Ex parte Strougo

Board of Patent Appeals and Interferences

Mar 3, 1999

29045336 (B.P.A.I. Mar. 3, 1999)

Application for patent filed October 17, 1995.1
1
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not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALICE STROUGO
__________
Appeal No. 98-1906
Application D29/045,3361
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT and STAAB, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of the following design claim:
The ornamental design for an UNDERGARMENT as shown
and described.
Appeal No. 98-1906
Application D29/045,336
At this juncture, the description of the drawing figures2
appearing in the specification does not correspond to the
newly submitted and approved drawings. Upon return to this
application to the examiner’s jurisdiction, the examiner
should see to it that this deficiency is corrected.
2
By way of background, this application was originally
filed with seventeen (17) drawing figures depicting several
patentably
distinct embodiments of the ornamental design. In response to
a restriction requirement (Paper No. 2), appellant elected
(Paper No. 3) to prosecute the embodiment represented by
original figures 1, 2, 2a, 3, 4, 15 and 16 in this
application. Subsequently, new drawings comprising seven (7)
drawing figures corresponding, respectively, to original
figures 1, 2, 2a, 3, 4, 15 and 16 were submitted as an
attachment to the reply brief (Paper No. 10) and approved for
entry by the examiner (Paper No. 13). Accordingly, any
reference in this opinion to appellant’s drawing figures is
with respect to the new drawings attached to appellant’s reply
brief.2
As seen in the application drawing figures, appellant’s
Appeal No. 98-1906
Application D29/045,336
3
invention is directed to the ornamental design for a woman’s
panty or brief having, inter alia, a pentagonal shaped crotch
piece (fig. 3) and a vertical back seam arranged such that,
when the panty or brief is viewed from the back (see, for
example, fig. 2), only a small pointed end of the crotch piece
is visible beneath the vertical back seam.
The single reference of record relied upon by the
examiner in support of a rejection under 35 U.S.C. § 103 is:
Milberg 2,651,048 Sept. 8,
1953
The claim stands rejected under 35 U.S.C. § 103 as being
unpatentable over Milberg.
The examiner's rationale for the rejection is found on
pages 3 and 4 of the first office action (Paper No. 4) and
reads as follows:
7. The overall appearance of [the] claimed design
is substantially disclosed by Milberg Figures 1 and
2[], except that the front crotch seam is slightly
rounded and the rear pointed end is slightly taller
than in [the] claimed design.
Appeal No. 98-1906
Application D29/045,336
4
8. The overall appearance would have been obvious
to one of ordinary skill in the art at the time the
invention was made in view of Milberg. That is, the
claimed design fails to present a distinctive
appearance over the reference to warrant
patentability. The slight differences cited above
are considered minute. They do not change the
overall appearance of the design and thus do not
render the claim patentable thereover.
9. It is Examiner’s position that the claimed
design and the referenced article would be
considered by one of ordinary capability who designs
articles of this type to be mere manifestations of
the same design, rather than characteristically
different designs.
Appellant argues in the main and reply briefs that the
difference in appearance of the claimed design as compared to
Milberg brought about by the change in location of the
juncture of the crotch to the vertical back seam is not
minute, but instead results in a new and patentably distinct
ornamental design. Appellant also relies on the declaration
of Maria Hudson (attachment to Paper No. 5) in support of the
patentability of the present invention.
Appeal No. 98-1906
Application D29/045,336
5
Opinion
From a cursory review of appellant’s drawings, it is
clear that the illustrated design is rather plain in
appearance. One of the predominate visual features of the
design is the vertical back seam that extends almost the
entire extent of the backside of the undergarment and joins
the pointed end of the crotch close to the bottom. The
resulting appearance when viewed from the back is one of large
left and right panels that predominate over the relatively
small triangular shaped section of the crotch visible from the
back. Turning now to Milberg’s figure 2, we see that the
vertical back seam 14 joins to the pointed end of the crotch
at a location 15 in the middle of the garment. The resulting
appearance is one where a relatively large section of the
crotch
is visible such that left and right panels on either side of
the vertical back seam do not predominate over the triangular
shaped section of the crotch to the same extent as in the
claimed design. This being the case, the examiner’s
Appeal No. 98-1906
Application D29/045,336
The case law cited by the examiner on page 5 of the3
answer for the proposition that minute changes are normally
held to be obvious is noted. In that we do not consider the
location of the junction of the vertical back seam and crotch
of Milberg to be a minute or inconsequential change relative
to appellant’s design, these citations are inapposite.
6
conclusion that the location of Milberg’s joint 15 is merely a
slight difference that does not change the overall appearance
of the design such that the claimed design and the reference
design would be considered by one of ordinary capability who
designs articles of this type as mere manifestations of the
same design is not well taken in the absence of some evidence
to support the examiner’s position. In that no other3
reference evidence has been cited by the examiner to support
this position, the examiner has failed to provide a sufficient
factual basis to support a conclusion of obviousness. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
The decision of the examiner is reversed.
Appeal No. 98-1906
Application D29/045,336
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REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 98-1906
Application D29/045,336
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