Ex parte RASMUSSEN

Board of Patent Appeals and Interferences

Jul 28, 1998

29019900 (B.P.A.I. Jul. 28, 1998)

Application for design patent filed March 14, 1994.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SCOTT E. RASMUSSEN
_____________
Appeal No. 98-0070
Application 29/019,9001
______________
ON BRIEF
_______________
Before LEE, TORCZON and CARMICHAEL, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of the claimed storage pen design.
References relied on by the Examiner
Miscoe 3,404,818 Oct. 08, 1968
Allen, Davis & Co. Ltd. (Allen) GB 693,826 Jul. 08, 1953
(British Patent)
Unilever DK 105,325 Dec. 05, 1966
(Danish Patent)
Appeal No. 98-0070
Application 29/019,900
2
The Rejections on Appeal
The design claim is rejected under 35 U.S.C. § 103 as being
unpatentable over Allen and Unilever.
The design claim is also rejected under 35 U.S.C. § 103 as
being unpatentable over Miscoe.
The Invention
The invention is directed to the ornamental design of a
storage pen. Figure 1 of the claimed design is reproduced below:
Appeal No. 98-0070
Application 29/019,900
3
Opinion
We do not sustain the rejection of the design claim over
Allen and Unilever.
We also do not sustain the rejection of the design claim
over Miscoe.
The rejection based on Allen and Unilever
In an obviousness rejection of a design claim, there must be
a reference which discloses essentially the same basic design as
that claimed in order to support a holding of obviousness. In re
Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982). In our
view, the examiner is incorrect in regarding Allen as a "Rosen"
reference. As is pointed out by the appellant, the claimed
design is characterized by four substantially rectangular
compartments wherein the longer dimension of the compartments is
aligned in parallel to the longer dimension of the rectangular
peripheral wall. Allen's design shows alignment in the other
direction, and appears substantially different from the
appellant’s claimed design. The rejection based on Allen as the
Appeal No. 98-0070
Application 29/019,900
4
"Rosen" reference cannot stand.
Unilever shows four square compartments, and the Examiner
did not regard it as the basic "Rosen" reference for this
rejection. Thus, we need not address that alternate scenario.
Our discussion is limited to the rationale on which the rejection
was actually based. We decline to introduce a new or alternate
rationale in the first instance on appeal. Also, it should be
noted that the examiner has failed to account for the appearance
of the transverse partition between the compartments of the
claimed design.
For the foregoing reasons, we do not sustain the rejection
based on Allen and Unilever.
The rejection based on Miscoe
We reject the appellant’s argument that the examiner
rejected the claimed design based on a single top plan view
illustrated in Miscoe. The entire description pertaining to the
embodiment corresponding to Miscoe’s Figure 3 was the basis of
the examiner’s rejection. Note that in column 2, lines 1-3 and
9-18, Miscoe contains discussions about the Figure 3 embodiment.
Appeal No. 98-0070
Application 29/019,900
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We do not sustain this rejection, because we disagree with
the examiner’s account of the design feature on the internal
partition between the compartments. In the appellant’s claimed
design, one segment of a transverse partition has a double-lined
appearance. In our view, this gives the overall design a
distinctively different appearance relative to that of Miscoe.
We reject the examiner’s position that the double-in-part
transverse partition is primarily functional. If structural
integrity were the real issue, there is little reason to
strengthen only one segment of the partition, and a thicker
segment without the double panel/lining look would serve just as
well. While it is true that a patentable design must have an
unobvious appearance distinct from that dictated solely by
functional considerations, Lee v. Dayton-Hudson Corp., 838 F.2d
1186, 1188, 5 USPQ2d 1625, 1627 (Fed. Cir. 1988), we do not
regard the internal partition feature at issue as being dictated
solely by functional considerations. We reject, however, the
appellant’s contention that patentable distinction also stems
from (1) the ratio between the height of the compartments and the
Appeal No. 98-0070
Application 29/019,900
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enclosed floor space, and (2) the presence of hinges in Misco’s
storage pen. In our view, the height of the compartments as well
as the use of hinges is dictated solely or at least primarily by
functional considerations of a storage pen.
For the foregoing reasons, we do not sustain the rejection
of the claimed design over Miscoe.
Conclusion
The rejection of the design claims over Allen and Unilever
is reversed.
The rejection of the design claim over Miscoe is also
reversed.
REVERSED
Appeal No. 98-0070
Application 29/019,900
7
JAMESON LEE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 98-0070
Application 29/019,900
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