Ex Parte Duke

Board of Patent Appeals and Interferences

Oct 30, 2002

08108133 (B.P.A.I. Oct. 30, 2002)

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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and is not binding precedent of the Board.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. 72
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte EDDIE D. DUKE

Appeal No. 2001-0961
Application No. 08/108,133

ON BRIEF

Before JERRY SMITH, BARRETT and BLANKENSHIP, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of the following design claim:
The ornamental design for a hollow container for displaying
articles contained therein as shown and described.
The hollow container design is generally in the form of a
transparent cube as best depicted in Figures 1-4. The container
displays a ball as shown in Figures 1 and 2.
Appeal No. 2001-0961
Application No. 08/108,133
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The examiner relies on the following references:
LaPine Scientific Company Catalogue, 1965, Octrahedron in Cube
(item no. Z-9074), page 8, and Cone, Parabolic Section and Sphere
(item no. Z-9081), page 13.
The design claim stands rejected under 35 U.S.C. § 103 as
being unpatentable over the first cited item from the LaPine
catalogue in view of the second cited item from the catalogue.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the examiner and the evidence of
obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill of the
designer in this particular art would not have suggested to the
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Application No. 08/108,133
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designer of ordinary skill in the art the obviousness of the
design claim before us. Accordingly, we reverse.
Initially, we point out that in a proper 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 something like the claimed design. See In re Harvey, 12
F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993) and In re
Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982). Once
such a basic design reference has been established, features
thereof might reasonably be modified to achieve the claimed
design. Such modifications, however, cannot destroy fundamental
characteristics of the basic design reference.
We also keep the following principles clearly in mind when
evaluating the obviousness of a claimed design. The proper
standard under 35 U.S.C. § 103 is whether the design would have
been obvious to a designer of ordinary skill of the articles
involved. Note In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ
782, 784 (CCPA 1981). Further it is the overall appearance of a
design, that is the visual effect as a whole of the design, which
Appeal No. 2001-0961
Application No. 08/108,133
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must be taken into consideration. In re Rosen, supra. However,
while the obviousness of a design must be evaluated as a whole,
the evaluation of the whole necessarily involves consideration of
what are indicated to be the distinguishing features of the
claimed design. See Petersen Manufacturing Co., Inc. v. Central
Purchasing, Inc., 740 F.2d 1541, 1548, 222 USPQ 562, 567 (Fed.
Cir. 1984). Additionally, when considering the patentability of
a design, the mere fact that there are differences between the
design and a prior art design is not alone sufficient to justify
the patentability of the design. In re Lamb, 286 F.2d 610, 611,
128 USPQ 539, 539 (CCPA 1961). It is the distinctiveness in
overall appearance of a design when compared to a prior art
design, rather than minute details or small variations in
configuration, which constitutes the test for design
patentability. In re Lapworth, 451 F.2d 1094, 1096, 172 USPQ
129, 131 (CCPA 1971).
We now consider how these principles and the arguments made
by appellant and the examiner affect our decision based upon the
record before us.
The examiner has pointed out why he finds that the overall
appearance of the claimed design would have been obvious to the
designer of ordinary skill in view of the teachings of the two
Appeal No. 2001-0961
Application No. 08/108,133
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items from the LaPine catalogue [answer, pages 2-3].
Appellant argues that the Octrahedron in Cube item is not a
proper primary reference because it has a design which is very
different from the claimed design and, thus, does not have an
overall visual impression that is basically the same as the
claimed design. Appellant also argues that the two reference
items contain no hint or suggestion to apply a feature of one to
the other. Appellant notes that the visual appearance of the two
items is very different. Appellant argues that the reference
items are non-analogous art because they are mathematical
teaching aids and have nothing to do with a sports ball display.
Finally, appellant argues that he submitted evidence that the
claimed invention satisfied a long-felt but unsolved need of
sports enthusiasts, but the examiner has failed to consider or
discuss such evidence [brief, pages 3-12].
The examiner responds that the reference items are analogous
and that the primary reference presents the overall appearance of
the claimed design [answer, page 4].
We do not sustain the examiner’s rejection of the design
claim on appeal for the reasons essentially argued by appellant
in the brief. There is no similarity in visual appearance
between the claimed design and the two reference items. It is
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quite apparent that the examiner has selectively picked and
chosen individual features from each of the reference items and
combined them in a manner to recreate the claimed invention in
hindsight. We agree with appellant that the designer of ordinary
skill would not have been motivated to combine the applied
references to arrive at the claimed invention.
We also note for the record that the examiner erred in
failing to address the objective evidence of non-obviousness as
set forth in the declaration filed by Kenneth Rogers. As noted
by appellant and as set forth in the MPEP § 1504.04, the examiner
must consider objective evidence of non-obviousness when it is
presented. Failure to consider such evidence would be grounds by
itself to reverse the examiner’s rejection.
Appeal No. 2001-0961
Application No. 08/108,133
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In summary, we have not sustained the examiner’s rejection
of the design claim on appeal. Therefore, the decision of the
examiner rejecting the claim on appeal is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/rwk
Appeal No. 2001-0961
Application No. 08/108,133
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WILBUR A. SCHAICH
COX & SMITH INCORPORATED
112 E. PECAN STREET, SUITE 2000
SAN ANTONIO, TX 78205