper stack icon showing the new design. The broken lines showing a portion of the mobile device screen form no part of the claimed design.

Note that a replacement figure showing the portion of a mobile device screen in either solid or broken lines must not introduce new matter. The replacement figure shown represents a best practice for applicants as it is the most likely amendment to be supported by the original disclosure.

Replacement Figure:

Example 4

Title: Icon for computer display screen

Description: The figure is a front view of a computer display screen with icon, showing the new design. The broken lines showing a portion of the computer display screen form no part of the claimed design.

Claim: The ornamental design for an icon for computer display screen as shown and described.

As presented, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture. In particular, the language "for computer display screen" does not adequately designate a particular article of manufacture. However, as presented, the claimed design in this example complies with 35 U.S.C. 171 because:

• the USPTO considers a computer icon or a GUI on a display panel to be an integral and active component in the operation of a programmed computer displaying the design and more than a displayed picture; and

• the application fully discloses the design as embodied in an article of manufacture, as the description and drawing depict the design embodied in a computer display screen in broken lines and the description (i.e., the broken line statement) describes a portion of a computer display screen.

To address the objections to the title and claim, the application could be amended as follows:

Title: lcon for computer Computer display screen with icon

Claim: The ornamental design for an icon for a computer display screen with icon as shown and described.

II. TREATMENT OF TYPE FONTS

Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the article of manufacture requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.

III. CHANGEABLE COMPUTER-GENERATED ELECTRONIC IMAGES

Computer-generated electronic images that change in appearance during viewing may be the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially, no ornamental aspects are attributed to the process or period in which one image changes into another. A descriptive statement must be included in the specification describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown. Examples of such a descriptive statement are as follows:

"The subject matter in this patent includes a process or period in which an image changes into another image. This process or period forms no part of the claimed design;" or

"The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. The process or period in which one image transitions to another image forms no part of the claimed design;" or

"The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. No ornamental aspects are associated with the process or period in which one image transitions to another image."

Example

The following example is provided to assist USPTO personnel in determining whether design patent applications for changeable computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171 and whether other objections are appropriate.

Title: Animated Icon

Description: Figure 1 is a front view showing a first image in a sequence for an animated icon showing a new design. Figure 2 is a second image thereof. The appearance of the animated image sequentially transitions between the images shown in Figs. 1-2. The process or period in which one image transitions to another image forms no part of the claimed design. The broken lines showing a portion of a computer display screen form no part of the claimed design.

Claim: The ornamental design for an animated icon as shown and described.

As presented, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture. However, as presented, the claimed design in this example does comply with 35 U.S.C. 171 because:

• the USPTO considers a computer icon or a GUI on a display panel to be an integral and active component in the operation of a programmed computer displaying the design and more than a displayed picture; and

• the application fully discloses the design as embodied in an article of manufacture, as the drawing depicts the design embodied in a computer display screen in broken lines and the description (i.e., the broken line statement) describes a portion of a computer display screen.

To address the objections to the title and claim, the application could be amended as follows:

Title: Computer display screen with Aanimated icon

Claim: The ornamental design for a computer display screen with an animated icon as shown and described.

The objections should be maintained until the title and the claim are appropriately amended.

While the claimed design must be embodied in an article of manufacture as required by 35 U.S.C. 171, it may encompass multiple articles or multiple parts within that article. See Ex parte Gibson, 20 USPQ 249 (Bd. App. 1933). 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. If the separate parts are shown in a single view, the parts must be shown embraced by a bracket "}". The claim may also involve multiple parts of a single article, where the article is shown in broken lines and various parts are shown in solid lines. In this case, no bracket is needed. See MPEP § 1503.01.

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. See In re Carletti, 328 F.2d 1020, 140 USPQ 653, 654 (CCPA 1964); Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp. 333, 337, 127 USPQ 452, 454 (S.D.N.Y. 1960), aff’d, 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961). 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." See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).

To be patentable, a design must be "primarily ornamental." "In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article." See L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F. Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a "primarily functional invention is not patentable" as a design.

A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a determination based on their ornamental contribution to the design as a whole.

While ornamentality must be based on the entire design, "[i]n determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered." See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986). See, e.g., Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990) (if "significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations", this information may establish the ornamentality of a design.).

"However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function." See Avia Group International Inc. v. L. A. Gear California Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988). The distinction must be maintained between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.

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. See In re Jung, 637 F.3d 1356, 1362, 98 USPQ2d 1174, 1177 (Fed. Cir. 2011). See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), ("the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.").

The proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality is an evaluation of the appearance of the design itself. The examiner’s knowledge of the art, a reply to a letter of inquiry, a brochure emphasizing the functional/mechanical features of the design, the specification of an analogous utility patent (the applicant’s or another inventor), or information provided in the specification may be used to supplement the analysis of the design. If a design is embodied in a specific mechanical article, the analysis that the design lacks ornamentality because its appearance is dictated by functional requirements should be supported by reference to utility patents or some other source of information about the function of the design. If the design is embodied in an article that has a more general use, such as a clip, the analysis and explanation as to why the design lacks ornamentality should be detailed and specific. The examiner’s contention that the specific appearance of the claimed design lacks ornamentality may be supported by In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964) (a design to be patentable must be "created for the purpose of ornamenting" the article in which it is embodied.). The presence or lack of ornamentality must be made on a case by case basis.

Knowledge that the article would be hidden during its end use based on the examiner’s experience in a given art or information that may have been submitted in the application itself would not be considered prima facie evidence of the functional nature of the design. See Seiko Epson Corp v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999). "Visibility during an article’s ‘normal use’ is not a statutory requirement of § 171, but rather a guideline for courts to employ in determining whether the patented features are ‘ornamental’." See Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988). If there is sufficient evidence to show that a specific design "is clearly intended to be noticed during the process of sale and equally clearly intended to be completely hidden from view in the final use," it is not necessary that a rejection be made under 35 U.S.C. 171. See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). The mere fact that an article would be hidden during its ultimate end use is not the basis for a rejection under 35 U.S.C. 171, but this information provides additional evidence to be used in support of the contention that the design lacks ornamentality. The only basis for rejecting a claim under 35 U.S.C. 171 as lacking in ornamentality is an evaluation of the design itself in light of additional information, such as that identified above.

Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: (A) common knowledge in the art; (B) the appearance of the design itself; (C) the specification of a related utility patent; or (D) information provided in the specification.

A rejection under 35 U.S.C. 171 for lack of ornamentality must be supported by evidence and rejections should not be made in the absence of such evidence.

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:

1. (A) a design visible in its ultimate end use which is primarily functional based on the evidence of record; or
2. (B) a design not visible in its normal and intended use as evidence that its appearance is not a matter of concern. See In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).

When the examiner has established a proper prima facie case of lack of ornamentality, "the burden of coming forward with evidence or argument shifts to the applicant." See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under 35 U.S.C. 171 for lack of ornamentality may be overcome by providing evidence from the inventor himself or a representative of the company that commissioned the design that there was an intent to create a design for the "purpose of ornamenting." See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Attorney’s arguments are not a substitute for evidence. Once a proper prima facie case of lack of ornamentality is established by the examiner, it is incumbent upon applicant to come forth with countervailing evidence to rebut the rejection made by the examiner. See Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Int. 1993). Form paragraph 15.08 or 15.08.01, where appropriate, may be used to reject a claim under 35 U.S.C. 171 for lack of ornamentality.

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be "created for the purpose of ornamenting" the article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).

The following evidence establishes a prima facie case of a lack of ornamentality: [1]

Evidence that demonstrates the design is ornamental may be submitted from the applicant in the form of an affidavit or declaration under 37 CFR 1.132:

(a) stating the ornamental considerations which entered into the design of the article; and

(b) identifying what aspects of the design meet those considerations.

An affidavit or declaration under 37 CFR 1.132 may also be submitted from 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.

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality since it appears there is no period in the commercial life of applicant’s [1] when its ornamentality may be a matter of concern. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).

The following evidence establishes a prima facie case of lack of ornamentality: [2]

In order to overcome this rejection, two types of evidence are needed:

(1) Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the article as ornamental and not merely as a means of identification or instruction; and

(2) Evidence to demonstrate the design is ornamental. This type of evidence should demonstrate "thought of ornament" in the design and should be presented in the form of an affidavit or declaration under 37 CFR 1.132 from the applicant:

(a) stating the ornamental considerations which entered into the design of the article; and

(b) identifying what aspects of the design meet those considerations.

An affidavit or declaration under 37 CFR 1.132 may also be submitted from 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.

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

1. In bracket 1, insert the name of the article in which the design is embodied.

2. In bracket 2, insert source of evidence of the article’s design being of no concern, for example, an analysis of a corresponding utility patent, a brochure, a response to a letter of inquiry, etc.

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:

1. (A) An affidavit or declaration under 37 CFR 1.132 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:
   1. (1) a concern for enhancing the saleable value or increasing demand for the article. See Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), or
   2. (2) a concern primarily for the esthetic appearance of the article;
2. (B) Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);
3. (C) 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. See Seiko Epson Corp. v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);
4. (D) 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;
5. (E) 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. See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993);
6. (F) 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." See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & Inter. 1993).

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". See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).

The mere display of the article embodying the design at trade shows or its inclusion in catalogs is insufficient to establish ornamentality. See Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). 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. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).

The examiner must evaluate evidence submitted by the applicant in light of the design as a whole to decide if the claim is primarily ornamental. It is important to be aware that this determination is not based on the size or amount of the features identified as ornamental but rather on their influence on the overall appearance of the design.

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." See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). 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. See MPEP § 716.03(b), citing In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996). In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.).

Once applicant has proven that there is a period of visibility during which the ornamentality of the design is a "matter of concern," it is then necessary to determine whether the claimed design was primarily ornamental during that period. See Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N. D. Ill. 1988). The fact that a design would be visible during its commercial life is not sufficient evidence that the design was "created for the purpose of ornamenting". See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Examiners should follow the standard for determining ornamentality as outlined above.

"The possibility of encasing a heretofore concealed design element in a transparent cover for no reason other than to avoid this rule cannot avoid the visibility [guideline]... , lest it become meaningless." See Norco Products Inc. v. Mecca Development Inc., 617 F. Supp. 1079, 1081, 227 USPQ 724, 726 (D. Conn. 1985). Applicant cannot rely on mere possibilities to provide factual evidence of ornamentality for the claimed 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. See In re Webb, 916 F.2d 1553, 16 USPQ2d 1433 (Fed. Cir. 1990).

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. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as "the thing invented or produced, for which a patent is given." "The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper - weights, etc. does not, in my opinion, evince the slightest exercise of invention...." Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that "to take a natural form, in a natural pose, ... does not constitute invention" when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a "baby doll simulating the natural features...of a baby without embodying some grotesqueness or departure from the natural form" is not patentable.

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. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks originality. The design is merely simulating [1] which applicant himself did not invent. See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 1935); In re Smith, 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); and Bennage v. Phillippi, 1876 C.D. 135, 9 OG 1159.

Examiner Note:

1. In bracket 1, insert the name of the article or person being simulated, e.g., the White House, Marilyn Monroe, an animal which is not stylized or caricatured in any way, a rock or shell to be used as paperweight, etc.

2. This form paragraph should be followed by form paragraph 15.08.03 when evidence has been cited to show the article or person being simulated.

Applicant’s design has in no way departed from the natural appearance of [1]. This reference is not relied on in this rejection but is supplied merely as representative of the usual or typical appearance of [2] in order that the claim may be compared to that which it is simulating.

Examiner Note:

1. In bracket 1, insert name of article or person being simulated and source (patent, publication, etc.).

2. In bracket 2, insert name of article or person being simulated.

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. See also MPEP § 608. Form paragraph 15.09.01 should be used.

The disclosure, and therefore the claim in this application, is rejected as being offensive and therefore improper subject matter for design patent protection under 35 U.S.C. 171. Such subject matter does not meet the statutory requirements of 35 U.S.C. 171. Moreover, since 37 CFR 1.3 proscribes the presentation of papers which are lacking in decorum and courtesy, and this includes depictions of caricatures in the disclosure, drawings, and/or a claim which might reasonably be considered offensive, such subject matter as presented herein is deemed to be clearly contrary to 37 CFR 1.3. See MPEP § 608.