Ex parte David

Board of Patent Appeals and Interferences

Aug 29, 1997

29031592 (B.P.A.I. Aug. 29, 1997)

Application for patent November 29, 1994.1
1
Paper No. 9
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TOM DAVID
______________
Appeal No. 97-2462
Application 29/031,5921
_______________
ON BRIEF
_______________
Before, COHEN, JOHN D. SMITH and LEE, 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 a pepper mill
as shown and described. --
Appeal No. 97-2462
Application 29/031,592
Appellant's specification sets forth that the non-illustrated2
bottom face of the pepper mill is unornamented. We take this
statement to denote that the bottom face of the pepper mill is
a plain, unornamented bottom, thereby conforming with the Manual of
Patent Examining Procedure (M.P.E.P.) § 1503.02, "A. Views".
The rejection refers to "one" of ordinary skill. More3
appropriately, in design cases, reference should be made to a
designer of ordinary skill. See In re Nalbandian, 661 F.2d 1214,
1216, 211 USPQ 782, 784 (CCPA 1981).
2
The pepper mill design is depicted in front
elevational, side elevational, rear elevational, and top plan
views in Figures 1 through 4, respectively . 2
As evidence of obviousness, the examiner has relied
upon the following references:
David Des. 303,746 Oct. 3, 1989
(David '746)
David Des. 313,536 Jan. 8, 1991
(David '536)
Dolson 2,465,637 Mar. 29, 1949
The following rejection is before us on appeal.
The design claim stands rejected under 35 U.S.C. § 103
as being unpatentable over David '536 in view of David '746 and
Dolson .3
Appeal No. 97-2462
Application 29/031,592
3
The full text of the examiner's rejection and response
to the argument advanced by appellant can be found in the answer,
while the complete statement of the argument made by appellant
appears on pages 4 through 8 of the brief.
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, we have carefully assessed appellant's
disclosed design, the designs of the applied references, and the
viewpoints of appellant and the examiner as set forth in the
brief and answer, respectively.
As a consequence of our review, this panel of the board
makes the determination that the examiner's rejection is not well
founded. Our reasoning in support of this conclusion follows.
At the outset, we keep in mind that, in a rejection of
a design claim under 35 U.S.C. § 103, there is the requirement
that there must be a reference (the basic design), a something in
existence, the design characteristics of which are basically the
same as the claimed design in order to support a holding of
obviousness. In other words, the basic reference design must
look like the claimed design. See In re Harvey, 12 F.3d 1061,
Appeal No. 97-2462
Application 29/031,592
4
1063-64, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993) and In re Rosen,
673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).
From our perspective, appellant's design, considered as
a whole, visually portrays a pepper mill appearance significant
in its showing of a long tapered base above which rises a
cylindrical base top and cap, each of the base top and cap
appearing closely adjacent one another.
On the other hand, the reference design evidences a
pepper mill with an overall cylindrical appearance wherein the
cap rises above the base top, separated therefrom by a visually
perceptible tapered portion of the base top, the tapered portion
being within the external overall cylindrical form of the pepper
mill.
Based upon our visual appreciation of the claimed and
reference designs, as described above, we reach the conclusion
that the pepper mill design portrayed in the David '536 reference
fails to evidence a something in existence, the design charac-
teristics of which are basically the same as in the pepper mill
design on appeal. Stated differently, the reference design
simply does not look like the claimed pepper mill design. Thus,
Appeal No. 97-2462
Application 29/031,592
5
the David '536 patent is not a Rosen reference. Lacking a Rosen
reference, the examiner's rejection under 35 U.S.C. § 103 is
inappropriate and cannot be sustained.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 97-2462
Application 29/031,592
6
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