## Facts

- Janaia Donaldson filed a design-patent application with a single claim: “The ornamental design for a softkey display or the like, as shown and described.”
- The specification drawings depicted only the softkey/display image itself (the graphic designs alone).
- The drawings did not show the image on or in any physical article, such as a computer, monitor, display panel, or portion of a screen.
- A USPTO patent examiner rejected the claim as nonstatutory under 35 U.S.C. § 171, reasoning that a design patent must claim an ornamental design **for an article of manufacture**, and the application showed only a freestanding image.
- Donaldson responded that the claim should be understood as “an ornamental design for the display screen of a programmed computer system,” and that the programmed computer system qualified as an article of manufacture.
- The examiner replied that Donaldson’s drawings still did not depict any computer system or display screen, and cited PTO requirements that the article of manufacture be shown in the drawings.
- The examiner maintained the § 171 rejection and made it final.
- Donaldson appealed the final rejection through the ex parte appeal process, resulting in a decision reported at 26 U.S.P.Q.2d 1250 (1992) by the Commissioner of Patents and Trademarks.

## Issues

1. Whether a design claim directed to a computer-generated “softkey display,” when the drawings show only the image and not any article of manufacture, satisfies 35 U.S.C. § 171.
2. Whether an applicant can meet the “article of manufacture” requirement through attorney argument when the drawings do not depict the article bearing the design.
3. Whether the PTO may require that the article of manufacture be depicted in the drawings for a design to be statutory under § 171 and the implementing rules.

## Decision

- The Commissioner affirmed the PTO’s nonstatutory rejection under 35 U.S.C. § 171.
- A computer-generated image shown by itself—without depiction of the physical article on which it appears—is not a statutory “design for an article of manufacture.”
- The PTO may require that the article of manufacture be shown in the design drawings; argument alone cannot supply an article not depicted.

## Legal Principles

- Under 35 U.S.C. § 171, design-patent protection extends only to “a new, original and ornamental design for an article of manufacture.”
- The drawings define the claimed design in a design-patent application, including what the design is “for.”
- A graphic design “per se” (a disembodied image not shown as part of, or applied to, an article) is not within § 171.
- The PTO’s rules and examination practice may require that the article of manufacture be depicted in the drawings; an applicant’s description in prosecution cannot replace what the drawings show.
- Computer-generated images may be eligible for design-patent protection when presented as a design applied to, or embodied in, a qualifying article of manufacture (for example, as surface ornamentation on a display screen or display panel), rather than as the image alone.

## Conclusion

Ex parte Donaldson held that a design application claiming a computer-generated softkey display was properly rejected under § 171 because the drawings showed only the image in isolation and failed to depict any article of manufacture bearing the design; characterizing the design in argument as being “for” a computer display could not cure the missing depiction of the article in the drawings.


Ex parte Donaldson, 26 U.S.P.Q.2d 1250 (1992)