Ex parte Grazioli

Board of Patent Appeals and Interferences

Dec 17, 2001

29097935 (B.P.A.I. Dec. 17, 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not written for publication and is not binding precedent of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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VITTORIO GRAZIOLI
__________
Appeal No. 2001-2294
Application 29/097,935
___________
HEARD: November 13, 2001
___________
Before GARRIS, FRANKFORT, and KRATZ, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of the following design claim:
The ornamental design for a chair as shown and described.
As noted in appellant's brief (page 2), the invention is
a chair as shown and described, particularly with reference to
Figures 1 through 5 of the originally filed “drawings,” i.e.,
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Application 29/097,935
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the elected embodiment. The “drawings” of this application
are in the form of photographs filed with the application on
December 17, 1998. Those photographs, as filed, showed three
chair embodiments (i.e., Figures 1-5, Figures 6-10 and Figures
11-15) described as showing appellant’s new design and one
table (Figures 16-19) showing the new design. Figures 6-19 of
the application were subsequently canceled (see Paper No. 4)
“without prejudice to Applicant’s right to file divisional
applications” covering such designs.
The appealed design claim stands rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the
enablement requirement of this portion of the Statute. More
particularly, it is the examiner’s position that the claimed
design is not described in such full, clear, concise and exact
terms as to enable any person skilled in the art (i.e., a
designer of the claimed type of article) to make and use the
same. In the examiner’s opinion,
[t]he claim is non-enabling because one cannot
understand the exact configuration of the seat of the
chair in Figures 1 through 5. Specifically, Figures 4
and 5 are not clear enough to distinguish the exact
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configuration of the chair seat. One cannot tell if
there are horizontal ribs or grooves and if the sides of
the seat have been slightly raised or even have a groove
to distinguish the edges and front portions(answer, page
3).
Reference is made to the examiner's answer (Paper No. 13,
mailed May 4, 2001) for the reasoning in support of the above-
noted rejection. Attention is directed to appellant's brief
(Paper No. 12, filed February 26, 2001) and reply brief (Paper
No. 14, filed July 3, 2001) for an exposition of appellant's
arguments thereagainst.
OPINION
Having carefully considered the enablement issue raised
in this appeal in light of the examiner's remarks and
appellant's arguments in the brief and reply brief, it is our
conclusion that the examiner's rejection of the present design
claim under 35 U.S.C. § 112, first paragraph, is not well
founded and thus will not be sustained. Our reasons for this
determination follow.
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Looking at the photographs labeled as Figures 1 through
5, and particularly the seat portion of the chair design
depicted therein from the perspective of the designer of
articles of the type claimed, and with insights provided by
the photographs as a whole as filed with the application on
December 17, 1998, it is our determination that such designer
would have reasonably concluded that the slightly curved,
generally horizontal segments on the upper surface of the
chair seat seen in Figures 2, 4 and 5 of the application are
each formed by a slightly raised area between depressed areas
or subtle grooves formed in the surface of the seat portion,
as appellant has specifically argued in the reply brief (Paper
No. 14). Similarly, we are of the opinion that such designer
would have also perceived that the sides and front area
defining the outer peripheral part of the seat portion in the
elected embodiment are slightly raised areas, with the outer
peripheral part of the seat portion merging into and melding
with the outer peripheral part of the back portion of the
chair as clearly seen in Figures 4 and 5.
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As for the examiner’s position that one cannot see the
lateral sections or segments of the seat portion through the
opening of the back of the chair in Figure 2 of the
application (answer, page 5), we are in agreement with
appellant that such segments can be easily seen in Figure 2,
and that such showing, considered along with that in Figures 4
and 5, is sufficiently clear so as to provide a designer of
chairs of the type claimed with adequate details of the
configuration of the chair seat sufficient to allow such
designer to reproduce the chair shown in the application
drawings (photographs). Regarding the examiner’s position
that one cannot tell if the five segments of the chair seat
seen in Figures 4 and 5 of the claimed design are separated or
defined by horizontal ribs or grooves, we share appellant’s
view that the chair design as a whole can be appreciated by
the designer of chairs of the type shown from the disclosure
as a whole and that no feature of the chair is so confusing or
unclear as to create a situation that runs afoul of the
enablement requirement of 35 U.S.C. § 112, first paragraph.
Contrary to the examiner’s view, we do not consider that a
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designer of chairs of the type claimed would have understood
the showing in Figures 2, 4 and 5 of the “drawings” of the
present application to depict upstanding ribs on the seat
portion of the chair therein, a configuration that such a
designer would have readily understood to be disadvantageous
from a comfort perspective when sitting on the chair for any
length of time.
Like appellant, in reaching the above conclusions we have
relied upon the knowledge and critical eye of the person
skilled in the art (i.e., a designer of chairs of the type
claimed) in interpreting what is reasonably shown in the
“drawings” of the present application. In addition, we have
viewed all of the photographs filed with the application in
our attempt to understand exactly what appellant’s claimed
subject matter encompasses, as we believe a designer of such
chairs would have done, especially with regard to common
design features, like the subtle segments of the chair seats
in each of the chair embodiments and in the table top of
Figures 16-19.
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In light of the foregoing, we will not sustain the
examiner’s rejection of the design claim before us on appeal
under 35 U.S.C. § 112, first paragraph, based on lack of
enablement.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
CEF:pgg
McGlew and Tuttle
Scarborough Station
Scarborough, NY 10510-0827
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