Ex parte HARDY

Board of Patent Appeals and Interferences

Sep 26, 1997

29039134 (B.P.A.I. Sep. 26, 1997)

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journal and (2) is not binding precedent of the Board.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
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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