Ex parte Saunders et al.

Board of Patent Appeals and Interferences

Mar 29, 2001

29095094 (B.P.A.I. Mar. 29, 2001)

Application for design patent filed October 16, 1998,1
entitled (as amended) "OIL FILTER WRENCH."
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JAMES SAUNDERS
and SCOTT WEBB

Appeal No. 2000-1905
Design Application 29/095,0941

ON BRIEF

Before STONER, Chief Administrative Patent Judge, and
WILLIAM SMITH and BARRETT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 2000-1905
Design Application 29/095,094
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Appellants appeal from the final rejection of the claim
in this design patent application to:
The ornamental design for an oil filter wrench as
shown and described.
The design is reproduced below.
PRIOR ART
No prior art is relied upon by the Examiner in the
rejection of the claim on appeal.
THE REJECTION
The claim stands rejected under 35 U.S.C. 171 as being
directed to non-statutory subject matter because it is said to
lack ornamentality. The rejection (Paper No. 2, pp. 2-3) is
form paragraph 15.08 from the Manual of Patent Examining
Appeal No. 2000-1905
Design Application 29/095,094
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Procedure § 1504.01(c). The reasoning specific to this design
is as follows (Paper No. 2, p. 2):
The following evidence establishes a prima facie
case of lack of ornamentality:
Ç The claimed design appears to be a plain wrench
strap having projections for gripping purposes. The
appearance of the design when evaluated in light of
the examiner's knowledge and a review of the prior
art does not evidence that the design was "created
for the purpose of ornamenting" the article in which
it is embodied and, therefore, the claim is not
directed to statutory subject matter
OPINION
Legal standards for "ornamental"
The function of the article itself must not be confused
with "functionality" of the design of the article. Avia
Group Int'l, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988)
(distinguishing the functionality of the feature from the
design of the feature). "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." L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117,
1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993) (quoting
Appeal No. 2000-1905
Design Application 29/095,094
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In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA
1964)). "In determining 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." L.A. Gear, 988 F.2d at 1123, 25 USPQ2d at 1917.
As stated in Hupp v. Siroflex of America Inc.,
122 F.3d 1456, 1460-61, 43 USPQ2d 1887, 1890 (Fed. Cir. 1997):
In determining whether the statutory requirement is met
that the design is "ornamental," it is relevant whether
functional considerations demand only this particular
design or whether other designs could be used, such that
the choice of design is made for primarily aesthetic,
non-functional purposes. L.A. Gear v. Thom McAn,
988 F.2d at 1123-24, 25 USPQ2d at 1917 ("When there are
several ways to achieve the function of an article of
manufacture, the design of the article is more likely to
serve a primarily ornamental purpose."); In re Carletti,
51 C.C.P.A. 1094, 328 F.2d 1020, 1022, 140 USPQ 653, 654
(CCPA 1964) (determining whether the appearance is
"directed by" the use of the article).
As further stated in Carletti, id.: "[I]t has long been
settled that when a configuration is the result of functional
considerations only, the resulting design is not patentable as
an ornamental design for the simple reason that it is not
Appeal No. 2000-1905
Design Application 29/095,094
Although the Information Disclosure Statement was2
given Paper No. 2, it was not entered on the file wrapper
contents and, consequently, the first Office action was also
given Paper No. 2. The Examiner should have this clerical
problem corrected by, e.g., having the Information Disclosure
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'ornamental' ) was not created for the purpose of
ornamenting."
Analysis
Appellants argue that the equidistant spacing of the
groups of gripping knobs around the strap together with the
fact that they are grouped in a 3-by-3 pattern and the
pyramidal shape of the gripping knobs with rounded tops are
pure design features (Brief, Paper No. 9, p. 4). Appellants
filed a declaration (attached to Paper No. 5) by Robert
Jacoff, Vice President of the assignee, Great Neck Saw
Manufacturers, Inc. Mr. Jacoff states that the knob pattern,
spacing, and shape of the knobs give the design a distinctive
ornamental appearance and states that changes could be made
which would not affect the function, but would affect the
aesthetic appearance. Appellants further argue that the prior
patents cited by the Examiner together with those submitted by
Appellants in the Information Disclosure Statement (IDS)
(Paper No. 2 ) disclose numerous configurations of oil filter2
Appeal No. 2000-1905
Design Application 29/095,094
Statement renumbered as Paper No. 1½.
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wrenches and similar devices with gripping knobs, indicating
that there are many variations which perform the function but
have different appearance (Brief, p. 4).
The Examiner states (Examiner's Answer, Paper No. 10,
p. 3): "In order to overcome a rejection of the claim under
35 U.S.C. 171 as lacking in ornamentality, it is necessary
that the motivation of the inventor be the basis for the
evidence that the design was created with 'thought of
ornament.' In re Carletti, 140 USPQ 653, 655 (CCPA 1964)."
The Examiner states that the declaration by Mr. Jacoff "does
not convincingly establish knowledge of the ornamental intent
behind the creation of the design; however, to the extent that
the declaration be accepted, the mere description of pyramidal
gripping knobs and the symmetry of their placement does not
characterize these features as having sufficient effect on the
overall appearance to render the claimed design as primarily
ornamental" (Examiner's Answer, pp. 3-4).
The Examiner has failed to persuade us that the design is
directed by the use of the article, so as to be primarily
functional. Functional considerations do not demand only this
Appeal No. 2000-1905
Design Application 29/095,094
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particular design. It is particularly persuasive to us that
the prior art cited by the Examiner, and by Appellants in
their IDS, show many different structures of gripping
protrusions, which indicates that the choice of design is made
for primarily aesthetic, non-functional purposes. See
L.A. Gear, 988 F.2d at 1123, 25 USPQ2d at 1917 ("When there
are several ways to achieve the function of an article of
manufacture, the design of the article is more likely to serve
a primarily ornamental purpose."). The Examiner fails to
address this evidence. As to the question of subjective
intent, i.e., of whether Appellants created the design with
"thought of ornament," the fact that many other designs
existed for oil filter wrenches and similar articles is
sufficient evidence of intent to ornament by selection of the
pattern, spacing, and shape of the raised knobs.
Appeal No. 2000-1905
Design Application 29/095,094
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For the reasons discussed above, we conclude that the
Examiner erred in rejecting the claimed subject matter as
non-statutory. The rejection of the single claim is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 2000-1905
Design Application 29/095,094
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Joseph J. Previto, Esq.
1077 Northern Boulevard
Roslyn, NY 11576-1696