Ex parte Rowan

Board of Patent Appeals and Interferences

Apr 26, 2001

29112628 (B.P.A.I. Apr. 26, 2001)

1
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publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL ROWAN
____________
Appeal No. 2001-0466
Application No. 29/112,628
____________
ON BRIEF
____________
Before KRATZ, BAHR and BLANKENSHIP, Administrative Patent
Judges.
BAHR, 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 PICTURE FRAME as shown and
described.
In rejecting the appealed claim under 35 U.S.C. § 103,
the examiner relies upon the following two references:
(1) Burnes of Boston 1984 Catalog, p. 23, item 5552 (Burnes).
Appeal No. 2001-0466
Application No. 29/112,628
The term "square" as used in this decision denotes a plane figure1
having four equal sides and four right angles. Webster's New World
Dictionary, Third College Edition (Simon & Schuster, Inc. 1988).
2
(2) Exposures, Summer II 1991, p. 6, item A112211 (Exposures).
The appealed claim stands rejected under 35 U.S.C. § 103
as being unpatentable over Burnes in view of Exposures.
Reference is made to the brief (Paper No. 11) and the
answer (Paper No. 12) for the respective positions of the
appellant and the examiner with regard to the merits of this
rejection.
We note, at the outset, that appellant's claimed design
is directed to two embodiments. The embodiment of Figures 1-3
is a picture frame design having a square outer frame1
exhibiting a planar front face and a square inner frame
centered within the outer frame, the inner frame also
exhibiting a planar front face. A planar matting recessed
from the front face of the outer frame is provided between the
inner and outer frames. The embodiment of Figures 4-6 differs
from the embodiment of Figures 1-3 in that the inner frame,
while exhibiting a planar face, is circular rather than
square.
Appeal No. 2001-0466
Application No. 29/112,628
3
The examiner has not required restriction of the design
application to one of the two embodiments. Instead, the
examiner considers the two embodiments to present overall
appearances that are not distinct from one another and thus
comprise a single inventive concept. Accordingly, both
embodiments have been retained in the application (Paper No.
5, page 2).
The examiner's rejection as set forth on pages 2 and 3 of
the answer is as follows:
The overall visual impression conveyed by the
instant frame is held to be similar to Burnes of
Boston #5552, the essential difference being the
proportions of the mat versus picture area.
Exposures shows similar proportions of the mat
versus picture area.
Thus it is held that it would have been obvious
to a person of ordinary skill in the art at the time
the article was made to modify Burnes of Boston
#5552 as taught by Exposures.
Moreover, the result would be an appearance over
which the claimed article possesses no patentable
difference.
Appeal No. 2001-0466
Application No. 29/112,628
While, as discussed above, the claimed design encompasses two2
embodiments, the examiner's rejection focuses primarily on the embodiment of
Figures 1-3 having the square inner frame.
Webster's New World Dictionary, Third College Edition (Simon &3
Schuster, Inc. 1988).
4
The examiner's rejection overlooks an important
difference between appellant's claimed design and the Burnes2
picture frame. The Burnes picture frame includes inner and
outer frames which are rectangular (i.e., having four sides
and four right angles ) but not square, in that the height3
dimension is noticeably larger than the width dimension. We
do not share the examiner's opinion (answer, page 4) that the
difference in shape (square versus rectangular, non-square)
between the claimed design and the Burnes picture frame is de
minimis in nature and unrelated to the overall aesthetic
appearance of the design. On the contrary, it is our opinion
that this difference does affect the appearance of the claimed
design as a whole and the impression that the design would
make to the eye of a designer of ordinary skill. Cf. Ex parte
Pappas, 23 USPQ2d 1636, 1638 (Bd. Pat. App. & Int. 1992) and
In re Carter, 673 F.2d 1378, 1380, 213 USPQ 625, 626 (CCPA
1982).
Appeal No. 2001-0466
Application No. 29/112,628
5
The Exposures picture frame also comprises rectangular
inner and outer frames, which, in contrast to appellant's
claimed design (Figures 1-3), are non-square. Like
appellant's claimed design (Figures 1-3), the area enclosed by
the inner frame appears to be about one-fourth the area of the
outer frame.
The test for determining obviousness of a claimed design
under 35 U.S.C. § 103 is whether the design would have been
obvious to a designer of ordinary skill who designs articles
of
the type involved. See id. and In re Nalbandian, 661 F.2d
1214, 1216, 211 USPQ 782, 784 (CCPA 1981). Furthermore, in
order to support a holding of obviousness under § 103, there
must be a reference, a something in existence, the design
characteristics of which are basically the same as the claimed
design. See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350
(CCPA 1982).
Even assuming, arguendo, that Burnes is a Rosen type
reference and further that Exposures would have suggested
modification of the Burnes picture frame so as to make the
area enclosed by the inner frame smaller as a proportion of
Appeal No. 2001-0466
Application No. 29/112,628
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the area enclosed by the outer frame as proposed by the
examiner, such modification would not result in the claimed
design. The resulting picture frame would not give the
impression of square inner and outer frames (appellant's
Figures 1-3) or a square outer frame and circular inner frame
(appellant's Figures 4-6).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
We are cognizant of the examiner's assertions on page 4
of the answer that "[t]his simple change in proportions (the
choice of square versus rectangle) is notoriously old in the
picture frame art, [and] would have been obvious to one
skilled in the art." However, these assertions are conclusory
in nature and are not supported by any evidence supplied by
the examiner in making the rejection.
Appeal No. 2001-0466
Application No. 29/112,628
7
In failing to supply evidence to support the conclusion
that it would have been obvious to modify the Burnes picture
frame to make the inner and outer frames square so as to
arrive at the claimed design, the examiner has failed to meet
the burden of establishing a prima facie case of obviousness
of the claimed design. Accordingly, we cannot sustain the
examiner's rejection.
CONCLUSION
Appeal No. 2001-0466
Application No. 29/112,628
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To summarize, the decision of the examiner to reject the
design claim under 35 U.S.C. § 103 is reversed.
REVERSED
PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-0466
Application No. 29/112,628
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Perry J. Saidman, Esq.
SAIDMAN DesignLaw Group
1110 Bonifant Street
Suite 510
Silver Spring, MD 20910