Ex parte Gariboldi

Board of Patent Appeals and Interferences

Sep 20, 1999

07954056 (B.P.A.I. Sep. 20, 1999)

1 Application for patent filed September 28, 1992. According to
appellant, the application is a continuation-in part of Application
No. 07/403,569, filed September 6, 1989, now abandoned.
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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCO GARIBOLDI
____________
Appeal No. 98-0494
Application No. 07/954,0561
____________
HEARD: May 5, 1998
____________
Before COHEN, FLEMING, and HANLON, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of the following design claim:
The ornamental design for a panty hose article as shown
and described.
Appeal No. 98-0494
Application No. 07/954,056
2 In the brief, appellant states the issue on appeal as
"[w]hether the claim is obvious under 35 U.S.C. §103 as unpatentable
over Harris" (Brief, p.3). However, the examiner points out (Answer,
p.3):
The appellant's statement of the issues in the brief
is incorrect in that it omits the secondary reference to
Fillmore relied on in the rejection. In order to clarify
the record in the 103 rejection of 7/[27]/94 [Paper No.
4], it is noted that while the initial sentence of the
rejection cited only the reference to Harris, Fillmore was
clearly relied on as a secondary reference in the body of
the rejection. The references relied on were correctly
stated in the initial sentence of the subsequent final
rejection (1/10/95) [Paper No. 7].
See Paper No. 7, p.2 ("The claim is again and FINALLY REJECTED under
35 U.S.C. 103 as being unpatentable over Harris in view of
Fillmore."). Nevertheless, we note that both the brief and the reply
brief respond to the rejection of the design claim under 35 U.S.C. §
103 based on the combined teachings of Harris and Fillmore.
2
The references relied upon by the examiner are:
Fillmore D-215,641 Oct. 21, 1969
Harris 3,845,506 Nov. 5, 1974
The sole issue in this appeal is whether the design claim was
properly rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Harris and Fillmore.2 We reverse this rejection.
Discussion
According to appellant (Brief, pp.2-3):
The invention relates to a pantyhose, or stockings
article, which is formed of a knitted piece which is
uninterrupted except for the transverse portion between
the upper ends of the legs and the horizontal end portion
of each toe. . . .
Appeal No. 98-0494
Application No. 07/954,056
3
The continuous surface between the toe and the
waistband of the garment, except for the line portion in
the crotch area, results in an uninterrupted outer edge
(see Figures 9, 10 and 13 as well as the figures wherein
the article of the design takes the shape of a mannequin,
Figures 11, 12, 1). Additionally, there is an
uninterrupted, continuous inner edge from the toe line
portion to the crotch line portion. . . .
Two alternate embodiments are proposed, according to
the invention, namely one wherein the leg portion is
substantially tubular and of substantially constant
dimension (in unstretched state; see for example, Figure
9) as well as the embodiment of Figure 10, wherein a line
as can be seen in Figure 6 is provided. As can be seen in
Figure 10, the second embodiment provides a taper in the
leg region of the article whereas the embodiment of Figure
9 has tubular leg regions. The thigh portion of the
garment is wider than calf portion of the garment. This
allows a person with larger thighs to wear the garment
without unduly stretching the garment. In the embodiment
of Figure 10 (also Figure 6), an additional widening
stitch or line is provided to allow for the change in
dimension (without stretching of the garment[)].
Appellant argues that Harris, either alone or in combination
with Fillmore, fails to teach or suggest a pantyhose article having
an uninterrupted, continuous appearance as claimed (Brief, pp.4 and
11). More specifically, appellant argues that the combination of
Harris and Fillmore fails to teach or suggest the overall appearance
of the claimed pantyhose article both in its stretched state as
illustrated in Figures 1, 11 and 12 and its unstretched state as
illustrated in Figures 9 and 10 (Brief, pp.5, 7-8 and 10-11).
Appeal No. 98-0494
Application No. 07/954,056
4
The design of the claimed pantyhose article at issue in this
appeal has two aspects. The first aspect of the claimed pantyhose
article is its appearance in an unstretched state as illustrated in
Figures 9 and 10. See Specification, p.2 ("Figure 9 is a front view
of a collant or pantyhose article design according to the invention .
. . Figure 10 is a front view of another embodiment of the design . .
. ."). The second aspect of the claimed pantyhose article is its
appearance in a stretched state as illustrated in Figures 1, 11 and
12. In this stretched state, the pantyhose article conforms to the
legs of the wearer and its shape is defined thereby. Therefore, in
order to render the overall appearance of the claimed pantyhose
article obvious under 35 U.S.C. § 103, the combined teachings of
Harris and Fillmore must teach or suggest both aspects of the claimed
invention.
Although the examiner recognizes that there are two distinct
aspects of the claimed invention (see Answer, p.2), it appears that
the focus of the rejection at issue in this appeal is on the second
aspect of the invention, i.e., the appearance of the claimed
pantyhose article in its stretched state (Paper No. 4, p.4):
The basic reference to Harris shows pantyhose similar
in general, overall appearance to the claimed design; and
Fillmore is cited for the disclosure of an analogous
Appeal No. 98-0494
Application No. 07/954,056
5
article wherein the leg portion is seamless and
uninterrupted.
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to make omit
the circumferential band or welt on the leg portion of the
reference hose, inasmuch as pantyhose with seamless legs
are notoriously old and well known, as evidenced by the
reference to Fillmore.
However, consistent with appellant's arguments, the combined
teachings of Harris and Fillmore fail to render the overall
appearance of the claimed pantyhose article, both in its unstretched
state as illustrated in Figures 9 and 10 and in its stretched state
as illustrated in Figures 1, 11 and 12, obvious to a designer of
ordinary skill who designs articles of the type involved. Therefore,
we cannot sustain the rejection of the design claim under 35 U.S.C. §
103. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992) (the examiner bears the initial burden of presenting
a prima facie case of unpatentability).
Appeal No. 98-0494
Application No. 07/954,056
6
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Appeal No. 98-0494
Application No. 07/954,056
7
lp
Appeal No. 98-0494
Application No. 07/954,056
8
MC GLEW AND TUTTLE
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-0827
Leticia
Appeal No. 98-0494
Application No. 07/954,056
APJ HANLON
APJ FLEMING
APJ COHEN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: March 22, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT