Ex parte Golden et al.

Board of Patent Appeals and Interferences

Aug 29, 2001

29091083 (B.P.A.I. Aug. 29, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EARL F. GOLDEN and LOUIS N. NETZ
____________
Appeal No. 2001-0337
Application No. 29/091,083
____________
ON BRIEF
____________
Before FLEMING, NASE, and KRATZ, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of the following design claim:
The ornamental design for a SIDE PORTION OF A
MOTORCYCLE ROCKER BOX as shown and described.
We REVERSE and REMAND.
Appeal No. 2001-0337 Page 2
Application No. 29/091,083
BACKGROUND
The design application was filed with two figures.
Figure 1 being a side view of a side portion of a motorcycle
rocker box. Figure 2 is an enlarged side view of the side
portion of a motorcycle rocker box of Figure 1. On the sole
page of the specification, the appellants state that
[t]he present invention is directed to the design
illustrated in the drawings. The other features of the
drawings, such as the motorcycle shown in Fig. 1, are not
considered part of the design sought to be patented, and
have accordingly been shown in broken lines.
The design sought to be patented is not visible in
the front, rear, top, bottom and left side views.
Accordingly, these views have been omitted.
The sole rejection before is in this appeal is the
rejection of the design claim under 35 U.S.C. § 112, first
paragraph, as the claimed invention is not described in such
full, clear, concise and exact terms as to enable any person
skilled in the art to make and use the same.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the first Office action (Paper
Appeal No. 2001-0337 Page 3
Application No. 29/091,083
No. 5, mailed November 29, 1999), the final rejection (Paper
No. 7, mailed March 1, 2000) and the answer (Paper No. 10,
mailed September 29, 2000) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 9, filed July 24, 2000) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' drawings,
specification and claim and to the respective positions
articulated by the appellants and the examiner. As a
consequence of our review, we have determined that the
examiner's rejection of the appellants' design claim under 35
U.S.C. § 112, first paragraph, cannot be sustained.
The examiner's basis for the rejection under appeal
(answer, p. 3-4) is that the appearance of the claimed design
is not definite since the surface shading on the side and
middle portions of the claimed design (see Figure 2) indicate
changes in contour which cannot be understood in the absence
Appeal No. 2001-0337 Page 4
Application No. 29/091,083
of a drawing view from a different point of view.
Specifically, the examiner states (answer, p. 4) that
[i]n the absence of a disclosure of the specific
contours, configuration, and spatial and planar
relationship and configuration of the disclosed elements
of the claimed design, the claimed design is subject to
conjecture and could be achieved by different
configurations.
The appellants state (brief, p. 4) that the design sought
to be patented is the ornamentality provided by a rocker box
when viewed from the side, and is not limited to the specific
three-dimensional geometry of their commercial design. The
appellants argue (brief, pp. 5-6) that one skilled in the art
could make and use the design illustrated in the drawings. We
agree. In that regard, the ornamental design for a side
portion of a motorcycle rocker box as shown and described in
the appellants' application constitutes a complete disclosure
of the side portion of a motorcycle rocker box in all
essential respects, is so far as its appearance in side view
is concerned. Any side portion of a motorcycle rocker box
having substantially the appearance depicted in the
appellants' drawings would constitute an infringement of any
Appeal No. 2001-0337 Page 5
Application No. 29/091,083
patent to be issued, and we see no reason for holding the
appealed design claim to be unpatentable under the enablement
requirement of the 35 U.S.C. § 112, first paragraph.
Accordingly, the decision of the examiner to reject the design
claim under 35 U.S.C. § 112, first paragraph, is reversed.
REMAND
We remand this application to the examiner to determine
whether or not the design claim should be rejected under the
judicially created doctrine of double patenting over the
appellants' Patent No. Des. 408,828, issued April 27, 1999.
CONCLUSION
To summarize, the decision of the examiner to reject the
design claim under 35 U.S.C. § 112, first paragraph, is
reversed.
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01.
REVERSED; REMANDED
Appeal No. 2001-0337 Page 6
Application No. 29/091,083
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2001-0337 Page 7
Application No. 29/091,083
JOSEPH A. GEMIGNANI
MICHAEL BEST & FRIEDRICH
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-4108
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Application No. 29/091,083
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