Ex parte Bruns

Board of Patent Appeals and Interferences

Nov 22, 2000

29021723 (B.P.A.I. Nov. 22, 2000)

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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK W. BRUNS
_____________
Appeal No. 1999-1569
Application 29/021,723
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
McQUADE and WARREN, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Mark W. Bruns appeals from the final rejection of the
following claim for an ornamental design:
The ornamental design for the COMBINE PLATFORM AUGER
FINGER GUIDE as shown and described.
Appeal No. 1999-1569
Application 29/021,723
2
Appeal No. 1999-1569
Application 29/021,723
3
In response to a request for information (Paper No. 2),
the appellant submitted material (Paper No. 3) indicating that
a combine platform auger finger guide is an article of
manufacture which is adapted to be mounted on the tubular wall
of a combine platform auger to guide crop-engaging fingers
that are mounted within and movable through the wall.
The claim stands rejected under 35 U.S.C. § 171 as being
directed to subject matter which is non-statutory because it
lacks ornamentality.
Under § 171, a design patent may be granted only for a
new, original and ornamental design. When a configuration is
the result of functional considerations only, the resulting
design is not patentable as an ornamental design for the
simple reason that it is not ornamental. In re Carletti, 328
F.2d 1020, 1021-22, 140 USPQ 653, 654 (CCPA 1964). In other
words, if a design is primarily functional rather than
primarily ornamental, it cannot be patented. See L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d
1913, 1917 (Fed. Cir.), cert. denied, 114 S.Ct. 291 (1993);
Appeal No. 1999-1569
Application 29/021,723
4
Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc.,
853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988);
Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238,
231 USPQ 774, 777 (Fed. Cir. 1986).
In the present case, the examiner submits that the
claimed design for a combine platform auger finger guide lacks
ornamentality because
[a]rticles of this type would seem to be devised to
satisfy purely structural and mechanical
requirements as well. No concern for ornamental
value may be ascribed to its functional features. A
potential purchaser and user of the claimed article
would not select it on the basis of any
consideration other than utility [first Office
action, Paper No. 4, page 2].
The examiner further explains that “due to the title, the
utilitarian configuration, and lack of ornamental features of
the article, . . . it was proper to give the rejection under
35 U.S.C. 171 as lacking ornamentality based [on] the
examiner’s knowledge of [the] art” (examiner’s answer, Paper
No. 13,
page 2).
Appeal No. 1999-1569
Application 29/021,723
5
To reject a claim, an examiner bears the initial burden
of presenting a factual basis establishing a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445-46,
24 USPQ2d 1443, 1444-45 (Fed. Cir. 19922); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). If
this burden is met, the burden of coming forward with a
showing of facts supporting the opposite conclusion shifts to
the applicant. After such rebuttal evidence is submitted, all
of the evidence must be considered anew, with patentability
being determined on the totality of the record, by a
preponderance of evidence with due consideration to
persuasiveness of argument. Of course, if the examiner’s
initial showing does not produce a prima facie case of
unpatentability, then without more the applicant is entitled
to grant of the patent. Id.
With regard to the rejection at bar, the examiner’s
determination that the claimed design for a combine platform
auger finger guide is functional rests solely on a series of
unsupported and purely conjectural assertions, rather than on
a sound and cogently explained factual basis. Hence, there is
Appeal No. 1999-1569
Application 29/021,723
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no prima facie case here that the claimed design lacks
ornamentality. Accordingly, we shall not sustain the standing
35 U.S.C. § 171 rejection of the appellant’s claim.
Appeal No. 1999-1569
Application 29/021,723
7
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 1999-1569
Application 29/021,723
8
WARREN, Administrative Patent Judge, Concurring:
I concur with the panel’s decision to reverse the
decision of the examiner based on the record before us for the
following reasons.
“The ‘ornamental’ requirement of [35 U.S.C. § 171] . . .
means that the design must not be governed solely by function,
i.e., that this is not the only possible form of the article
that could perform its function. . . . A design patent is for
a useful article, but patentability is based on the design of
the article, not the use.” Seiko Epson Corp. v. Nu-Kote
International Inc., 190 F.3d 1360, 1368, 52 USPQ2d 1011, 1017
(Fed. Cir. 1999), citing L.A. Gear Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993);
see also Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563,
1566,
40 USPQ2d 1048, 1049-50 (Fed. Cir. 1996); Power Controls Corp.
v. Hybrinetics, Inc., 806 F.2d 234, 238-40, 231 USPQ 774, 777-
78 (Fed. Cir. 1986); In re Carletti, 328 F.2d 1020, 1021-22,
140 USPQ 653, 654 (CCPA 1964) (“[I]t has long been settled
that when a configuration is the result of functional
Appeal No. 1999-1569
Application 29/021,723
Contrary the position advanced by appellant in his brief,1
(continued...)
9
considerations only, the resulting design is not patentable as
an ornamental design for the simple reason that is it not
‘ornamental’ – as not created for the purpose of ornamenting.
[Citations omitted.]”). “In determining whether a design is
primarily functional or primarily ornamental the claimed
design is viewed in its entirety, for the ultimate question is
not the functional or decorative aspect of each separate
feature, but the overall appearance of the article, in
determining whether the claimed design is dictated by the
utilitarian purpose if the article. [Citations omitted.]” L.A.
Gear, supra. “When there are several ways to achieve the
function of an article of manufacture, the design of the
article is more likely to serve a primarily ornamental
purpose. [Citations omitted.]” Id. Thus, when viewed in its
entirety, “[I]f the particular design is essential to the use
of the article, it can not be the subject of a design patent.”
Id.; see also Power Controls, supra (patent is invalid if the
claimed design is primarily functional rather than
ornamental). 1
Appeal No. 1999-1569
Application 29/021,723
(...continued)
filed April 1, 1996 (Paper No. 11½; pages 3-4), whether the
claimed design is “ornamental” within the meaning of § 171 is
not a matter of aesthetics. See Seiko Epson, 190 F.3d at
1368,
52 USPQ2d at 1017-18 (“Nor need the design be aesthetically
pleasing. . . . The design may contribute distinctness or
consumer recognition to the design, but an absence of artistic
merit does not mean that the design is purely functional.”);
Carletti, supra (“The appearance of appellants’ gasket seems
as much dictated by functional considerations as is the
appearance of a piece of rope, which, too, has ribs and
grooves nicely arranged. The fact that it is attractive or
pleasant to behold is not enough. Many well-constructed
articles of manufacture whose configurations are dictated
solely by function are pleasing to look upon, for example, a
hex-nut, a ball bearing, a golf club, or a fishing rod, the
pleasure depending on one’s interests.”).
10
I find that the issue of whether the claimed design of
the combine platform auger finger guide encompassed by the
claim on appeal, when viewed in its entirety, is primarily
functional, has not been developed on the record by either the
examiner or appellant. The examiner cites her “knowledge of
the art” as the basis for alleging that the claimed design has
“utilitarian configuration, and lack of ornamental features,”
and thus contends that the burden has therefore shifted to
appellant to establish by testimony that the design was
created “for primarily ornamental purposes” (answer, pages 2-
3). For his part, appellant has testified, inter alia, that
Appeal No. 1999-1569
Application 29/021,723
Declaration Under 35 CFR §1.131 [sic, 37 CFR § 1.132],2
filed July 3, 1995 (Paper No. 6; ¶ 2). See also brief (pages
1-2).
11
“[t]he head has bilateral symmetry, as it is equally
proportioned on opposite sides of vertical and horizontal
lines. The outline of the head is an arbitrary shape.” The2
examiner submits that appellant’s testimony “did not disclose
any areas of the invention as being created for ornamental
purposes” (answer, page 3).
The evidence of record with respect to the designs of
combine platform auger finger guides known in the art is
provided by the utility patents supplied in the information
disclosure statement filed by appellant on August 8, 1994
(Paper No. 3) and the utility patents supplied by the examiner
in the Office action of March 21, 1995. It is apparent from
even a cursory review of this patent literature that the
design of each auger finger guides is dictated by, inter alia,
the shape, size and movement of the particular auger finger,
provision for bearing surfaces and/or lubrication as required
in each instance, the mating of the guide to the aperture in
the wall of the augur drum through which the finger moves in
Appeal No. 1999-1569
Application 29/021,723
12
each instance, and, of course, the contour of each augur drum.
This evidence would reasonably appear to provide the
basis for a finding that prima facie the claimed design when
viewed in its entirety is primarily functional in that it is
primarily adapted for a specific auger finger guide
application, rather than an alternative or arbitrary design
intended for use with a number of different auger finger
applications and created for the purpose of ornamenting. Cf.
Best Lock, 94 F.2d at 1566,
40 USPQ2d at 1050; Power Controls, 806 F.2d at 239-40, 231
USPQ at 778; Carletti, supra; cf. also L.A. Gear, supra.
Indeed, the evidence of record would reasonably provide the
basis for the examiner to inquire into appellant’s reasoning
behind the design in its entirety and for appellant to submit
evidence that the design is primarily ornamental. See Power
Controls, supra; Carletti, 328 F.2d at 1021, 140 USPQ at 654;
see also Best Lock, supra. As noted above, on this record,
appellant has testified that the “outline of the head is an
arbitrary shape” which, of course, involves less than the
overall appearance of the article. Cf. Carletti, 328 F.2d at
Appeal No. 1999-1569
Application 29/021,723
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1022, 140 USPQ at 655 (“Neither does it suffice to argue, as
appellants do, that the ribs and grooves could have been less
gracefully arranged than they are in their actual ‘balanced
relationship.’ If obviousness enters into this case, it is at
this point. If it is desired to employ a groove for
flexibility and three concentric fibs to make a good seal on a
flat drum head, what is more obvious than to arrange them with
approximately equal spacing, as was done? But it was done
without thought of ornament. The creation or origination of an
ornamental design does not reside in the mere avoidance of
dissymmetry.”)
However, the examiner has not made such a finding on the
record, which would provide a “good case” that the claimed
design was primarily functional, cf. Carletti, 328 F.2d at
1021,
140 USPQ at 654, and appellant has not had an opportunity to
respond to such a finding. Cf. In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-427 (CCPA 1976); In re Boon, 439
F.2d 724, 727-28, 169 USPQ 231, 234 (CCPA 1971). Thus, on
this record, the ground of rejection as stated by the examiner
Appeal No. 1999-1569
Application 29/021,723
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must be reversed.
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1999-1569
Application 29/021,723
15
Robert W. Gutenkauf
1300 Foshay Tower
Minneapolis, MN 55402
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