Ex parte Souris

Board of Patent Appeals and Interferences

Jul 26, 1999

29062011 (B.P.A.I. Jul. 26, 1999)

Application for patent filed November 5, 1996. According to1
appellant, this application is a continuation of Application 29/035,965,
filed March 10, 1995 (abandoned).
1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MARIA SOURIS
______________
Appeal No. 99-1010
Application 29/062,0111
_______________
ON BRIEF
_______________
Before THOMAS, STAAB, and OWENS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal from the examiner's
final rejection of the only claim pending:
The ornamental design of a hanging flower pot as
shown and described.
Appeal No. 99-1010
Application 29/062,011
2
The examiner has relied upon the following reference:
Gardner, The Glass of Frederick Carder, Crown Publishers,
Inc., New York, “Plate XXIII, B, Mandarin yellow Group”
(copyright 1971)[hereinafter Carder)
The claim stands rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Carder
alone.
We refer to the brief and the answer for the respective
positions of the appellant and the examiner.
OPINION
“In determining the patentability of a design, it is the
overall appearance, the visual effect as a whole of the
design, which must be taken into consideration.” See In re
Rosen,
673 F.2d 388, 390, 213 USPQ 347, 349 (CCPA 1982). Where the
inquiry is to be made under 35 U.S.C. § 103, the proper
standard is whether the design would have been obvious to a
designer of ordinary skill who designs articles of the type
involved. See
Appeal No. 99-1010
Application 29/062,011
3
In re Nalbandian, 661 F.2d 1214, 1217, 211 USPQ 782, 785 (CCPA
1981). Furthermore, as a starting point for a § 103
rejection, there must be a reference, a “something in
existence,” the design characteristics of which are basically
the same as the claimed design:
Thus there must be a reference, a
something in existence, the design
characteristics of which are basically the
same as the claimed design in order to
support a holding of obviousness. 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.
Rosen at 673 F.2d 391, 213 USPQ 350.
We reverse the outstanding rejection of the pending
design claim on appeal because the examiner's position is
flawed in several major respects.
According to one line of reasoning, the examiner appears
to give no patentable weight to or effectively reads out of
the claimed invention the four holes around the neck portion
and the opening in the bottom of the claimed hanging flower
Appeal No. 99-1010
Application 29/062,011
4
pot since these features are characterized as being functional
within
35 U.S.C. § 171. Inasmuch as there is no outstanding
rejection before us of the design claim on appeal on
functionality grounds, the examiner's reasoning is misplaced.
Moreover, the examiner's reasoning as to this improper
approach does not assert that the design as a whole was
primarily functional.
As to these same two aspects of the claimed design, the
examiner admits that the Carder vase does not teach or show
either of them. At the bottom of page 3 of the answer, the
examiner states that “with only a single perspective view of
the Carder vase to rely upon, the exact shape of the vase
cannot be determined as could be done with additional
elevational or sectional views.” Similarly, the examiner
admits at the top of page 4 that “Carder does not disclose the
four small circular openings that are equally spaced around
the upper portion of the neck, nor does it disclose an opening
in the base of the vase.” On the basis of these admissions,
and in view of the fact that no additional prior art has been
Appeal No. 99-1010
Application 29/062,011
5
relied upon, we are constrained to reverse the outstanding
rejection under 35 U.S.C. § 103.
Although we would tend to agree with the examiner's view
that the four holes in the neck portion may be characterized
as de minimus in context of the overall design as a whole when
taken in light of the similar neck portion in Carder, the
examiner's recognition that the base portion of the claimed
hanging flower pot is not taught or suggested at all in the
prior art cannot be rationalized away. At page 6 of the
answer the examiner asserts that this opening in the base
portion of the claimed hanging flower pot would have been
obvious because “this is a typical circular hole in the base
of a flower pot, standard in the art
of flower containers.” This approach is also fatal to the
examiner's position. According to a utility application
standard for obviousness, we observe that the examiner's
rationale may have merit. However, in a design application
context such general design concepts are inappropriate. The
examiner's evidentiary void can not be filled by a
conceptualized approach. We have no indication, that is, no
Appeal No. 99-1010
Application 29/062,011
6
evidence before us as to the shape or size or configuration or
whatever of such a concep-tualized, known in the art circular
hole for flower pots.
Such an approach has been highly disfavored in accordance with
the court's reasoning in In re Harvey, 12 F.3d 1061, 1063, 29
USPQ2d 1206, 1208 (Fed. Cir. 1993).
As a matter of law and practice and procedure, the
examiner's rejection cannot be sustained. Therefore, the
decision of the examiner rejecting the design claim on appeal
under 35 U.S.C. § 103 is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
Daniel P. Burke
Appeal No. 99-1010
Application 29/062,011
7
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