Ex parte Klayman

Board of Patent Appeals and Interferences

Feb 25, 2000

29066640 (B.P.A.I. Feb. 25, 2000)

Application for patent filed February 18, 1997. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ARNOLD I. KLAYMAN
____________
Appeal No. 2000-0543
Application No. 29/066,6401
____________
ON BRIEF
____________
Before KRASS, STAAB, and PAK, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This design application is on appeal from the final
rejection of the only claim pending.
Appeal No. 2000-0543 Page 2
Application No. 29/066,640
The subject matter of the invention is the design for a
speaker and is directed to the design shown in Figures 7
through 12, which have been relabeled 1 through 6. The designs
depicted in original Figures 1 through 6 and 13 through 16 were
withdrawn as being directed to nonelected inventions.
Appellant appeals from the final rejection of the
following design claim:
The ornamental design for a speaker, as shown and
described.
The examiner relies on the following reference:
Wright 1,894,605 Jan. 17,
1933
The claim stands rejected under 35 U.S.C. 102(b) as
anticipated by Wright, specifically Figure 4 of Wright.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
Appeal No. 2000-0543 Page 3
Application No. 29/066,640
We reverse.
In order to establish an anticipation, under 35 U.S.C.
102, of a claimed design, the examiner must demonstrate that a
prior art reference describes subject matter which is identical
in all material aspects of the claimed design. Hupp v. Siroflex
of America Inc., 122 F.3d 1456, 1459, 43USPQ2d 1887, 1890 (Fed.
Cir. 1997).
Accordingly, we look to the sameness between the toy block
design of Wright and the speaker design of the instant
invention in order to determine the appropriateness of the
examiner’s rejection under 35 U.S.C. 102.
We do not view the speaker design of the instant invention
and the toy block design of Wright to be identical in all
material aspects because the feet depicted on the former are a
material part of the claimed design whereas the toy block
design of Wright has no such feet. The examiner may not
consider these feet to be “material” but we disagree. The
examiner calls the difference in feet to be “de minimus” in
Appeal No. 2000-0543 Page 4
Application No. 29/066,640
nature and one which does not provide an overall appearance
that is patentably distinct over the prior art. Thus, the
examiner admits to a difference but makes the rejection under
35 U.S.C. 102, rather than 103.
In the instant case, the toy block design of Wright cannot
anticipate the instant claimed design since the former does not
depict the feet which form part of the latter’s design, which
we regard as a material aspect of the claimed design.
While we need not reach the “analogous art” issue since it
is our view that Wright fails to disclose all of the elements
of the claimed design in any event, we would note that the
question of whether or not a prior art reference is
nonanalogous art is simply not germane in cases of a design
claim, or, for that matter, of a utility claim, which has been
rejected as being anticipated under 35 U.S.C. 102. Either the
reference discloses all that is claimed, or it does not. The
question of nonanalogous art has a bearing on the issue of
obviousness under 35 U.S.C. 103 but we do not have such an
issue before us.
Appeal No. 2000-0543 Page 5
Application No. 29/066,640
The feet of the instant claimed design may have a
functional purpose but they are also ornamental in nature since
any number and/or other types of feet (shorter, longer, etc.)
could have been used for the functional purpose but appellant
chose the feet depicted in the figures showing the speaker
design for their ornamental purpose. Accordingly, we do not
agree that the examiner may ignore this part of the design
merely because the feet serve a functional, as well as an
ornamental, purpose.
Since Wright does not disclose all the elements of the
claimed design, the examiner’s rejection of the design claim
under 35 U.S.C. 102(b) is not sustained and the examiner’s
decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
Appeal No. 2000-0543 Page 6
Application No. 29/066,640
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
EAK/jlb
Appeal No. 2000-0543 Page 7
Application No. 29/066,640
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