Ex Parte Bertieri

Board of Patent Appeals and Interferences

Jan 10, 2003

29105570 (B.P.A.I. Jan. 10, 2003)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FIORENZA BERTIERI
____________
Appeal No. 2002-2307
Application No. 29/105,570
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ON BRIEF
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Before COHEN, SMITH, and MOORE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the following
design claim:
The ornamental design for an eyeglasses
accessory as shown and described.
Appellant's eyeglasses accessory design is depicted in front
elevational, front perspective, rear perspective, and cross
sectional views in Figures 1 through 4, respectively.
Appeal No. 2002-2307
Application No. 29/105,570
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As evidence of obviousness, the examiner has applied the
documents listed below:
Guthrie 1,959,915 May 22, 1934
Lin 5,485,227 Jan. 16, 1996
Shelton Des. 373,782 Sep. 17, 1996
The following rejection is before us for review.
The design claim stands rejected under 35 U.S.C. § 103 as
being unpatentable over Shelton in view of Guthrie and Lin.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the office action
dated October 6, 2000 and the answer (Paper Nos. 10 and 15),
while the complete statement of appellant's argument can be found
in the main and reply briefs (Paper Nos. 14 and 16).
OPINION
In reaching our conclusion on the obviousness issue raised
in this appeal, this panel of the board has carefully considered
appellant's specification, design claim, and drawing figures, the
Appeal No. 2002-2307
Application No. 29/105,570
3
applied reference designs, and the respective viewpoints of
appellant and the examiner. As a consequence of our review, we
make the determination which follows.
We do not sustain the rejection of appellant's design claim
for the reasons set forth below.
Pursuant to 35 U.S.C. § 171, one may obtain a design patent
for "any new, original and ornamental design for an article of
manufacture." To obtain such a patent, however, one must satisfy
the patentability requirement of 35 U.S.C. § 103. See In re
Borden, 90 F.3d 1570, 1574, 39 USPQ2d 1524, 1526 (Fed. Cir.
1996). In the design patent context, the ultimate inquiry under
section 103 is whether the claimed design would have been obvious
to a designer of ordinary skill who designs articles of the type
involved. See In re Rosen, 673 F.2d 388, 390, 213 USPQ 347, 349
(CCPA 1982).

To combine prior art designs, one must first find a single
reference, "a something in existence, the design characteristics
of which are basically the same as the claimed design." In re
Rosen, 673 F.2d at 391, 213 USPQ at 350. Once this primary
Appeal No. 2002-2307
Application No. 29/105,570
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reference is found, other references may be used to modify it to
create a design that has the same overall visual appearance as
the claimed design. See In re Harvey, 12 F.3d 1061, 1063,
29 USPQ2d 1206, 1208 (Fed. Cir. 1993). These secondary
references may only be used to modify the primary reference if
they are "so related [to the primary reference] that the
appearance of certain ornamental features in one would suggest
the application of those features to the other." In re Borden,
90 F.3d at 1575, 39 USPQ2d at 1526-27.
As can readily be discerned from appellant's drawing
figures, the claimed eyeglasses accessory design reveals the
visual prominent feature of the appearance of a particular
pattern of holes across each of two transparent lenses.
As a basic reference, the examiner applied the Shelton
design for a sunglass clip mechanism depicted in association with
lenses shown in phantom lines (Fig. 1). According to the
examiner (Paper No. 10), the Shelton design is similar in
appearance to the claimed design except for the pattern of
openings feature. To overcome the aforementioned deficiency, the
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Application No. 29/105,570
5
designs of Guthrie and Lin are applied for their showings of a
pattern of lens openings.
Clearly, the examiner's basic reference lacks appellant's
ornamentally consequential feature of the appearance of a
particular pattern of openings in transparent lenses of an
eyeglasses accessory. As explained below, this panel of the
Board does not view the respective designs of Guthrie and Lin as
being suggestive of the modification proposed by the examiner.
Unlike the now claimed design, Guthrie reveals the aesthetic
feature of opaque discs (round configurations) with perforations.
As to the Lin reference, it portrays the ornamental feature of a
second (round) lens design 23 with apertures for association with
a first lens design 22. As we see it, the particular and
distinct design shown in each of Guthrie and Lin is not so
related to the overall Shelton design that a designer of eyeglass
accessories would have been motivated to modify the Shelton
design, as proposed, to effect the now claimed design. It is for
this reason that we cannot support the rejection on appeal.
In summary, this panel of the board has not sustained the
rejection of appellant's design claim.
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The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2002-2307
Application No. 29/105,570
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RICHARD L MILLER
12 PARKSIDE DRIVE
DIX HILLS, NY 11746-4879