Ex parte HUTCHINS et al.

Board of Patent Appeals and Interferences

Jun 19, 1998

29048245 (B.P.A.I. Jun. 19, 1998)

Application for patent filed December 22, 1995.1
1
Paper No. 12
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PAUL H. HUTCHINS
and JOHN H. PASCALOFF
______________
Appeal No. 97-3184
Application 29/048,2451
_______________
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.
Appeal No. 97-3184
Application 29/048,245
2
The references relied upon by the examiner are:
Mongeon 4,386,609 June 7, 1983
Walen Des. 343,247 Jan. 11, 1994
Goris Des. 362,065 Sep. 5, 1995
The Hall Blade and Bur Book, “Stryker Sagittal Saw Blade”
(Item 5052-300)(Zimmer) 1992. (Hall)
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goris in view of Walen, Mongeon and Hall. This
rejection is explained on page 3 of the answer.
Reference is made to pages 2-6 of the brief and pages 4-11
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.
Appeal No. 97-3184
Application 29/048,245
3
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, 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 § 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 references. 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, Mongeon and Hall 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.
Appeal No. 97-3184
Application 29/048,245
4
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.
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.
Appeal No. 97-3184
Application 29/048,245
5
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )

Appeal No. 97-3184
Application 29/048,245
6
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