Ex parte Bertani

Board of Patent Appeals and Interferences

May 11, 2001

29100490 (B.P.A.I. May. 11, 2001)

1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALBERTO BERTANI
____________
Appeal No. 2001-0467
Application No. 29/100,490
____________
ON BRIEF
____________
Before HAIRSTON, WALTZ and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of the following design claim:
The ornamental design for a handle, as shown and
described.
In rejecting the appealed claim under 35 U.S.C. § 103,
the examiner relies upon the following two references:
Simpson Des. 199,839 Dec. 22, 1964
Decursu et al. (Decursu) Des. 370,617 Jun. 11, 1996
Appeal No. 2001-0467
Application No. 29/100,490
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The appealed claim stands rejected under 35 U.S.C. § 103
as being unpatentable over Decursu in view of Simpson.
Reference is made to the brief and reply brief (Paper
Nos. 13 and 15) and the answer (Paper No. 14) for the
respective positions of the appellant and the examiner with
regard to the merits of this rejection.
Appellant's claimed design
Appellant's handle design includes a central elongate
cylindrical stalk section having a softly curving right-angle
elbow extending from each end of the stalk, with a
circumferential seam defining each end of the stalk and the
beginning of each elbow. Each elbow starts with a cylindrical
section extending co-axially from the stalk section and
transitioning into a leg section extending radially outward
from the cylindrical section. The leg sections have flat side
faces, partial cylindrical inner faces (facing one another)
and outer faces which are curved in two directions (seen in
the side views and front and rear views). While the outer
faces of the leg sections are softly and continuously curved
from the junctions with the cylindrical sections of the elbows
to the end faces of the leg sections, there is an abrupt and
Appeal No. 2001-0467
Application No. 29/100,490
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distinct edge marking the junction between the cylindrical
section of the elbow and the curved outer face of each leg
section.
The applied prior art
The Decursu handle design includes a central elongate
cylindrical stalk having an elbow extending from each end of
the stalk, with a circumferential seam defining each end of
the stalk and the beginning of each elbow. The outer faces of
the elbows are generally flat and inclined, with respect to
the axial direction of the stalk, at an acute angle, rather
than a right angle as in appellant's design. Consequently,
the overall aesthetic impression of the Decursu design is of a
handle having a central cylindrical stalk with inclined,
rather than right-angle, elbows having flat outer faces.
The Simpson handle design gives the overall impression of
a C-shape, in that it includes an elongate cylindrical stalk
having a quarter-pie shaped end cap portion extending from
each end, each end cap portion having a U-shaped flange
portion at the end thereof. The inner faces of the end cap
portions are flat and extend outward from the stalk at the
Appeal No. 2001-0467
Application No. 29/100,490
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locations of the seams abruptly at right angles to the axial
direction of the stalk.
Opinion
The test for determining obviousness of a claimed design
under 35 U.S.C. § 103 is whether the design would have been
obvious to a designer of ordinary skill who designs articles
of the type involved. See In re Carter, 673 F.2d 1378, 1380,
213 USPQ 625, 626 (CCPA 1982) and In re Nalbandian, 661 F.2d
1214, 1216, 211 USPQ 782, 784 (CCPA 1981). Furthermore, in
order to support a holding of obviousness under § 103, there
must be a reference, a something in existence, the design
characteristics of which are basically the same as the claimed
design. See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350
(CCPA 1982).
As regards the combination of references in design cases,
the question is not whether the references sought to be
combined are in analogous arts in the mechanical sense, but
whether they are so related that the appearance of certain
ornamental features in one would suggest the application of
those features to the other. In re Glavas, 230 F.2d 447, 450-
451, 109 USPQ 50, 52-53 (CCPA 1956).
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As discussed above, appellant's design has an overall
appearance which would make a different visual impression to
the eye of a handle designer of ordinary skill as compared
with the Decursu design. In particular, appellant's design
has the appearance of softly curving elongate elbows extending
from a cylindrical stalk, while Decursu's design has the
appearance of flat inclined elbows extending from a
cylindrical stalk.
It is the examiner's position (answer, page 4) that
Simpson's design would have suggested to a designer of
ordinary skill modification of the Decursu design by curving
the inclined flat surfaces (designated herein as the outer
faces).
Even assuming that Decursu does have the same basic
design characteristics as appellant's design so as to
constitute a proper Rosen type reference and that the Decursu
and Simpson designs are so related that the appearance of
certain ornamental features, such as the curved outer faces,
in Simpson would suggest the application of those features to
the Decursu design, we share appellant's view, as expressed on
page 6 of the brief, that combination of the applied prior art
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references would not result in appellant's claimed design.
Our reasons for this conclusion follow.
As the court in In re Harvey, 12 F.3d 1061, 1063, 29
USPQ2d 1206, 1208 (Fed. Cir. 1993) stated,
[i]n ornamental design cases, a proper obviousness
rejection based on a combination of references
requires that the visual ornamental features (design
characteristics) of the claimed design appear in the
prior art in a manner which suggests such features
as used in the claimed design. If, however, the
combined teachings suggest only components of a
claimed design, but not its overall appearance, an
obviousness rejection is inappropriate [citations
omitted].
Here, as we noted above, the Decursu and Simpson designs
present two aesthetically different end cap alternatives, the
Decursu end caps having the appearance of inclined elbows and
the Simpson end caps having the appearance of quarter-pies.
Absent appellant's own design, we are at a loss to know why
the ordinary designer would have singled out only the curved
outer faces, and not the flat inner faces, overall quarter-pie
shape and enlarged end flanges of the end caps, for
incorporation into the Decursu design as the examiner
proposes. In any event, while Simpson does show a handle
having end caps with curved outer faces, those curved outer
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Application No. 29/100,490
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faces run continuously from the circumferential seams defining
the ends of the stalk to the end flanges of the end caps. As
such, Simpson would not have suggested provision of curved
outer faces on the Decursu design extending from locations
removed from the circumferential seams as in appellant's
design. In our view, the examiner has improperly compared the
visual impressions of selected, separate features of the prior
art designs, rather than the visual impressions of the designs
as a whole in arriving at a conclusion of obviousness. It
follows then that we cannot sustain the examiner's rejection.
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Application No. 29/100,490
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CONCLUSION
To summarize, the decision of the examiner to reject
appellant's design claim under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2001-0467
Application No. 29/100,490
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