Ex parte H. JAY SPIEGEL

Board of Patent Appeals and Interferences

Aug 26, 1997

29033924 - (D) (B.P.A.I. Aug. 26, 1997)

Application for patent filed January 24, 1995.1
-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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte H. JAY SPIEGEL
________________
Appeal No. 97-1566
Application 29/033,9241
________________
ON BRIEF
________________
KRASS, STAAB and WALTZ, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Jay Spiegel (appellant) appeals from the final rejection of
the claim in this design application to:
The ornamental design for a KICKING TEE as shown
and described.
The examiner relies on the following references as evidence
of obviousness:
Appeal No. 97-1566
Application 29/033,924
-2-
Spiegel Des. 291,714 Sept. 1, 1987
Hornung, Handbook of Designs and Devices, Plate No. 1711 (1946)
p. 191.
The claim stands rejected under 35 U.S.C. § 103 as being
unpatentable over Spiegel in view of Hornung. The examiner’s
findings regarding the content of the references and the
differences between the claimed invention and Spiegel are stated
as follows (examiner’s answer, page 3):
The patent to Spiegel is cited to show a kicking
tee which is strikingly similar to that of the claimed
design except for the difference in the shape of the
outer portion.
The reference to Handbook of Design and Devices
(Figure 1711) is cited to show a shield shape which is
substantially similar in overall appearance to the
shape of the outer portion of the claimed design.
The examiner concludes that it would have been obvious to
substitute the shield shape of Figure 1711 for the outer shape of
Spiegel, and further that “by simply modifying the outer shape,
since the interior portions of the kicking tee [of Spiegel and
the claimed design] are almost identical, said modification would
produce and [sic, an] article strikingly similar in appearance to
that of the claimed design” (examiner’s answer, page 3).
In the “Response to argument” section of the answer, the
examiner offers additional views regarding the combinability of
the references. Specifically, the examiner states that “as long
Appeal No. 97-1566
Application 29/033,924
When a § 103 rejection is based upon a combination of2
references, “there must be a reference, a something in existence,
-3-
as the primary reference is analogous, secondary references can
be properly combined . . . . In this respect, secondary
references need not be analogous to the claimed design”
(examiner’s answer, pages 3-4). The examiner also states that
[because] the Spiegel patent discloses a kicking tee
which is overwhlemingly [sic] similar in overall
general appearance to that of appellant’s claimed
‘Kicking Tee’, the modifications to the outer shape by
means of substituting one well-known geometric shape
for another well-known shape as discussed above are
obvious and well within the skill of an ordinary
designer. [examiner’s answer, page 5]
Appellant’s arguments in support of patentability can be
found in the main brief (pages 3-11) and the reply brief.
We have carefully evaluated appellant’s depicted design, the
designs shown by the Spiegel patent and the Hornung handbook
relied upon by the examiner, and the respective positions
advocated by appellant and the examiner. As a result thereof, we
have reached the conclusion that the examiner’s rejection of
appellant’s design claim under 35 U.S.C. § 103 is not well
founded. Our reasoning for this determination follows.
We will concede to the examiner that the primary reference
to Spiegel qualifies as a Rosen reference, that is, a proper
starting point to support a holding of obviousness. We will2
Appeal No. 97-1566
Application 29/033,924
the design characteristics of which are basically the same as the
claimed design in order to support a holding of obviousness.” In
re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).
-4-
also concede to the examiner that the Hornung handbook
establishes that shield shapes are generally known to the
ordinarily skilled designer. However, contrary to that which the
examiner would apparently have us believe, these circumstances
alone do not establish that it would have been obvious to combine
Spiegel and a particular one of Hornung’s shield shapes as
proposed by the examiner to arrive at the presently claimed
design.
Regarding combining references in design cases, we note, as
the court did in In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52
(CCPA 1956), that
[o]bviously, almost every new design is made up of
elements which, individually, are old somewhere in the
prior art, but the fact that the individual elements of
a design are old, does not prove want of invention in
assembling them.
This is so because, generally speaking, when the proposed
combination of references in a design case involves material
modification of the basic form of one article in view of another,
the references applied must be so related that the appearance of
certain ornamental features in one would suggest the application
Appeal No. 97-1566
Application 29/033,924
-5-
of those features to the other. See In re Glavas, supra.
In our opinion, the modification proposed by the examiner
involves a material modification of the basic form of Spiegel’s
ornamental design. However, we find nothing in the combined
teachings of the applied references which indicates that an
ordinarily skilled designer who designs articles of the type
involved here, namely, kicking tees, would consider the
ornamental shapes depicted in the Hornung handbook to be so
related to the design of kicking tees to suggest application of a
shield shape to the outer shape of the article depicted in the
Spiegel patent. The examiner has provided no cogent line of
reasoning which would suggest or justify such a substantial
change in the basic form of the kicking tee design of Spiegel, in
our view. Rather, the examiner appears to be of the view that it
would have been per se obvious to one ordinary skill in the
kicking tee design art to substitute any known geometric shape
for the rounded oval shape of Spiegel notwithstanding that there
is no suggestion in the prior art to combine the references and
their visual appearances. This is just the sort of mechanical
approach to the question of obviousness criticized by the court
in In re Harvey, 12 F.3d 1061, 1065, 29 USPQ2d 1206, 1209 (Fed.
Cir. 1993) (“If we adopted the logic of the Board . . . each and
Appeal No. 97-1566
Application 29/033,924
-6-
every prior art bowl or vase shape ever publicly disclosed would
render obvious any generally similar vase shape. Clearly, this
cannot be the case.”).
Further, and perhaps more importantly, even if we were to
accept that it would have been obvious as a general principle to
modify the outer shape of Spiegel by making it shield shaped in
view of Hornung’s teaching that such shapes are known, we do not
agree with the examiner’s implied position that the claimed
ornamental design would necessarily ensue. In this regard, the
examiner appears to be of the view that the designer of ordinary
skill who designs articles of the type involved here would have
found it obvious to select a particular portion of a particular
one of Hornung’s shield variants (namely, one of the light
portions of the 1711 shield variant) and apply it to Spiegel in a
particular manner (i.e., such that the rounded portion of
Spiegel’s cavity is located in the pointed lower end of the
shield with the periphery of the rounded portion closely
“mimicking” the outer periphery of the shield’s pointed lower
end). However, it is not apparent to us why an ordinarily
skilled designer would be so inclined based on the teachings of
the references themselves. Where prior art references require a
selective combination to render obvious a claimed invention,
Appeal No. 97-1566
Application 29/033,924
-7-
there must be some reason for the combination other than
hindsight gleaned from the invention disclosure. Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551
(Fed. Cir. 1985).
From our perspective, what the examiner has done here is to
impermissibly rely upon appellant’s own disclosed design for a
suggestion to modify the kicking tee of the Spiegel patent to
arrive at the presently claimed ornamental design. This is
improper.
The decision of the examiner is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 97-1566
Application 29/033,924
-8-
H. Jay Spiegel
P.O. Box 20202
Alexandria, VA 22320