Ex Parte Cruz

Board of Patent Appeals and Interferences

Mar 27, 2003

29124773 (B.P.A.I. Mar. 27, 2003)

The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD A. CRUZ
____________
Appeal No. 2003-0656
Application No. 29/124,773
____________
ON BRIEF
____________
Before COHEN, FLEMING and KRATZ, Administrative Patent Judges.
KRATZ, 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 “ATHLETIC SHORTS” as shown and
described.
The design is depicted in a front elevation view, a right
side elevation view, front top right side perspective view and a
bottom front left side perspective view in the application
drawing Figures 1 through 4, respectively.
Appeal No. 2003-0656
Application No. 29/124,773
Page 2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hong Kong Apparel, Vol. II (1996), copy in design library, p.
203, Metimex S.A. (Metimex).
Sportpages Catalog, item 18 F (Summer, 1980), copy in design
library, p. 18 (Sportpages).
The appealed design claim stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Metimex in view of
Sportpages. We reverse for the reasons that follow.
OPINION
Upon careful review of the respective positions advanced by
appellant and the examiner with respect to the rejection that is
before us for review, we find ourselves in agreement with
appellant’s viewpoint in that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
Accordingly, we will not sustain the examiner's rejection.
“In determining the patentability of a design, it is the
overall appearance, the visual effect as a whole of the design,
which must be taken into consideration.” In re Rosen, 673 F.2d
388, 390, 213 USPQ 347, 349 (CCPA 1982). “In 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
Appeal No. 2003-0656
Application No. 29/124,773
Page 3
a manner which suggests such features as used in the claimed
design.” In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208
(Fed. Cir. 1993) (citing In re Cho, 813 F.2d 378, 382, 1 USPQ2d
1662, 1663 (Fed. Cir. 1987); In re Carlson, 983 F.2d 1032, 1038,
25 USPQ2d 1207, 1212 (Fed. Cir. 1992). “If, however, the
combined teachings suggest only components of a claimed design,
but not its overall appearance, an obviousness rejection is
inappropriate.” Id.
Here, we agree with appellant’s position since the examiner
has not established that the overall visual impression of the
claimed athletic shorts design would have been suggested by the
applied prior art to a designer of ordinary skill in the art.
In fashioning the rejection before us for review, the
examiner uses Metimex as a basic reference; that is, as a Rosen-
type reference and employs Sportpages to suggest modifications of
Metimex that, according to the examiner, would have been obvious
to a designer of ordinary skill in the art. The shorts design
depicted in Metimex, like appellant’s claimed design, portrays a
visible elastic waste band and elongated side areas or panels
running from the waste band to essentially the bottom of the
outside of each leg with those side areas/panels possessing an
outer surface area appearance that is visually distinct from the
Appeal No. 2003-0656
Application No. 29/124,773
Page 4
appearance of the outer surface area of the main portion of the
shorts.
Appellant does not specifically contend in the brief that
the shorts design depicted in Metimex would not represent a
Rosen-type reference. However, appellant argues that the claimed
design is not suggested by Metimex taken in combination with
Sportpages for several reasons as set forth in the brief.
Among the argued visually distinctive features of the
claimed design, appellant notes the differences in the appearance
of the side panels of the claimed design over the side panels of
Metimex. Appellant argues that the appearance of the sides of
appellant’s shorts is highlighted by the coarse or rough lines
depicted in the figures, which can be seen as extending to at
least a portion of the visible inside surface of the legs of the
fabric as shown in appellant’s drawing figure 4 in comparison to
the smoother surface markings on the rest of the shorts design
observable in the drawings. Here, we share the view of appellant
that the visual impression of the two contrasting looks for the
side and the rest of the shorts as depicted in appellant’s
drawing figures give an overall visually distinct impression from
that which would have been readily seen or suggested to a
Appeal No. 2003-0656
Application No. 29/124,773
Page 5
designer of ordinary skill in the art from Metimex taken with
Sportpages.
While we agree with the examiner that the identity of a
specific material is not part of the claimed design, the visual
impact of the materials used is clearly a portion of appellant’s
overall design. The Metimex shorts design is characterized by
the appearance of white lines and patches at the sides thereof,
which patches do not extend to the inside surface of the leg
openings of the shorts design. Consequently, the Metimex shorts
design yields an overall distinct appearance as to the relative
roughness and consistency of the surface appearance of the sides
as well as the lack of an extenson thereof to the inside of the
leg openings as compared to the claimed design as clearly shown
by a comparison of the Metimex shorts design with appellant’s
drawing figures, particularly figure 4.
Moreover, even if it would have been obvious to a designer
of ordinary skill in the art to modify the Metimex shorts by
incorporating the design features of the sides of the shorts of
the Sportpages shorts therein as contended by the examiner
(answer, page 3), such a modification would not result in the
claimed design but rather a design wherein the sides of the
shorts of Metimex includes the look of a finer finish rather than
Appeal No. 2003-0656
Application No. 29/124,773
Page 6
a coarse appearance as depicted in appellant’s design. This is
so since the shorts shown in Sportpages suggests a fashion look
wherein the main shorts material has a coarse surface view and
the sides give the impression of a smoother appearance. That, of
course, would yield an opposite position for those relatively
rough and smooth surface ornamentations and a readily discernible
difference in visual impression than that given by the claimed
design.
In addition, the examiner has not fairly established that
the shorts of Sportpages would have plainly suggested to a
designer of ordinary skill in the art an extension of the side
patch to the underside of the leg openings of the shorts of
Metimex so as to result in the distinct appearance of the claimed
design including an extension of the contrasting look of the
sides to the leg underside as shown in figure 4 of appellant’s
design.
Consequently, we agree with appellant that there is a
significant difference in the overall visual impression of the
claimed design over the appearance of the shorts of Metimex taken
with Sportpages. On this record, the examiner has not
established the prima facie obviousness of the claimed design
based on the evidence relied upon.
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Application No. 29/124,773
Page 7
CONCLUSION
The decision of the examiner to reject the appealed design
claim under 35 U.S.C. § 103(a) as being unpatentable over Metimex
in view of Sportpages is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2003-0656
Application No. 29/124,773
Page 8
NORMAN E. LEHRER
1205 NORTH KINGS HIGHWAY
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