Ex parte FREY

Board of Patent Appeals and Interferences

Sep 11, 1997

29020294 (B.P.A.I. Sep. 11, 1997)

Application for patent filed March 23, 1994.
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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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRED FREY
____________
Appeal No. 97-2461
Application 29/020,2941
____________
ON BRIEF
____________
Before GARRIS, LEE, and NASE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the following
design claim:
The ornamental design for the sleeve, as shown and
described.
The sleeve design is depicted in the respective views of
figures 1 to 3. New figures 2 and 3 were added by amendment
after final Office Action, to replace previously unapproved
addition of different figures 2 and 3. In an advisory Office
Appeal No. 97-2461
Application 29/020,294
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Action (Paper No. 8), the examiner indicated that the drawing
correction had been approved. Also in the advisory Office
Action, the examiner indicated that a previous rejection made
under 35 U.S.C. § 112, has been overcome. Thus, the only
rejection on appeal is that for obviousness under 35 U.S.C.
§ 103. The examiner has relied on:
Carter U.S. Patent No. 5,173,967 Dec. 29, 1992
Opinion
We do not sustain the rejection of the sole design claim
under 35 U.S.C. § 103 as being unpatentable over the design of
Carter's Figure 4.
One of ordinary skill in the art to which the subject matter
pertains in design cases is a designer of ordinary capability who
designs articles of the type presented in the application. In re
Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981).
Moreover, for determining the obviousness of designs, the Court
of Customs and Patent Appeals has stated in In re Rosen, 673 F.2d
388, 391, 213 USPQ 347, 350 (CCPA 1982):
Thus there must be a reference, 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. Such a reference is
necessary whether the holding is based on the basic
reference alone or on the basic reference in view of
modifications suggested by secondary references.
Appeal No. 97-2461
Application 29/020,294
Figure 4 alone does not illustrate the whole design.
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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 at 390, 213 USPQ at 349.
The appellant's figures 1-3 together show a tubular sleeve
which has the same look all the way around. As is stated in the
specification on page 1, "it should be understood that all other
side views are substantially equal to Fig. 1."
Contrary to the examiner's view, we do not find that Carter
satisfies the basic requirement of a Rosen reference. Being
tapered is not the only feature of the appellant's design.
Continuity, and smoothness as reflected in the appellant's
tubular design are also distinctive and cannot be ignored.
Carter's design, on the other hand, as is shown collectively in
figures 3 and 4 has substantial overlap and a stacked appearance
at the edges of the overlap. Carter's sleeve is wrapped onto2
the user's arm and fastened together where the edges meet. In
our view, Carter is clearly not a Rosen reference which embodies
fundamentally or substantially similar basic design concepts.
In any event, even assuming that Carter constitutes a Rosen
reference, the rejection still cannot be sustained. Whether or
Appeal No. 97-2461
Application 29/020,294
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not the primary reference relied on for the rejection satisfies
the requirements of a Rosen reference, the differences between
the claimed design and that of the prior art reference still must
be accounted for in a reasonable and meaningful manner.
Here, they have not.
We disagree with the examiner's apparent view that the
difference between the appellant's design and that of Carter
reflects mere minute details or small variations which can be
dismissed or ignored. Rather, the difference must be accounted
for from the perspective of an ordinary designer in this art. It
is of no help to the examiner that Carter's specification states:
"the amount of closure along the lateral edges is determined by
the severity of the element that you are trying to protect the
leg or arm from" (column 1, lines 56-59). Carter uses fasteners
to achieve full closure. In column 4, lines 48-51, Carter
states: "any amount of hook and loop fasteners can be used along
the lateral edge to produce the necessary amount of protection
for the user." Thus, even when "fully closed," Carter's sleeve
still exhibits the overlap and lack of continuity that is far
different from the look of the appellant's continuous tubular
design. Note that Carter's method of applying fasteners,
preferably hook and loop, to the lateral edges 48 is shown in
Appeal No. 97-2461
Application 29/020,294
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figures 14 and 15. Also, to the extent that markings or
hatchings in the appellant's figures may indicate the use and
look of fabric, that aspect of the appellant's design has not
been addressed by the examiner in the context of Carter.
It is also of no help to the examiner's position that the
examiner's answer states at page 5:
Appeal No. 97-2461
Application 29/020,294
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Further, tubular sleeves are known in the prior art.
The prior art reference to Upham patented June 21, 1881
clearly shows that tubular sleeves are old in the prior
art.
We express no view as to whether Upham constitutes a Rosen
reference or whether it in combination with any other reference
would have rendered obvious the appellant's design. There simply
is no occasion to consider Upham in this appeal. The rejection
is one based on Carter alone. Note that all references on which
the examiner relies should be positively recited in the
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1
(Bd. Pat. App. & Int. 1993); Ex parte Hiyamazu, 10 USPQ2d 1393,
1394 (Bd. Pat. App. & Int. 1988). Since Upham has not been
recited in the basis of the obviousness rejection, it will not be
treated as such.
For the foregoing reasons, the rejection of the sole design
claim under 35 U.S.C. § 103 as being unpatentable over Carter
cannot be sustained.
Appeal No. 97-2461
Application 29/020,294
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Conclusion
The rejection of the sole design claim under 35 U.S.C. § 103
as being unpatentable over Carter is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2461
Application 29/020,294
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Lerner and Greenberg
P.O. Box 2480
Hollywood, FL 33022-3480