Ex parte Calfee

Board of Patent Appeals and Interferences

Jul 26, 2000

29092024 (B.P.A.I. Jul. 26, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLIFFORD T. CALFEE
_____________
Appeal No. 2000-1348
Application No. 29/092,024
______________
ON BRIEF
_______________
Before STAAB, KRATZ, and DIXON, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of the following design claim:
The ornamental design for a document holder as shown
and described.
The ornamental design is characterized by a substantially
rectangular upstanding panel having a pair of vertically
Appeal No. 2000-1348
Application No. 29/092,024
2
extending slots therein, and a smaller horizontal ledge
extending outwardly from a bottom edge of the upstanding
panel.
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Nagley Des. 262,978 Feb. 9,
1982
Stadtmauer 5,443,237 Aug. 22,
1995
The claim stands rejected under 35 U.S.C. § 103 as being
unpatentable over Stadtmauer in view of Nagley.
The examiner considers that the ornamental design of
Stadtmauer’s document holder 25 is substantially the same as
the claimed design, and that Nagley shows a copy holder made
from transparent material. Based on these findings, the
examiner concludes that it would have been obvious to a
designer of ordinary skill “to modify the document holder of
Stadtmauer so as to be made of the transparent material as
suggested by Nagley” (answer, page 3). The examiner
recognizes that the modified ornamental design of Stadtmauer
would differ from appellant’s design in certain respects, in
particular in the appearance of the vertically extending slots
Appeal No. 2000-1348
Application No. 29/092,024
3
in the upstanding panel. The examiner considers, however,
that any such differences
Appeal No. 2000-1348
Application No. 29/092,024
We appreciate that appellant’s design differs from that1
of Stadtmauer in other respects. See, for example, the
4
are insufficiently significant to
support patentability under section
103(a) since the difference[s] between
[the] claimed design and [the] basic
reference [are] minor when considering
the overall appearance of . . .
[the claimed design] as a whole.
[Answer, page 4.]
Appellant argues that the slots in the claimed design
differ
from those of the modified Stadtmauer design such that
appellant’s slots
produce a significant visual effect that
clearly distinguish and contribute to the
distinctive appearance, as a whole, of
the . . . [claimed design]. The nested
slot arrangement stands out as a distinctive
visual feature in the design as a whole because
[appellant’s] document holder is otherwise
very simple and plain. Such a noticeable
difference cannot simply be dismissed as
slight or subtle or minor or de minimis.
[Brief, page 7.]
Appellant concludes on page 9 of the brief that “those
features” [i.e., the visual effects attributable to the slots]
convey a distinct visual impression which is novel and which
would not have been obvious to the designer of ordinary skill
who designs article of the type involved.1
Appeal No. 2000-1348
Application No. 29/092,024
flanged vertically extending edges of the upstanding panel.
However, in that appellant does not argue these differences as
patentably distinguishing over the references, we will not
consider them in deciding the obviousness issues raised in
this appeal.
5
Opinion
Like appellant, we consider the claimed ornamental design
to be rather plain in appearance. One of the predominate
visual features of the claimed design is the vertical slot
configuration provided in the upstanding panel. This slot
configuration is aptly described by appellant’s counsel as
being a “relatively narrow slot that is centered within and
inset from a wider slot by a marginal flange, as shown in
FIGURE 1 and FIGURE 5” (brief, page 4). The resulting
appearance when viewed from the front (figure 5), the back
(figure 6), and from various angles (see, for example, the
perspective views of figures 1 and 7) is one of a relatively
narrow slot floating within and inset from a relatively wider
slot. Turning to Stadtmauer’s figures 2 and 7, we see that
the slots 25a formed in the upstanding panel 25 are of uniform
shape throughout their penetration of the panel, except
perhaps for a vertically extending flange that appears to be
Appeal No. 2000-1348
Application No. 29/092,024
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present adjacent the outer edges of the innermost slots (see
Stadtmauer’s figure 7). The prevailing appearance in
Stadtmauer is one of uniform slots extending through and
confined within front and back surfaces of the panel 25.
Based on the relative simplicity of the claimed design as a
whole, and the distinctive visual effect of appellant’s slots
as compared to the visual effect of Stadtmauer’s slots, the
examiner’s conclusion that the visual effect of the more
complex slot construction of appellant’s design is
insignificant and minor such that the claimed design and the
modified Stadtmauer design would be viewed by the ordinarily
skilled designer as being mere manifestations of the same
design is not well taken in the absence of some evidence to
support the examiner’s position. In that no other reference
evidence has been cited by the examiner to support this
position, the examiner has failed to provide a sufficient
factual basis to support a conclusion of obviousness. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Appeal No. 2000-1348
Application No. 29/092,024
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The decision of the examiner is reversed.
REVERSED
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
LJS:hh
Appeal No. 2000-1348
Application No. 29/092,024
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Dennis T. Griggs
Griggs & Johnston, LLP
North Dallas Bank Tower
Suite 1200
12900 Preston Road, LB-15
Dallas, TX 75230