MPEP Section 1504.01(a), Computer-Generated Icons
This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.
1504.01(a) Computer-Generated Icons [R-5]
To be directed to statutory subject matter, design applications for computer-generated icons 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 ICONS
The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated icons comply with the "article of manufacture" requirement of 35 U.S.C. 171.
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. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely 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