Ex parte Grinberg

Board of Patent Appeals and Interferences

May 27, 1999

29067859 (B.P.A.I. May. 27, 1999)

Application for patent filed April 7, 1997.1
1
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not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ERNESTO GRINBERG
_____________
Appeal No. 99-1028
Application 29/067,8591
______________
ON BRIEF
_______________
Before STAAB, McQUADE and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the
following design claim:
The ornamental design for a disposable mitten as
shown and described.
Appeal No. 99-1028
Application 29/067,859
2
The disposable mitten design is depicted in front view,
first side view, second side view, top view and bottom view in
Figures 1 through 5 respectively, with Figure 1 being the most
representative when evaluating the examiner’s rejection.
THE REFERENCES
The references applied by the examiner are:
O'Connell 2,364,749 Dec. 12,
1944
Humphrey 2,782,912 Feb. 26,
1957
THE REJECTION
The design claim stands rejected under 35 U.S.C. § 103 as
being unpatentable over O'Connell in view of Humphrey.
The rejection is explained in the Examiner's Answer
(Paper No. 11).
The opposing viewpoints of the appellant are set forth in
the Brief (Paper No. 10).
OPINION
The appellant’s design is for a disposable mitten having
separate thumb and four-finger pockets with rounded upper
contours. A U-shaped gap or valley is provided between the
Appeal No. 99-1028
Application 29/067,859
3
thumb and four-finger pockets. The front and rear surfaces of
the
glove are depicted in Figures 2-5 as being flat, except where
the
front and rear sides converge along the sides and top to form
a uniform seam or trim. As depicted in Figure 1, the lower
portion of the glove flares outwardly in a fairly symmetrical
manner.
We begin our analysis by pointing out that the standard
for evaluating the patentability of a design is whether it
would have been obvious to a designer of ordinary skill in the
articles involved. See In re Nalbandian, 661 F.2d 1214, 1216,
211 USPQ 782, 784 (CCPA 1981). In rejecting a claim to an
ornamental design under 35 U.S.C. § 103, the examiner must
supply a primary or basic reference that bears a substantially
identical visual appearance to the claimed design. In re
Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed Cir.
1993). That is, there must be a reference, a something in
existence, the design character-istics of which are basically
Appeal No. 99-1028
Application 29/067,859
4
the same as the claimed design; once a reference meets this
test, reference features may reasonably be interchanged with
or added from those in other pertinent references. In re
Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).
Initially, we note that there seems to be some confusion
as to the figure in O'Connell relied on by the examiner as
being the
"something in existence, the design characteristics of which
are
basically the same as the claimed design." Appellant
understands the "something" to be the mitten shown in
O'Connell's Figure 5 (brief, page 2 and Exhibit I filed August
5, 1998). The examiner, on the other hand, relies on the
"mitten" shown in O'Connell's Figure 1 (answer, page 4 and
Exhibit A). In fact, the examiner acknowledges that what is
shown in O'Connell's Figure 5 is a one finger mitten having a
thumb pocket, an index finger pocket and a separate three-
finger pocket. The examiner also states that since she is
relying on a four-finger mitten, the appellant's argument
concerning O'Connell's Figure 5 is moot (answer, page 5).
Appeal No. 99-1028
Application 29/067,859
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Therefore, we understand the examiner's position to be that
O'Connell's Figures 1 is the Rosen reference.
It is the examiner’s position that the only difference
between the O'Connell "mitten" shown in Figure 1 and the
claimed design is the absence of the trim around the sides and
top. The examiner suggests that
[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify
O'Connell by providing it with the trim around the sides
and top as taught by Humphrey to obtain essentially the
herein disclosed and claimed design (answer, page 3).
As to appellant's argument (brief, pages 2 and 3) that
the
O'Connell mitten does not satisfy the threshold Rosen require-
ment, the examiner replies that
O'Connell is seen to be a proper Rosen reference in that,
it shows the overall appearance of the seamless mitten
with one thumb portion and separate four finger pocket
and tapered wrist as in appellant's design (answer, page
5).
We do not agree. First, we point out that O'Connell's
Figure 1 does not show a mitten design, but a piece of fabric
6 which must be combined with a thumb back 7 and a one piece
palm 8 in order to form a complete mitten having a pocket for
Appeal No. 99-1028
Application 29/067,859
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receiving a hand (see O'Connell, page 1, right-hand column,
lines 15-45). O'Connell also states that
the back 6 is cut for a so called one fingered mitten
which has a finger 9 for the index finger of the hand and
a cover 11 for the remaining fingers of the hand (page 1,
left hand column, lines 34-37).
Appellant's mitten design includes a front piece and a
back piece secured together along side and top edges to form a
pocket. At the very least, these basic characteristics of
appellant's design are not shown in O'Connell's Figure 1. In
addition, the U-shaped gap between the thumb and four-finger
pockets and the symmetrical flare in the lower portion of the
mitten are absent
in O'Connell's Figure 1. Accordingly, we do not view
O'Connell's Figure 1 as a proper Rosen reference and we shall
not sustain the standing 35 U.S.C. § 103 rejection of the
appealed claim.
The decision of the examiner is reversed.
REVERSED
Appeal No. 99-1028
Application 29/067,859
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LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 99-1028
Application 29/067,859
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