Ex parte Sanders

Board of Patent Appeals and Interferences

Jul 28, 2000

29081424 (B.P.A.I. Jul. 28, 2000)

While the copy of the appealed claim in the appendix to the appellant's brief is substantially correct, it1
does differ from the actual claim of record in that the use of capitalization in the claim of record has been omitted in
the copy in the appendix and in that "an" in the record claim appears as "a" in the copy in the appendix.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.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 JOHN M. SANDERS
____________
Appeal No. 2000-0224
Application No. 29/081,424
____________
ON BRIEF
____________
Before McQUADE, OWENS, and JENNIFER D. BAHR, 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:1
The ornamental design of an LIQUID AND SEDIMENT COLLECTOR as shown and
described.
Appeal No. 2000-0224 Page 2
Application No. 29/081,424
The examiner's rejection of the claim under 35 U.S.C. ß 171 as not meeting the requirements of2
ornamentality has been withdrawn (see advisory action, Paper No. 7) in view of the appellant's response and affidavit
filed April 5, 1999 (Paper No. 6).
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Stokes 1,420,886 Jun. 27, 1922
Richards 3,139,628 Jul. 7, 1964
The following rejection stands before us for review.2
The appealed claim stands rejected under 35 U.S.C. ß 103 as being unpatentable over
the lift pipe 31 of Stokes in view of the pipe elbow piece 12 of Richards.
The examiner's rationale for the rejection appears on page 3 of the answer (Paper No.
10) and reads as follows:
The overall appearance of Appellant's claimed design is substantially
disclosed by Stokes 31, except for a difference in the length and termination of
the short extension.
Richards 12 shows a similar short length and termination on a pipe like
that of the claimed design.
It would have been obvious to one of ordinary skill in the art at the time
the invention was made to have fashioned the pipe of Stokes to have a short
extension with a straight cut termination on one end of the elbow as taught by
Richards. To do so would result in an appearance over which the claimed
article bears no unobvious ornamental differences.
In response to this rejection, the appellant argues that neither Stokes nor Richards
discloses a liquid and sediment collector having design characteristics that are basically the same
Appeal No. 2000-0224 Page 3
Application No. 29/081,424
as the claimed design and that, thus, neither reference satisfies "the Rosen test." Further, the
appellant argues that the pipes of Richards and Stokes are not so related that the appearance of
certain ornamental features in one patent would suggest the application of those features to the
other (brief, pages 5 and 6). Additionally, the appellant urges that, since the Richards pipe is
not intended for use as a liquid and sediment collector, the modification of the Stokes pipe
proposed by the examiner would not have been obvious to a designer of ordinary skill who
designs liquid and sediment collectors and liquid traps (brief, pages 6 and 7).
We note, at the outset, that this design application illustrates four embodiments of the
invention. The first embodiment, illustrated in Figures 1-6, is a pipe, open at both ends,
comprising one relatively long leg and a significantly shorter leg, with the two legs being
connected by a 90 degree bend. The radius of curvature of the inside curve of the bend
appears to be approximately equal to the diameter of the pipe. The second, third and fourth
embodiments, illustrated in Figures 7-12, 13-18 and 19-24, respectively, include the first and
second leg connected by a 90 degree bend of the first embodiment and additionally include
from one to three short segments extending perpendicularly outwardly from the longer leg in a
direction parallel to the shorter leg. The ends of the additional short segments, which are open,
lie in the same plane as the open end of the shorter leg. While it is true that multiple
embodiments can be presented in a design application only if they involve a single inventive
Appeal No. 2000-0224 Page 4
Application No. 29/081,424
In re Rubinfield, 270 F.2d 391, 396, 123 USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960)3
See Ex parte Appeal No. 315-40, 152 USPQ 71, 72 (Bd. App. 1965).4
concept , the examiner (Paper No. 3, page 2) has determined that the above identified3
embodiments present overall appearances that are not distinct from one another and, thus, has
not required a restriction of the application to one of the embodiments. While the appellant
(Paper No. 4, page 2, and paragraph 2 of the Sanders declaration attached to Paper No. 4)
refers to the four disclosed embodiments as being "visually distinct from each other," the
appellant has not directly traversed this determination by the examiner or requested
reconsideration thereof. Consequently, the appealed claim is broad in the sense that the
unpatentability of any embodiment presented would defeat the claim. In reviewing the4
examiner's rejection of the claim under 35 U.S.C. ß 103, we shall focus our attention on the
embodiment of Figures 1-6, which most closely resembles the prior art pipes relied upon by the
examiner.
Stokes illustrates two pipe sections, each identified by the reference numeral 31,
connected by a fitting. These pipe sections serve as a liquid lifting pipe to deliver fuel from a
main tank 30 to a fuel chamber 15 of a carburetor for an internal combustion engine. One of
the pipe sections 31 runs from the "main tank" 30 to the connection fitting and the other pipe
section 31 runs from the connection fitting to the "fuel chamber" 15. On page 2 of the final
rejection (Paper No. 5), the examiner states that "only the L-shaped portion of the pipe that
Appeal No. 2000-0224 Page 5
Application No. 29/081,424
runs from the fuel tank to the connection fitting was intended by the examiner to be considered
the primary reference to Stokes." While it is apparent from this statement that the examiner is
relying on only one of the two pipe sections 31, given the examiner's use of terminology ("fuel
tank") which differs from that used by Stokes ("main tank" and "fuel chamber") and the fact
that both pipe sections comprise two straight legs and a bend to form an L-shaped portion, it is
not clear to us which of the two sections 31 forms the basis of the examiner's rejection. Thus,
we shall view each of the pipe sections independently to see if either forms a proper basis for
the examiner's rejection under 35 U.S.C. ß 103.
The test for determining obviousness of a claimed design under 35 U.S.C. ß 103 is
whether the design would have been obvious to a designer of ordinary skill who designs
articles of the type involved. See In re Carter, 673 F.2d 1378, 1380, 213 USPQ 625, 626
(CCPA 1982) and In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA
1981). The appellant's design lies in the realm of designers of liquid and sediment collectors.
In order to support a holding of obviousness under 35 U.S.C. ß 103, there must be a
reference, a something in existence, the design characteristics of which are basically the same
as the claimed design. Such a reference is necessary whether the holding is based on the basic
reference alone or on the basic reference in view of modifications suggested by secondary
references. See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).
Appeal No. 2000-0224 Page 6
Application No. 29/081,424
The examiner contends that Stokes does share similar characteristics with the claimed
design, in that both the claimed design and the Stokes pipe are L-shaped pipes intended to
transport liquids (answer, page 4). Even assuming that the design characteristics of either of
the pipe sections 31 of Stokes are basically the same as the appellant's claimed design as
contended by the examiner, we note that there are material differences between the appellant's
design and either of the Stokes pipes which produce an overall appearance which would be
recognized as different by an ordinary observer. In the appellant's design, the length of the
shorter leg and the inside radius of curvature of the bend are each about the same as, or
perhaps slightly larger than, the diameter of the pipe and the longer leg is significantly longer
(at least about 10 times) than the diameter of the pipe. Turning first to the Stokes pipe section
31 running between the connection fitting and the fuel chamber 15, the shorter (vertical) leg has
a length which is noticeably larger than the pipe diameter, while the bend is so sharp that its
radius of curvature is almost imperceptible, giving an impression very close to a corner rather
than a curved bend. The pipe section 31 running between the main tank 30 and the connection
fitting has a (possibly shorter) horizontal leg whose length, even foreshortened as illustrated, is
noticeably more than several times the pipe diameter, as distinguished from the shorter leg of
the appellant's design. Additionally, unlike the smooth ends of the appellant's design, the right-
hand end of each of the pipe sections 31 of Stokes is threaded. The examiner's rejection, as
discussed above, relies on the elbow piece 12 in Richards' automatic swimming pool water
Appeal No. 2000-0224 Page 7
Application No. 29/081,424
refill system for a suggestion to provide a short extension with a straight cut termination on the
pipe of Stokes.
As regards the combination of references in design cases, the question is not whether
the references sought to be combined are in analogous arts in the mechanical sense, but
whether they are so related that the appearance of certain ornamental features in one would
suggest the application of those features to the other. Thus, if the problem is merely one of
giving an attractive appearance to a surface, it is immaterial whether the surface in question is
that of wall paper, an oven door, or a piece of crockery. On the other hand, when the
proposed combination of references involves material modifications of the basic form of one
article in view of the other, the nature of the articles involved is a definite factor in determining
whether the proposed change involves invention. The art from which a patent is drawn does
not necessarily preclude its citation as a reference but "it does reflect on the question of
remoteness of suggestion between what it discloses and what the applicant discloses." In re
Glavas, 230 F.2d 447, 450-451, 109 USPQ 50, 52-53 (CCPA 1956).
In this instance, while we recognize that the elbow piece 12 of Richards, like both of
the pipes 31 of Stokes and the appellant's design, is an L-shaped pipe having one longer leg
and a shorter leg connected by a curved bend portion, we find ourselves in agreement with the
appellant that the elbow piece 12 of Richards' automatic swimming pool water refill system is
not so related to the fuel lifting pipes of Stokes as to have suggested modification of either of
Appeal No. 2000-0224 Page 8
Application No. 29/081,424
the pipes 31 of Stokes to provide a straight cut termination (i.e., elimination of the threads) and
short extension of the shorter leg as proposed by the examiner.
Therefore, we cannot sustain the examiner's rejection of the appealed design claim.
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Application No. 29/081,424
CONCLUSION
To summarize, the decision of the examiner to reject the design claim under 35 U.S.C.
ß 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-0224 Page 10
Application No. 29/081,424
Burd Bartz & Gutenkauf
Richard O. Bartz
1300 Foshay Tower
Minneapolis, MN 55402