Ex parte Michaeli

Board of Patent Appeals and Interferences

Jun 21, 1999

29074268 (B.P.A.I. Jun. 21, 1999)

Application for patent filed July 14, 1997.1
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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(2) is not binding precedent of the Board.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 JOSEPH MICHAELI
__________
Appeal No. 99-0837
Application 29/074,2681
__________
HEARD: April 21, 1999
__________
Before STONER, Chief Administrative Patent Judge, McCANDLISH,
Senior Administrative Patent Judge, and McQUADE,
Administrative Patent Judge.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of the following design claim:
The ornamental design for a Drinking Glass
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as shown and described.
The Claimed Design
According to appellant’s specification, the drinking
glass as illustrated in Figures 1-6 of the drawings is “shaped
like a coconut . . .” In his brief (see page 2), appellant
describes the illustrated drinking glass as having “a
generally prolate ellipsoid shape with a flat bottom.” The
drinking glass is shown to have a circumferential parting line
dividing the drinking glass into what appellant describes on
page 2 of the brief as upper and lower hemispheres. The lower
hemisphere is truncated to provide the flat bottom. The upper
hemisphere is shown to have three indentations or depressions
which are symmetrically arranged about the upper extremity of
the hemisphere.
The Appealed Rejection
The appealed claim stands rejected under 35 U.S.C. § 171
“as being directed to non-statutory subject matter as it
simulates a naturally occurring object and, therefore, lacks
originality” (answer, page 4). There are no other rejections
of the appealed claim, and no prior art has been cited in
support of the standing rejection. Accordingly, the only issue
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before us is the propriety of the examiner’s rejection under §
171. This section of the statute provides in pertinent part:
Whoever invents any new, original and ornamental
design for an article of manufacture may obtain a
patent therefor, subject to the conditions and
requirements of this title.
In the office action mailed November 24, 1997 (see page
2), the examiner concluded that “[t]he [claimed] design is
merely simulating [sic, merely simulates] a coconut shell
which the applicant himself did not invent.” In support of
this position, the examiner states in the final office action
mailed March 31, 1998 (see page 2) that:
The statute requires that for a design to be
patentable it must be “original”. The prima facie
[sic] basis for the rejection of the claim is that
the design clearly simulates a known and naturally
occurring object without any departure from the
normal and expected appearance of that object and
is, therefore, not original. It is not necessary to
rely on prior art in a rejection of the claim as not
being directed to statutory subject matter under 35
U.S.C. 171 as the rejection is not based on prior
art but rather an evaluation of the claim with a
category of known objects, namely coconuts. The
rejection does not take the position that the claim
copies a particular object/coconut but that it
simulates that type of object. The examiner is
aware that all coconuts are not identical but the
differences between the many coconuts are not
patentable ones.
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Appellant’s Position
In support of patentability, appellant does not contend
that the statutory basis (namely § 171) for the appealed
rejection is improper. Nor does appellant challenge the
examiner’s rationale underlying the § 171 rejection, namely
that a rejection may be based on § 171 if the claimed design
lacks originality and thus does not meet all of the
requirements for patentability in § 171.
Instead, appellant points out on page 4 of his brief that
“there are at least six significant differences between the
claimed design and a natural coconut” as shown in the
photographs appended to his Request for Reconsideration filed
February 27, 1998. Given these differences, appellant
maintains that his claimed design, when viewed as a whole, is
sufficiently different from the naturally occurring form of a
coconut to satisfy the “originality” requirement in § 171.
Discussion
As a preliminary matter, we consider it appropriate to
address the propriety of the statutory basis for the appealed
rejection inasmuch as the examiner has cited no authority
explicitly recognizing § 171 as the appropriate statutory
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Application No. 29/074,268
The Manual of Patent Examining Procedure (7 ed.,2 th
July 1998), § 1504.01(d) indicates that § 171 may be the
proper statutory basis for a design that lacks originality,
but cites no supporting precedent under the Patent Act of
1952.
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basis for a rejection where originality of the claimed design
is lacking. Our review of the matter reveals that there is2
ample precedent for making a rejection under § 171 where one
or more requirements of that section of the statute have not
been met, albeit not for the “originality” requirement itself.
For example, the requirement of ornamentality was involved in
a § 171 rejection in In re Webb, 916 F.2d 1553, 1557, 16
USPQ2d 1433, 1435 (Fed. Cir. 1990). In addition, the
requirement that a design be embodied in an article of
manufacture was involved in a § 171 rejection in Ex parte
Tayama, 24 USPQ2d 1614, 1616 (Bd. Pat. App, & Int. 1992) and
also in a § 171 rejection in In re Zahn, 617 F.2d 261, 267,
204 USPQ 988, 994 (CCPA 1980). In all three of these cases, §
171 was expressly or implicitly recognized as the proper
statutory basis for a rejection where a requirement in § 171
had not been met.
In In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965) the
underlying issue of originality was involved in one of the
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rejections under review, but no specific statutory basis for
that rejection was stated. The Wise court nevertheless
recognized that a mere simulation of a naturally occurring
form, namely a tear drop, was not a patentable design. Id.
340 F.2d at 938, 144 USPQ at 355-356.
The issue of originality also was involved in In re
Smith, 77 F.2d 513, 25 USPQ 359 (CCPA 1935) (hereinafter Smith
I) and in In re Smith, 77 F.2d 514, 25 USPQ 360 (CCPA 1935)
(hereinafter Smith II). However, both of these cases were
decided under the Revised Statute § 4929, May 9, 1902, ch. 783
(hereinafter the 1902 Act), not the 1952 Patent Act. Both
Smith I and Smith II are nevertheless pertinent to our inquiry
inasmuch as the relevant provision requiring a design to be
“new, original and ornamental” in the 1902 Act, was reenacted
in 35 U.S.C. § 73 (1946) and again in 35 U.S.C. § 171. See
Tayama, at 1616.
In both Smith I and Smith II, the design was for a naked
baby doll having natural or life-like characteristics. See
e.g., Smith II, 77 F.2d at 514, 25 USPQ at 361. In both
cases, the examiner’s rejection was based on the determination
that the design was substantially nothing more than a mere
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imitation or simulation of known or recognized expressions of
a young baby. In Smith I, the court held that “to take a
natural form, in a natural pose, . . . does not constitute [a
patentable] invention.” Smith I, 77 F.2d at 515, 25 USPQ at
360. In Smith II, the court stated that it found “no
authority . . . which supports the conclusion that a naked
baby doll simulating the natural features . . . of a baby
without embodying some grotesqueness or departure from the
natural form can involve such invention as to comply with the
requirements of the design patent statute.” Smith II, 77 F.2d
at 515, 25 USPQ at 362. Although the rejections in Smith I
and Smith II were not expressly based on any particular
provision of the 1902 Act, the court, as noted supra in Smith
II, specifically held that a design of a naked baby doll
simulating the natural features of a baby did not comply with
the requirements of the design patent statute. Id.
Summarizing the state of the law discussed supra, several
cases (Webb, Zahn, and Tayama) have recognized § 171 as a
proper statutory basis for a rejection where a patentability
requirement of § 171 has not been met. There also is post-
1952 authority (Wise) to support a rejection of a design that
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merely simulates a naturally occurring form. Finally, there
is authority (Smith I and Smith II) to support a rejection of
a design of a naturally occurring form that lacks “originative
faculty” under a design statute where originality is one of
the requirements for patentability. Smith I, 77 F.2d at 513,
25 USPQ at 360. The foregoing authorities constitute
appropriate precedent for concluding that § 171 constitutes a
proper statutory basis for a rejection of a design claim that
lacks originality.
Turning now to the merits of the examiner’s rejection,
the Smith II court held that a claimed design must represent
“some grotesqueness or departure from the natural form” of an
object in order to be patentable. See Smith II, 77 F.2d at
515, 25 USPQ at 362. Application of such test obviously
requires a comparison of the claimed design with the natural
form of the object in question. The court in Smith I and
Smith II had before it prior art representations of the
natural form of a living baby in order to make such a
comparison.
In the present case, the examiner proffered no evidence
of the naturally occurring form of a coconut. She stated,
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instead, that “there is no need to rely on prior art to
establish the lack of originality of a design claim” (answer,
page 5).
While it may be true that prior art is not required in
the sense of 35 U.S.C. § 102(b), § 103, the comparison
required to apply the test in Smith II nevertheless cannot be
made in a vacuum. Instead, evidence of the appearance of the
naturally occurring form of the object in question is required
to make such a comparison. Such evidence, although not
supplied by the examiner, is nevertheless present in the
record before us in the form of the above-mentioned
photographs which accompanied appellant’s Request for
Reconsideration filed on February 27, 1998. We will therefore
rely upon those photographs to make the required comparison
between the claimed design and the naturally occurring form of
a coconut.
On pages 2 and 3 of the brief, appellant has pointed out
several uncontested differences between the claimed design and
the naturally occurring form of a coconut as depicted in the
above-mentioned photographs. Of particular interest are the
flat bottom of the illustrated design, the circumferential
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parting line dividing the illustrated drinking glass in upper
and lower hemispheres, the overall truncated oval shape of the
illustrated design, the symmetrical arrangement of the three
depressions of the same size and shape near the extremity of
the upper hemisphere, and the lack of hairy or fibrous
projections found on the natural form of a coconut.
The examiner’s dismissal of such distinctions as the
circumferential parting line and the flat bottom as being
“functional features” (see page 5 of the answer) is
unwarranted. A similar position was advanced and rejected in
L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25
USPQ2d 1913 (Fed. Cir. 1993). There, the court stated at
1123, 25 USPQ2d at 1917:
A design patent is directed to the appearance of
an article of manufacture. An article of
manufacture necessarily serves a utilitarian
purpose, and the design of a useful article is
deemed to be functional when the appearance of the
claimed design is “dictated by” the use or purpose
of the article. In re Carletti, 328 F.2d 1020,
1022, 140 USPQ 653, 654 (CCPA 1964); Power Controls
Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238, 231
USPQ 774, 777 (Fed. Cir. 1986) (patented design must
be primarily ornamental).
. . .[T]he utility of each of the various elements
that comprise the design is not the relevant inquiry
with respect to a design patent. In determining
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whether a design is primarily functional or
primarily ornamental the claimed design is viewed in
its entirety, for the ultimate question is not the
functional or decorative aspect of each separate
feature, but the overall appearance of the article,
in determining whether the claimed design is
dictated by the utilitarian purpose of the article
(citations omitted).
In the present case, the configurations of such features
as the parting line and the bottom of the drinking glass are
not dictated by functional considerations alone. Instead,
these features may have multitude of different configurations.
Accordingly, the mere fact that these features may relate to
certain functions does not mean that the claimed design is
devoid of ornamentality. In our viewpoint, the overall
appearance of the claimed design is not dictated by the
utilitarian purpose of the article, thus requiring
consideration of the foregoing distinctions in determining the
patentability of the claimed design.
These differences and the resulting overall appearance of
the claimed design are not to be viewed in the context of the
“average observer” as argued by appellant on page 4 of the
brief. Instead, the relevant viewer is a designer of ordinary
capability who designs articles of the type claimed. In re
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Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA
1981).
To such a designer of ordinary capability, we are of the
view that the cumulative effect of the foregoing differences
between the claimed design and the naturally occurring form of
a coconut creates a significant and patentably distinct
departure of the overall appearance of the claimed design from
the naturally occurring form of a coconut as shown in the
above-mentioned photographs. The claimed design therefore
satisfies the “originality” requirement in § 171.
Accordingly, we cannot sustain the examiner’s § 171 rejection
of the appealed claim.
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The examiner’s decision rejecting the appealed claim is
reversed.
REVERSED
Bruce H. Stoner, Jr., Chief )
Administrative Patent Judge )
)
)
)
Harrison E. McCandlish, Senior ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
tdc

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