Ex parte Caswell

Board of Patent Appeals and Interferences

Aug 31, 1999

29042728 (B.P.A.I. Aug. 31, 1999)

Application for design patent filed August 3, 1995.1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHARLES A. CASWELL

_____________
Appeal No. 97-3824
Application 29/042,7281
______________
ON BRIEF
_______________
Before McQUADE, MARTIN, and WARREN, Administrative Patent
Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's rejection of appellant's design claim under 35
U.S.C. § 103. We reverse.
Appeal No. 97-3824
Application 29/042,728
The reply brief explains (at 2) that the substitute2
opening brief (paper No. 9), in discussing this Schiek patent,
erroneously identified it as Schiek Patent No. 5,046,488,
which is also of record in the application file.
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A. The claim
The claims reads: "The ornamental design for a back
support belt, as shown and described."
B. The references and ground of rejection
The rejection is based on the following references:
Yewer, Jr. (Yewer) 5,036,864 Aug. 6, 1991
Schiek, Sr. (Schiek) 5,316,022 May 31, 19942
Glover et al. (Glover) 5,388,274 Feb. 14, 1995
The claim stands rejected under § 103 for unpatentability
over Yewer in view of Schiek and Glover.
C. The merits of the rejection
The first issue raised by appellant is whether Yewer
constitutes a "Rosen" reference. As explained in In re
Borden, 90 F.3d 1570, 1574, 39 USPQ2d 1524, 1526 (Fed. Cir.
1996),
Appeal No. 97-3824
Application 29/042,728
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[t]he central inquiry in analyzing an ornamental
design for obviousness is whether the design would
have been obvious to "a designer of ordinary skill
who designs articles of the type involved." Avia
Group [Int'l Inc. v. L.A. Gear Calif., Inc.], 853
F.2d [1557,] at 1564, 7 USPQ2d [1548,] at 1554
[(Fed. Cir. 1988)]; In re Nalbandian, 661 F.2d 1214,
1216, 211 USPQ 782, 784-85 (CCPA 1981). That
inquiry focuses on the visual impression of the
claimed design as a whole and not on selected
individual features. Petersen Mfg. Co. v. Central
Purchasing, Inc., 740 F.2d 1541, 1548-49, 222 USPQ
562, 567-68 (Fed. Cir. 1984); In re Rosen, 673 F.2d
388, 390, 213 USPQ 347, 349 (CCPA 1982).
In order for a design to be unpatentable because
of obviousness, there must first be a basic design
reference in the prior art, "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 349; see In re
Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208
(Fed. Cir. 1993). A finding of obviousness cannot
be based on selecting features from the prior art
and assembling them to form an article similar in
appearance to the claimed design. In re Jennings,
37 C.C.P.A. 1023, 182 F.2d 207, 208, 86 USPQ 68, 70
(1950) (the claimed design "must be [. . .] compared
with something in existence, not with something that
might be brought into existence by selecting
individual features from prior art and combining
them"); see L.A. Gear[, Inc. v. Thom McAn Shoe Co.],
988 F.2d [1117,] at 1124, 25 USPQ2d [1913,] at 1918
[(Fed. Cir.), cert. denied, 510 U.S. 908, 114 S.Ct.
291, 126 L.Ed.2d 240 (1993)]; In re Sung Nam Cho,
813 F.2d 378, 382, 1 USPQ2d 1662, 1664 (Fed. Cir.
1987).
Furthermore, a reference is not a “Rosen” reference if the
modifications required to achieve the claimed design would
Appeal No. 97-3824
Application 29/042,728
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destroy fundamental characteristics of the reference design.
Rosen, 673 F.2d at 391, 213 USPQ at 350.
The examiner (Answer at 3) explains that Yewer, the
principal reference, "discloses a belt with a strap and buckle
like that of the claimed design" but which differs from the
claimed design in that it lacks the following features: "the
overlapping contoured belt, the strap with loop and pile
closing means, and the rear tab." Of these differences,
appellant relies on only the contouring and the rear tab.
However, appellant's descriptions of these features contain
some inaccuracies. More particularly, whereas appellant
argues that Yewer fails to disclose "a back portion having
parabolic shaped upper and lower edges" (Opening Brief at 3),
it is not apparent from appellant's drawings that these edges
are parabolic. In our view, the shape of these edges is more
correctly described as simply convex (Yewer's corresponding
edges are straight). Appellant also describes the contour of
claimed belt design as including "side portions having concave
shaped upper edges and convex shaped lower edges which extend
between the back portion and the overlapping end portions"
(our emphasis) (Opening Brief at 3). However, it is apparent
Appeal No. 97-3824
Application 29/042,728
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from appellant's drawings that the lower edges of the side
portions, like the upper edges thereof, are concave rather
than convex (Yewer's corresponding edges are straight).
Next, appellant correctly notes contends that Yewer lacks
a "back portion . . . with a width [i.e., vertical dimension]
greater than the width of the overlapping end portion[s]"
(Opening Brief at 4).
Finally, appellant gives the following description of
what the examiner refers to as the "rear tab" feature: "a
tightening strap disposed in a V-shaped configuration along
the back portion and stabilized in such a position by a
substantially centrally disposed sleeve" (Opening Brief at 3).
This description is inaccurate in two respects. First, it is
not apparent from the drawings that the centrally disposed
element in question is a sleeve. Second, the stabilizing
function is entitled to no weight because "a design patent
only protects the ornamental aspects of the design." OddzOn
Products Inc. v. Just Toys Inc., 122 F.3d 1396, 1404, 43
USPQ2d 1641, 1646 (Fed. Cir. 1997). Consequently, we would
characterize the feature in question as a V-shaped
configuration of the tightening strap on the outside of the
Appeal No. 97-3824
Application 29/042,728
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back portion of the belt, with the legs of the V extending
from opposite sides of a small centrally disposed rectangular
element having a vertical dimension slightly greater than the
width of the strap.
The examiner explains the case for obviousness as
follows:
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to made to modify Yewer, Jr. by providing it with
the overlapped contoured belt . . . as taught by
Schiek, Sr., and the rear tab as taught by Glover et
al[.] to obtain essentially the herein disclosed and
claimed design. [Answer at 4.]
Appellant's position is that
modification of Yewer with selected, dissected
elements of Schiek and Glover et al. would destroy
the belt disclosed by Yewer in that a majority of
the features of Yewer must be modified. These
modifications clearly destroy the fundamental
characteristics of the design of the Yewer belt.
[Opening Brief at 8.]
We agree with appellant and therefore hold that Yewer is not a
proper primary reference, which is reason enough to reverse
the rejection. Rosen, 673 F.2d at 391, 213 USPQ at 350.
Nevertheless, we have also considered whether the collective
teachings of the references yield the claimed design. As
evidence of the obviousness of using appellant's V-shaped
Appeal No. 97-3824
Application 29/042,728
Answer at 5.3
Numeral 47 refers to the point of the V-shaped4
projection 41 formed by straps 43 and 45 (Glover, col. 4,
lines 36-40).
We note that the rear portion of Glover's static belt5
20 is in the shape of an inverted V.
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configuration for the tightening strap at the rear portion of
the belt, the examiner relies on Glover's straps 43 and 45
(Fig. 2), which extend in a V-formation from opposite sides3
of a vertical strap 38 (apparently incorrectly identified in
the Answer as "a central tab 47"). We agree with appellant4
that
even if one accepts the Examiner's position that
Glover et al. disclose[s] the rear tab to be old in
the art, one would not know which elements to select
from the secondary references or how to modify such
elements for incorporation into the belt of the
primary references (or which elements to discard as
unused features of the references) to arrive at the
claimed design, absent hindsight teaching. [Opening
Brief at 4-5.]
The reason is that Glover's straps 43 and 45 do not correspond
to Yewer's webbing strap 12, which is the element to be
modified; instead, Glover's static belt 20 does. As a5
result, we are not persuaded that one skilled in the art would
have been motivated to apply the V-shaped configuration of
Appeal No. 97-3824
Application 29/042,728
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Glover's straps 43 and 45 to Yewer's webbing strap, let alone
with the legs of the V extending from opposite sides of a
centrally disposed rectangular element having a vertical
dimension slightly greater than the width of the strap, as in
the claimed design.
Because we are reversing the rejection for the foregoing
reasons, we need not decide the merits of appellant's argument
that his design is also patentable over the cited references
Appeal No. 97-3824
Application 29/042,728
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because the rear portion of his belt is wider than the
overlapping end portions.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN C. MARTIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 97-3824
Application 29/042,728
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Charles A. Codding, Esq.
Dunlap & Codding
9400 North Broadway Suite 420
Oklahoma City OK 73114