Ex parte Morse et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

29042395 (B.P.A.I. Sep. 17, 1998)

Application for patent filed August 9, 1995.1
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not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANKLIN B. MORSE, JR. and RICHARD L. HINKLE
_____________
Appeal No. 98-0919
Application 29/042,3951
______________
ON BRIEF
_______________
Before CALVERT, GARRIS and HAIRSTON, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of the claim in
appellants' design application.
The claim reads: The ornamental design for a "ROD
HOLDER", as shown.
Appeal No. 98-0919
Application 29/042,395
2
The references applied in the final rejection are:
Cummings 4,235,409 Nov. 25, 1980
McLean 4,658,534 Apr. 21, 1987
The claim stands finally rejected under 35 USC § 103 as
unpatentable over Cummings in view of McLean.
The examiner states the basis of the rejection as
(answer, page 4):
The overall appearance of [the] claimed design
is substantially disclosed by Cummings (Items 18,
20, 22), except for a bend at a 45 degree angle, a
head on the stake, tapered lower end, and the fact
that it is attached to a surface.
McLean discloses a free-standing rod holder with
a straight stake with a head on top and tapered
lower end--like [the] claimed design--to be
notoriously old in the prior art.
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to modify Cummings by removing it from the surface,
as taught by McLean, straightening the bend in the
stake, adding a head to the top and tapering the
lower end, as disclosed and taught by McLean, in
order to obtain substantially the herein disclosed
and claimed design.
In determining whether a claimed design would have been
obvious, Durling v. Spectrum Furniture Co., 101 F.3d 100, 103,
40 USPQ2d, 1788, 1790 (Fed. Cir. 1996), states:
Appeal No. 98-0919
Application 29/042,395
3
Before one can begin to combine prior art designs
however one must find a single reference, "a
something
in existence, the design characteristics of which are
basically the same as the claimed design." In re
Rosen, 673 F.2d [388,] 391, 213 USPQ [347,] 350
[(CCPA 1982)]. Once this primary reference is
found, other references may be used to modify it to
create a design that has the same overall visual
appearance as the claimed design. See In re Harvey,
12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir.
1993). These secondary references may only be used
to modify the primary reference if they are "so
related [to the primary reference] that the
appearance of certain ornamental features in one
would suggest the application of those features to
the other." In re Borden, 90 F.3d [1570,] 1575, 39
USPQ2d [1524,] 1526-27 [(Fed. Cir. 1996)].
Appellants contend that Cummings does not constitute a
so-called "Rosen reference". We agree. In our view, the rod
holder disclosed by Cummings does not have basically the same
design characteristics as the design here claimed. In
particular, we consider that the bend in Cummings' rod 18, and
the base plate 16 at the lower end of the rod, together cause
the visual effect as a whole of the Cummings holder not to be
"basically the same" as the visual impression created by
appellants' claimed design.
Appeal No. 98-0919
Application 29/042,395
4
Accordingly, since Cummings is not a "Rosen reference",
secondary references such as McLean cannot properly be used to
modify it to create a design with same overall appearance as
that
claimed herein. The rejection will therefore not be
sustained.
The examiner's decision to reject the claim is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 98-0919
Application 29/042,395
5
KENNETH W. HAIRSTON )
Administrative Patent Judge )
Appeal No. 98-0919
Application 29/042,395
6
Don A. Hollinsworth
Ladas & Parry
5670 Wilshire Boulevard
Suite 2100
Los Angeles, CA 90036-5679