Ex parte Donaldson

26 U.S.P.Q.2d 1250 (1992)

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Ex parte Donaldson

United States Board of Patent Appeals and Interferences
26 U.S.P.Q.2d 1250 (1992)

Facts

Janaia Donaldson (plaintiff) filed a design-patent application, the sole claim of which read: “The ornamental design for a softkey display or the like, as shown and described.” The drawings in the specification of Donaldson’s application showed only the designs by themselves, and not as part of any computer or computer screen. A patent examiner (defendant) at the United States Patent and Trademark Office rejected Donaldson’s claim as nonstatutory, finding that the claimed design was not an ornamental design for an article of manufacture, as required by 35 U.S.C. § 171. In response, Donaldson argued that her claimed design was “an ornamental design for the display screen of a programmed computer system,” and that such a system qualified as an article of manufacture. The examiner responded to Donaldson’s argument by pointing out that Donaldson’s drawings did not depict any computer system and that an applicable regulation required that the article of manufacture be shown in the drawings. Accordingly, the examiner interposed a final rejection of Donaldson’s claim. Donaldson appealed.

Rule of Law

Issue

Holding and Reasoning (Manbeck, Comm’r.)

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