Ex Parte Krunas

Board of Patent Appeals and Interferences

Oct 31, 2002

29076553 (B.P.A.I. Oct. 31, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CATHERINE KRUNAS
____________
Appeal No. 2001-0292
Application No. 29/076,553
____________
ON BRIEF
____________
Before THOMAS, OWENS, and NASE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final rejection of the following
design claim:
The ornamental design for a perfume bottle as shown and described.
The examiner has relied upon the following references:
Paine D28,687 May 24, 1898
Lusker D385,800 Nov. 4, 1997
(Filed June 28, 1995)
Stoecker D386,973 Dec. 2, 1997
(Filed Oct. 17, 1996)
Appeal No. 2001-0292
Application No. 29/076,553
2
The design claim stands rejected under 35 USC § 103. As evidence of
obviousness, the examiner relies upon Paine in view of Lusker, further in view of Stoecker.
We refer to the brief and the answer for the respective positions of the appellant and
the examiner.
OPINION
“In determining the patentability of a design, it is the overall appearance, the visual
effect as a whole of the design, which must be taken into consideration.” See In re
re Rosen, 673 F.2d 388, 390, 213 USPQ 347, 349 (CCPA 1982). Where the inquiry is to
be made under 35 U.S.C. § 103, the proper standard is whether the design would have
been obvious to a designer of ordinary skill who designs articles of the type involved. See
In re Nalbandian, 661 F.2d 1214, 1217, 211 USPQ 782, 785 (CCPA 1981). Furthermore,
as a starting point when a § 103 rejection is based upon a combination of references, there
must be a reference, a “something in existence,” the design characteristics of which are
basically the same as the claimed design. Once a reference meets the test of a basic
design reference, ornamental features may reasonably be interchanged with or added
from those in other pertinent references, when such references are “so related that the
appearance of certain ornamental features in one would suggest the application of those
features to the other.” See In re Rosen, 673 F.2d 388 at 391, 213 USPQ 347 at 350
(CCPA 1982); In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956); In re
Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). If, however, the
combined teachings of the applied references suggest only components of the claimed
Appeal No. 2001-0292
Application No. 29/076,553
3
design, but not its overall appearance, an obviousness rejection is inappropriate. See In re
Cho, 813 F.2d 378, 382, 1 USPQ2d 1662, 1663 (Fed. Cir. 1987).
We reverse the rejection under 35 U.S.C. § 103 of the design claim on appeal.
At the outset, we agree with the examiner’s views that Paine is a proper Rosen-type
primary reference having characteristics basically the same as the claimed design, as set
forth in accordance with the earlier-noted case law in this opinion. We also agree with the
so-related reasoning of the examiner that it would have been obvious to have modified
Paine in light of the showings of the rounded corners and the formation of a like overall
design that is basically an isosceles triangle in Lusker rather than the equilateral triangle of
Paine. We also agree with the examiner’s reasoning that it would have been obvious
within 35 U.S.C. § 103 for the ordinary designer to have omitted the flange at the top of the
bottle neck in Paine in view of the showing in Stoecker.
The answer does not satisfactorily address the claimed feature that two of the
corners of the bottle have been truncated . As set forth at page 6 of the answer, the
examiner merely considers this to be “a de minimis difference since it does not have a
significant impact on the overall appearance of the design.” On the other hand, appellant
argues at the top of page 5 of the brief that none of the three applied references teach or
suggest truncated corners as in the claimed design. Appellant correctly points out that all
three corners of the bottled disclosed in Paine are pointed and that all three corners of the
bottle disclosed in Lusker are rounded. We find ourselves in agreement with appellant’s
conclusion: that two corners of the triangle bottle are different from the third corner as
Appeal No. 2001-0292
Application No. 29/076,553
4
claimed is in no way taught or suggested by the Paine patent, the Lusker patent or the
Stoecker patent.
Within 35 U.S.C. § 103 the artisan would have found it obvious to have incorporated
the rounded nature of the corners in Lusker’s showings for each of the three corners in the
Paine bottle rather than, as the examiner apparently views, to have rounded only two of
the three corners. On the one hand, Lusker appears to show in the top plan view in Figure
1 as well as the bottom plan view in Figure 3 that the three corners of his isosceles
triangle-shaped bottle are rounded. On the other hand, however, the right side-left side
mirror image in Figure 4 appears to depict that the corners are truncated rather than
rounded. A similar conclusion is reached by us as to the respective views shown in
Figures 5 and 6. Similar conclusions are reached as to the second embodiment shown in
Figures 7 through 10. Thus, the true nature of the manner in which the three sides are
joined together is somewhat disharmonious according to the various showings in Lusker.
When properly applied as an ornamental design feature to Paine, we are thus
unable to agree with the examiner’s view that the truncated nature of the corners would be
de minimis in appearance and not have a significant impact on the overall appearance of
the claimed design. We are left to conjecture what may appear to be rounded corners in
some figures of Lusker and truncated corners in other showings in Lusker and how these
apparent different design approaches would impact upon the overall design of Paine. The
perspective view in Figure 1 of the claimed bottle clearly shows the front corner portion of
the two shorter sides having a different overall appearance than the truncated corner
portion to the rear on each side of the claimed design. This is emphasized when
Appeal No. 2001-0292
Application No. 29/076,553
5
considered in light of the bottom view shown in Figure 2 and the top plan shown in Figure
5 as well as the right side-left side mirror image in Figure 3.
Based on the applied prior art and considering it in the best light towards the
examiner’s basic views, we cannot sustain the rejection because we remain uncertain from
our study of the applied prior art the exact manner in which a corresponding front
perspective view similar to Figure 1 of the claimed design would appear. There is no
clarifying corresponding front perspective view among the various Figures clearly showing
this aspect of the design in Lusker.
In order for us to sustain the examiner’s rejection under 35 U.S.C. § 103, we would
need to resort to speculation or unfounded assumptions to supply deficiencies in the
factual basis of the rejections. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000 (1968).
This we decline to do.
Appeal No. 2001-0292
Application No. 29/076,553
6
In view of the foregoing, the decision of the examiner rejecting the design claim on
appeal under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JDT/lp
Appeal No. 2001-0292
Application No. 29/076,553
7
KENYON KENYON
ONE BROADWAY
NEW YORK, NY 10004
Letty
JUDGE THOMAS
APPEAL NO. 2001-0292
APPLICATION NO. 29/076,553
3 MEMBER CONFERENCE
APJ THOMAS
APJ NASE
APJ OWENS
DECISION: REVERSED
PREPARED: Feb 9, 2005
OB/HD
PALM
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