Ex parte HARDYDownload PDFBoard of Patent Appeals and InterferencesSep 26, 199729039134 (B.P.A.I. Sep. 26, 1997) Copy Citation Application for patent filed May 22, 1995. 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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. 8 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PATRICIA A. HARDY ____________ Appeal No. 97-2900 Application No. 29/039,1341 ____________ ON BRIEF ____________ Before ABRAMS, PATE, and NASE, Administrative Patent Judges. NASE, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of the single design claim pending in this design application. We REVERSE. Appeal No. 97-2900 Application No. 29/039,134 2 BACKGROUND The appellant's invention relates to a design for a pellet. The claim on appeal is: The ornamental design for a pellet for tossing at weddings as shown and described. The prior art reference of record relied upon by the examiner as evidence of anticipation under 35 U.S.C. § 102 is: Grodberg et al. 3,345,265 Oct. 3, 1967 (Grodberg) The design claim stands rejected under 35 U.S.C. § 102(a), (b) and (e) as being anticipated by Grodberg. Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant regarding the § 102 rejection, we make reference to the examiner's first Office action (Paper No. 2, mailed January 29, 1996) and the examiner's answer (Paper No. 7, mailed March 17, 1997) for the examiner's complete reasoning in support of the rejection, and to the appellant's brief (Paper No. 6, filed November 17, 1996) for the appellant's arguments thereagainst. Appeal No. 97-2900 Application No. 29/039,134 3 Appeal No. 97-2900 Application No. 29/039,134 4 OPINION In reaching our decision in this appeal, we have given careful consideration to the appellant's drawings, specification and claim and to the respective positions articulated by the appellant and the examiner. As a consequence of our review, we have determined that the examiner's rejection of the appellant's design claim under 35 U.S.C. § 102(a), (b) and (e) as being anticipated by Grodberg cannot be sustained. We initially note that the "ordinary observer" test (as distinguished from the "ordinary designer" test used in determining obviousness under 35 U.S.C. § 103) is applicable in determining the presence of novelty under § 102. See In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 785 (CCPA 1981). With respect to the "ordinary observer" test for determining whether novelty is present under § 102 the court in In re Barlett, 300 F.2d 942, 943-44, 133 USPQ 204, 205 (CCPA 1961) set forth (in quoting with approval from Shoemaker, Patents for Designs, page 76): If the general or ensemble appearance- effect of a design is different from that of others in the eyes of ordinary observers, novelty of design is deemed to be present. The degree of difference required to Appeal No. 97-2900 Application No. 29/039,134 5 establish novelty occurs when the average observer takes the new design for a different, and not a modified already- existing, design. It therefore follows that, in order to establish lack of novelty (i.e., anticipation), the ordinary observer must take the general or ensemble appearance-effect of the design under consideration to be the same as that of an already-existing design (even though a degree of difference may actually be present). Here, we are of the opinion that the ordinary observer would take the appellant's design to be a different design from that shown by Grodberg. The different overall impressions created by the tablet of Grodberg and that of the appellant's pellet would be readily appreciated by an ordinary observer such as a purchaser. Specifically, the ordinary observer would readily discern the difference in appearance of the curved ends of the two designs. That is, as pointed out by the appellant, the overall appearance of the present design is not virtually identical to the Grodberg design due to Grodberg having blunter semi-spherical ends which are readily discernibly different in appearance from the more bullet shaped ellipsoid ends of the present design. This being the case, we will not sustain the Appeal No. 97-2900 Application No. 29/039,134 6 rejection of the design claim on appeal under 35 U.S.C. § 102(a), (b) and (e) as being anticipated by Grodberg. CONCLUSION To summarize, the decision of the examiner to reject the design claim under 35 U.S.C. § 102(a), (b) and (e) is reversed. No period for taking any subsequent action in connection with this appeal may be extended under 37 CFR § 1.136(a). REVERSED NEAL E. ABRAMS ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT WILLIAM F. PATE, III ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JEFFREY V. NASE ) Administrative Patent Judge ) Appeal No. 97-2900 Application No. 29/039,134 7 WILLIAM M. HUBBY III 157 E NEW ENGLAND AVENUE SUITE 375 WINTER PARK, FL 32789 APPEAL NO. 97-2900 - JUDGE NASE APPLICATION NO. 29/039,134 APJ NASE APJ PATE APJ ABRAMS DECISION: REVERSED Prepared By: Delores A. Lowe DRAFT TYPED: 19 Sep 97 1st Rev. 25 Sep 97 FINAL TYPED: 3 MAN CONF Copy with citationCopy as parenthetical citation