Ex parte Giamati

Board of Patent Appeals and Interferences

Mar 31, 1999

29022106 (B.P.A.I. Mar. 31, 1999)

Application for patent filed April 29, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MICHAEL J. GIAMATI
________________
Appeal No. 98-2889
Application 29/022,1061
________________
ON BRIEF
________________
Before CALVERT, STAAB and WALTZ, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of the following design claim:
The ornamental design for a heavy duty brush
assembly housing unit with an integral attachment
Appeal No. 98-2889
Application 29/022,106
As an example, the examiner directs our attention to2
Fig. 1 of U.S. Patent 4,136,295.
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leg as shown and described.
No references have been relied upon by the examiner in
rejecting the claim.
The appealed claim stands rejected under 35 U.S.C. § 171
as lacking ornamentality because the design is for a device
that is hidden from view in the final stage of its commercial
life.
The appealed claim stands further rejected under 35
U.S.C. § 171 as being primarily functional rather than
ornamental in use.
The Hidden from View Rejection
According to the examiner, a prima facie case of lack of
ornamentality has been established in this case because
references cited during prosecution clearly show that articles
of the type claimed herein are hidden from view in their final
use.2
Appellant does not dispute that articles of the type
claimed herein are hidden from view in their final use.
Appeal No. 98-2889
Application 29/022,106
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Appellant maintains, however, that the declarations of Mr.
Michael J. Giamati, the sole inventor, and Mr. Gary G. Garcia,
manager of product support and customer service for the
assignee of the present invention, establish “that the claimed
article was designed for sale and display, and that the
appearance of the article had a substantial influence on the
design and ornamentality of the article [such that] . . . an
adequate showing of ornamentality has been provided” (brief,
page 2).
The examiner contends, however, that appellant has not
shown that the appearance of the article was a matter of
concern at some point in the life of the article.
In his declaration, inventor Michael J. Giamati declares
that he “designed the brush assembly housing claimed in the
captioned application to have a ‘heavy duty’ look and feel.”
For his part, assignee’s manager Gary G. Garcia declares, on
information and belief, that (1) “at least some customers have
a perception that a brush assembly having a housing with a
‘heavy duty’ appearance, will perform better,” (2) “this
perception is at least partly based on the appearance of the
brush assembly housing,” and (3) “the ‘heavy duty’ appearance
Appeal No. 98-2889
Application 29/022,106
Indeed, the examiner states that “[he] will concede3
that Mr. Garcia’s affidavit [sic, declaration] establishes
that during the period of its visibility, the appearance of
the claimed design was a 'matter of concern'” (answer, page
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. . . as claimed in the captioned application, was a factor in
at least some customer’s decisions to replace modular brush
assemblies having [dissimilar] appearances . . . .”
When an article is hidden from view in the final stage of
its commercial life it is reasonable to presume, as a general
rule, the absence of ornamentality. In re Webb, 916 F.2d
1553, 1557, 16 USPQ2d 1433, 1435 (Fed. Cir. 1990). Inquiry
must extend, however, to whether at some point in the life of
the article an occasion arises when the appearance of the
article becomes a “matter of concern.” Id. Our reading of
appellant’s declaration evidence, particularly those portions
noted above, leaves us with little doubt that the appearance
of the article in question was indeed a “matter of concern”
prior to its final use in that, on those occasions when the
article was viewed by prospective buyers its appearance was
purposefully intended to favorably influence prospective
buyers to purchase same. The examiner is not understood to
view the declarations otherwise. As such, we consider3
Appeal No. 98-2889
Application 29/022,106
6).
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appellant’s evidence to be sufficient to overcome the
presumption of lack of ornamentality raised by the
circumstance that the article is hidden from view in its final
stage of use. We therefore will not sustain the examiner’s
“hidden in use” rejection.
The Primarily Functional Rejection
Looking at the examiner’s second rejection under 35
U.S.C.
§ 171, the examiner states that “[t]he housing claimed in the
instant application is also the subject of U.S. Patent No.
5,479,060. The few features of the housing that are discussed
in this patent are functional in nature” (answer, page 5).
Implicit in the above is the examiner’s position that the
noted circumstances are sufficient to establish that the
claimed design is primarily functional rather than ornamental
in use.
To qualify for design patent protection, a design must
have an ornamental appearance that is not dictated by function
alone. Hupp v. Siroflex of America, Inc., 122 F.3d 1456,
Appeal No. 98-2889
Application 29/022,106
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1460, 43 USPQ2d 1887, 1890 (Fed. Cir. 1997). When there are
several ways to achieve the function of an article of
manufacture, the design of the article is more likely to serve
a primarily ornamental purpose. Berry Sterling Corp. v.
Pescor Plastics, Inc., 122 F.3d 1452, 1456, 43 USPQ2d 1953,
1956 (Fed. Cir. 1997); L. A. Gear Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993).
Here, declarant Giamati, the sole inventor, states that
he “designed the brush assembly housing claimed in the
captioned application to have a ‘heavy duty’ look and feel.”
Giamati also states that “a functionally equivalent brush
assembly having a ‘light duty’ appearance could be designed
having a substantially different appearance than the claimed
design.” Declarant Giamati adds that “a functionally
equivalent brush assembly having a ‘heavy duty’ appearance
could be designed having a substantially different appearance
than the claimed design such as, for example, by configuring
the attachment leg as an aluminum bracket integrally attached
to the brush housing, as well as other configurations . . . .”
We do not share the examiner’s apparent belief that the
Appeal No. 98-2889
Application 29/022,106
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existence of appellant’s corresponding utility patent is
controlling on the functionality issue raised here. Rather,
the existence of the utility patent is merely one factor to be
considered with respect to the issue at hand. Berry Sterling
Corp. v. Pescor Plastics, Inc., 122 F.3d at 1456, 43 USPQ2d at
1956. In the present instance, the inventor declares that the
article was designed to have a heavy duty appearance. Also
noteworthy is appellant’s statement in the declaration that a
functionally equivalent article having an aluminum attachment
leg could be designed. U.S. Patent No. 4,136,295, of record,
apparently shows at element 82 one such attachment leg used
for mounting a modular brush housing unit. If used in
conjunction with appellant’s housing unit, a different design
would result. In addition, we note the BFGoodrich Report No.
68-04-714K publication made of record by appellant. On page
24 of that publication, Figure 29 shows what appears to be a
block-like brush housing unit 5 having a design that is
markedly different from the claimed design. Weighing all the
above factors, we conclude that the claimed design is not
merely functional. We therefore will not sustain the
Appeal No. 98-2889
Application 29/022,106
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examiner’s rejection of the appealed claim on this basis.
Summary
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Mary Ann Tucker
The B. F. Goodrich Company
Appeal No. 98-2889
Application 29/022,106
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Patent Law Department
9921 Brecksville Road
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