Ex parte Hutchins et al.

Board of Patent Appeals and Interferences

Jun 16, 1998

29046917 (B.P.A.I. Jun. 16, 1998)

Application for patent filed November 21, 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for publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL A. HUTCHINS
and JOHN H. PASCALOFF
_____________
Appeal No. 97-3183
Application 29/046,9171
______________
HEARD: June 8, 1998
_______________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the following design
claim:
The ornamental design for a surgical saw
blade hub as shown and described.
The references relied upon by the examiner are:
Appeal No. 97-3183
Application 29/046,917
2
Walen Des. 343,247 Jan. 11, 1994
Goris Des. 362,065 Sep. 5, 1995
Mongeon 4,386,609 Jun. 7, 1983
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goris in view of Walen and Mongeon. This
rejection is explained on page 3 of the answer.
Reference is made to pages 2-6 of the brief and pages 4-10
of the answer for the arguments of the appellants and examiner in
support of their respective positions.

OPINION
Having carefully considered the respective positions
advanced by the appellants in the brief and the examiner in the
answer, it is our conclusion that the references relied on by the
examiner fail to establish the obviousness of the design claim on
appeal within the meaning of 35 U.S.C. § 103.
The test for determining obviousness of a claimed
design under 35 U.S.C. § 103 is whether the design would have
been obvious to a designer of ordinary skill who designs articles
of the type involved. In re Carter, 673 F.2d 1378, 1380, 213
USPQ 625, 626 (CCPA 1982) and In re Nalbandian, 661 F.2d 1214,
Appeal No. 97-3183
Application 29/046,917
3
1216, 211 USPQ 782, 784 (CCPA 1981). The appellants’ design lies
in the realm of designers of surgical saw blade hubs.
In order to support a holding of obviousness under
section 103, there must be a reference, a something in existence,
the design characteristics of which are basically the same as the
claimed design. Such a reference is necessary whether the
holding is based on the basic reference alone or on the basic
reference in view of modifications suggested by secondary refer-
ences. In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA
1982).
Although we agree with the examiner that Goris can be
considered a Rosen reference, we do not believe that a combined
consideration of Goris, Walen and Mongeon establishes the
obviousness of the appellants’ design. In particular, we observe
that the claimed design has a large V-shaped cut-out wherein the
sloping sides that define the ?V? intersect with the curved outer
periphery of the hub in such a manner so as to form a sharp edge.
The examiner, by stating on page 3 of the answer that the claimed
design differs from Goris, inter alia, by ?a v-shaped opening
extending to its outer periphery,? appears to recognize that
Goris fails to teach or suggest such a feature and, in an effort
to overcome this deficiency, relies on the teachings of Walen.
Appeal No. 97-3183
Application 29/046,917
4
In Walen, however, the sloping sides which define the cut-out do
not intersect the curved outer periphery of the hub at all.
Instead, Walen’s sloping sides intersect a horizontal surface of
significant extent that in turn intersects with the curved outer
periphery of the hub, thus giving the end of the hub of Walen a
significantly truncated appearance vis-à-vis the end of the hub
in the claimed design. In our view, the large V-shaped cut-out
in the end of the hub of the claimed design, wherein the sloping
sides that define the ?V? intersect with the curved outer
periphery of the hub in such a manner so as to form a sharp edge,
creates a distinctive overall appearance that is not suggested by
the relied on prior art.
The decision of the examiner is reversed.
REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
Appeal No. 97-3183
Application 29/046,917
5
)
) INTERFERENCES
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
WHITHAM, CURTIS, WHITHAM & McGINN
Reston International Center
11800 Sunrise Valley Drive
Suite 900
Reston, VA 22091