Ex parte IMRE HLAVICSKA

Board of Patent Appeals and Interferences

Sep 30, 1997

29012093 (B.P.A.I. Sep. 30, 1997)

Application for patent filed August 23, 1993. According1
to Appellant, this application is a continuation-in-part of
Application No. 29/009,496 filed June 15, 1993, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IMRE HLAVICSKA
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Appeal No. 97-2867
Application 29/012,0931
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ON BRIEF
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Before COHEN, GARRIS, and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the claim in
the present design patent application.
We reverse.
The Examiner’s Answer lists the following prior art:
Mattchen 4,298,074 Nov. 3, 1981.
Appeal No. 97-2867
Application No. 29/012,093
2
BACKGROUND
The claimed invention
The claimed invention is a design for a burr shaft. As
shown in Figures 1 and 6 for example, the design includes a long
cylindrical shaft with an annulus a short distance from one end.
The annulus is separated into contiguous detents. At various
rotational orientations, the elevational view shows a cut-away
annulus profile as in Figures 13-15 and 21 or a straight
uninterrupted profile as in Figures 19 and 20.
The Mattchen reference
Mattchen discloses a chisel 10 as part of a tool for cutting
through bone. As shown in Figure 1, chisel 10 narrows from shank
11 to cutting edge 13. Column 10, lines 18-20. As shown in
Figures 3 and 5, shank 11 is polygonal. Between each two flat
sides is an axially elongated edge. Each edge is interrupted by
a detent 12 a short distance from one end.
The examiner’s rejection
The design claim stands rejected under 35 U.S.C. § 103 as
unpatentable over Mattchen.
It is the examiner’s position that the claimed design is
substantially disclosed by Mattchen except for a change in
geometric shape of the shaft from polygonal to round. Examiner’s
Appeal No. 97-2867
Application No. 29/012,093
3
Answer at 3. As to the proportion and arrangements of the
detents, the examiner indicates that no patentable design
significance can be attributed to a change in arrangement that is
not consistently carried through all embodiments. Examiner’s
Answer at 6. The examiner also cites In re Cornwall, 239 F.2d
457, 109 USPQ 57 (CCPA 1956), for the proposition that
patentability of a design cannot be based on an element which is
concealed in normal use. Examiner’s Answer at 5.
Appellant argues that the overall appearance of the claimed
design is significantly altered from Mattchen and patentably
distinct therefrom. Appeal Brief at 5. Appellant states that
the contiguity and general shape of the detents are carried
through all embodiments and are therefore entitled to
consideration. Further, Appellant argues (Reply Brief at 1
and 2) that under In re Webb, 916 F.2d 1553, 16 USPQ2d 1433 (Fed.
Cir. 1990), patentability may be based on the detents because the
appearance is a matter of concern at many points in the life of
the shaft. Appellant argues that the claimed design is
essentially a cylindrical shaft with a scalloped band of recesses
at one end. Appeal Brief at 3. Appellant contrasts this with
Mattchen’s polygonal shank having visually prominent axially
Appeal No. 97-2867
Application No. 29/012,093
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extending edge lines and discontinuous detents. Appeal Brief
at 5.
DISCUSSION
The starting point for an obviousness determination in a
design patent application is whether there is something in
existence, the design characteristics of which are basically the
same as the claimed design. In re Rosen, 673 F.2d 388, 390, 213
USPQ 347, 349 (CCPA 1982).
In the present case, the design characteristics of the
claimed design include the following. The most striking visual
aspect of the claimed design is its appearance as a long
cylinder. It gives a visual impression of extending in the axial
direction a significant distance. Another design characteristic
is the presence near one cylinder end of a circumferential array
of recesses. The overall ornamental appearance of the design is
largely one of an extended cylinder with the circumferential
array of recesses being a short distance from one end.
We do not agree with the examiner’s reasons for ignoring the
visual impact of the circumferential array of recesses in the
claimed design. As argued (Reply Brief at 1 and 2), the
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Application No. 29/012,093
5
appearance is a matter of concern under In re Webb and is carried
through all embodiments.
The design characteristics of Mattchen’s shank portion 11
are as follows. The most striking ornamental aspect is the
square appearance of the shank portion. As depicted in Figures 3
and 6, a circumferential array of detents 12 appears a short
distance from one end of the shank.
The examiner has not convinced us that the design
characteristics of the square shank of Mattchen are basically the
same as the claimed design. In our opinion, the design
characteristics of Mattchen’s square shank simply do not evidence
a something in existence, the design characteristics of which are
Appeal No. 97-2867
Application No. 29/012,093
6
basically the same as the claimed design portraying a dominant
cylindrical appearance. Therefore, under Rosen, the rejection
cannot be sustained.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 97-2867
Application No. 29/012,093
Todd A. Dawson
Zimmer Inc.
P.O. Box 708
Warsaw, IN 46501-0708