Ex parte Grant

Board of Patent Appeals and Interferences

Apr 23, 2001

29082343 (B.P.A.I. Apr. 23, 2001)

1
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publication and is not binding precedent of the Board.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 KIM L. GRANT
_____________
Appeal No. 2000-2183
Application No. 29/082,343
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and LAZARUS, Administrative Patent
Judges
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the claim
in appellant’s design application.
The claim on appeal reads:
The ornamental design for a SHOWER CAP as shown and
described.
The references applied in the final rejection are:
Owen 3,247,521 Apr. 26,
1966
Appeal No. 2000-2183
Application No. 29/082,343
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Vance et al. (Vance) 5,455,970 Oct. 10, 1995
Adkins 5,477,561 Dec. 26, 1995
The claim stands finally rejected under 35 U.S.C. §
103(a) as unpatentable over Vance in view of Owen and Adkins.
We note initially that the examiner has required
appellant to cancel Fig. 5 on the ground that it is improper
in that it shows the interior construction of the stretch band
and does not concern the external appearance of the article,
the design of which is claimed. Although appellant argues the
merits of this requirement in the brief, it is a matter which
is not within our jurisdiction to review under 35 U.S.C. §§
7(b) and 134, since it does not relate to a matter involving
the rejection of the claim. See In re Hengehold, 440 F.2d
1395, 1340, 169 USPQ 473, 480 (CCPA 1971), and cf. Ex parte
Milner, 21 USPQ 589, 590 (Bd. Apps. 1933).
Turning to the rejection under § 103(a), appellant
describes the claimed invention on page 3 of the brief as:
a shower cap in which the dominant feature of the
design is a wide, smooth band at the bottom of the
shower cap. The design characteristics lie in two
aspects, that the band is substantially wider than
has been known before and that the surface of the
Appeal No. 2000-2183
Application No. 29/082,343
The wide, smooth band of appellant’s claimed design is shown in Figs.1
1, 2 and 4. Fig. 5 further illustrates the smoothness of the surface of the
band.
3
band is smooth.[ ]1
Vance discloses a shower cap having, in its “small mode”
(Fig. 4), an upper crown 14 with a band 12 at the bottom. The
examiner states the basis of the rejection on pages 4 and 5 of
the answer as follows:
Vance discloses a shower cap with a headband and a
crown portion like that of the claimed design. The
differences to [sic: from] that of the claimed
design are the shape or fullness of the crown and
the smooth band. Adkins teaches the shape or
fullness of the crown. Owen discloses a smooth band
to be old in the prior art.
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to modify Vance by providing it with a shape or
fullness of the crown as taught by Adkins and the
smooth band as taught by Owen to obtain essentially
the herein disclosed and claimed design.
In response to appellant’s argument that the smooth band of
Owen
is thin, not wide, the examiner states at page 6 of the
answer:
The difference in the width of the band is seen to
be minor to the overall appearance, which is not
suffi-cient to support unobviousness[.] In re
Cooper[, 480 F.2d 900,] 178 USPQ 406 [(CCPA 1973)].
Appeal No. 2000-2183
Application No. 29/082,343
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With regard to the question of the obviousness of the
claimed design, it is well settled, as stated in Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103, 40 USPQ2d 1788,
1790 (Fed. Cir. 1996):
In the design patent context, the ultimate inquiry
under section 103 is whether the claimed design
would have been obvious to a designer of ordinary
skill who designs articles of the type involved. In
re Rosen, 673 F.2d 388, 390, 213 USPQ 347, 349
(C.C.P.A. 1982). More specifically, the inquiry is
whether one of ordinary skill would have combined
teachings of the prior art to create the same
overall visual appearance as the claimed design. See
In re Borden, 90 F.3d at 1574, 39 USPQ2d at 1526.
Before one can begin to combine prior art
designs, however, one must find a single reference,
"a something in existence, the design
characteristics of which are basically the same as
the claimed design." In re Rosen, 673 F.2d at 391,
213 USPQ at 350. Once this primary reference is
found, other references may be used to modify it to
create a design that has the same overall visual
appearance as the claimed design. See In re Harvey,
12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir.
1993).
In the present case, the claimed shower cap and the shower cap
Appeal No. 2000-2183
Application No. 29/082,343
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of Vance, the primary reference, each consist, from an
appearance standpoint, of two basic elements: a crown, and a
band encircling the bottom (opening) of the crown. As stated
in the above-quoted basis of the rejection, the examiner finds
that there are differences between the claimed cap and the
Vance cap in the appearance of each of these two elements, but
contends that it would have been obvious to modify both of the
elements in view of Adkins and Owen, respectively, to arrive
at the design of the
claimed cap. Appellant argues at page 5 of the brief that
Vance is not a so-called Rosen reference, “since the Examiner
had to substitute all of the elements for Vance to make the
rejection.” Also, appellant contends that even if the smooth
band of Owen were substituted for the band of Vance (or
Adkins), the resulting cap would not have a wide band, as
claimed.
After fully considering the record in light of the
arguments presented in appellant’s brief and reply brief, and
in the examiner’s answer, we conclude that the claimed shower
Appeal No. 2000-2183
Application No. 29/082,343
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cap is patentable over the applied prior art. It is difficult
to see how Vance can be said to have design characteristics
which are basically the same as the claimed design, i.e., can
be said to constitute a Rosen reference, when, as appellant
argues, all (both) of its design elements would have to be
modified in order to arrive at the claimed design. Comparing
the cap design disclosed by Vance with that claimed by
appellant, we conclude that Vance does not constitute a Rosen
reference, and, therefore, the rejection cannot be sustained.
Conclusion
The examiner’s decision to reject the claim is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Appeal No. 2000-2183
Application No. 29/082,343
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Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
iac/vsh
Appeal No. 2000-2183
Application No. 29/082,343
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