Ex Parte Schaller

Board of Patent Appeals and Interferences

Jun 2, 2008

29174064 (B.P.A.I. Jun. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK HOWARD SCHALLER
____________

Appeal 2008-2270
Application 29/174,064
Technology Center 2900
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Decided: June 2, 2008
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Before BRADLEY R. GARRIS, JENNIFER D. BAHR, and HOWARD B.
BLANKENSHIP, Administrative Patent Judges.

GARRIS, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting the design claim in the above identified application. 1 We
have jurisdiction under 35 U.S.C. § 6.

1 Appellant also requests review of the Examiner’s objection to the title of
the design (Amended Appeal Brief filed August 26, 2006 (Br.) 4-11). We
will not consider or further comment upon this request since it relates to a
petitionable, rather than appealable, matter. See the Manual of Patent
Appeal 2008-2270
Application 29/174,064

We REVERSE.

The design claim reads as follows:
The ornamental design for a Pattern of Letters for an Article as shown
and described.

The design is adequately represented by Figure 1 of Appellant’s
drawing which is reproduced below:

Figure 1 depicts the claimed design as applied to a shirt.

The claim on appeal is rejected under 35 U.S.C. § 171 “as being
directed to non-statutory subject matter in that it lacks ornamentality” (Ans.
4).

Examining Procedure (MPEP) § 1503.01 (Revision 5, August 2006), § 1201
(Revision 3, August 2005), and § 1002.02(c) (Revision 2, May 2004).
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Appeal 2008-2270
Application 29/174,064

It is the Examiner’s fundamental position that the Appellant’s claimed
design is functional, rather than ornamental, and therefore non-statutory
subject matter under 35 U.S.C. § 171 (Ans. 4-9).
We do not agree.

OPINION
It 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. In re Carletti, 328 F.2d 1020, 1022 (CCPA 1964).
Stated differently, a design is determined to be functional and therefore
unpatentable when “the appearance of the claimed design is ‘dictated by’ the
use or purpose of the article”. L.A. Gear Inc., v. Thom McAn Shoe Co., 988
F.2d 1117, 1123 (Fed. Cir. 1993). Such a determination ultimately rests on
an analysis of the overall appearance of the design. PHG Technologies, LLC
v. St. John Co., 469 F.3d 1361, 1366 (Fed. Cir. 2006). The considerations
for assessing whether the overall appearance of a design was dictated by
functional considerations include inter alia: whether the design represents
the best design; whether alternative designs would achieve the function in
question; and whether there are any elements in the design or an overall
appearance clearly not dictated by function. Id, 469 F.3d at 1366-67.
An assessment of these considerations leads to a determination that
Appellant’s claimed design is not dictated by the function or purpose of the
design or the article ornamented thereby. See L.A. Gear, 988 F.2d at 1123.
We begin our assessment by acknowledging (as did Appellant) the
Examiner’s point that the design on Appeal performs a function, namely, it
is a local accent pronunciation aid.
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Appeal 2008-2270
Application 29/174,064

The Best Design For Providing The Function
Appellant correctly argues that the claimed design is not the best
design for providing the above noted function (Br. 25-26). As expressed by
Appellant, “the alternate design (hă’văd) is functionally superior to the
claimed design because the breve diacritical symbols above the vowels
indicate that the symbols for the letters ‘A’ should be pronounced as a short
‘A’, and enclosing the symbols within parentheses simulates the appearance
of pronunciation aid in a dictionary” (id). Significantly, the Examiner does
not rebut this argument.
Alternative Designs For Achieving The Function
Similarly, Appellant correctly points out that the local accent
pronunciation aid function also is achieved by two alternative designs which
are HAHVAHD and (hă’văd) (Br. 25). This is significant because, when
there are several ways to achieve the function in question, the design is more
likely to serve a primarily ornamental purpose. PGH Technologies, 469
F.3d at 1366. Again, the Examiner offers no specific rebuttal concerning
this matter.
Elements Clearly Not Dictated By Function
Finally, the Examiner concedes that the claimed design contains
elements which are clearly not dictated by function such as font, character
spacing, and uppercase choices (Ans. paragraph bridging 7-8). This
conceded fact further supports a determination that the claimed design is not
“the result of functional considerations only”. Carletti, 328 F.2d at 1022.

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Appeal 2008-2270
Application 29/174,064

Summary
The foregoing considerations individually evince that the design on
appeal was not dictated by functional considerations. Moreover, these
considerations cumulatively outweigh the fact that Appellant’s design
performs the function of a local accent pronunciation aid. In this regard, we
emphasize that, contrary to the Examiner’s apparent belief, a functional or
utilitarian purpose alone is inadequate to defeat patentability under § 171.
This is because a design is unpatentable only when “the appearance of the
claimed design is ‘dictated by’ the use or purpose of the article”. L.A. Gear,
988 F.2d at 1123.
For these reasons, we cannot sustain the Examiner’s §171 rejection of
the design claim on appeal.

The decision of the Examiner is reversed.
REVERSED

tc

FRANK H. SCHALLER
24 AVON CIRCLE
NEEDHAM, MA 02494

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