Ex parte Wolff

Board of Patent Appeals and Interferences

Apr 17, 1998

07685563 (B.P.A.I. Apr. 17, 1998)

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(2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DAVID A. WOLFF
_______________
Appeal No. 96-3648
Application 07/685,5631
_______________
HEARD: APR. 7, 1998
_______________
Before KRASS, STAAB, Administrative Patent Judges, and MCKELVEY,
Senior Administrative Patent Judge
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This design application is on appeal from the final
rejection of the only claim pending.
The subject matter of the invention is the design for a golf
ball marker which has a generally crescent shape.
A prior decision was rendered (Paper No. 15-October 31,
1994) wherein a rejection of the claimed subject matter under

1 Application for patent filed April 12, 1991. According to
appellant, this application is a continuation of Application No.
07/541,336, filed June 21, 1990, now abandoned.
Appeal No. 96-3648
Application No. 07/685,563
2
35 U.S.C. ' 103 was reversed. The examiner now cites new prior
art, U.S. Patent No. 3,850,434 to Ockenfels against the claim
under 35 U.S.C. ' 102(b).
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
We reverse.
In order to establish an anticipation, under 35 U.S.C.
' 102, of a claimed design, the examiner must demonstrate that a
prior art reference describes subject matter which is identical
in all material aspects as the claimed design.
Accordingly, we look to the identity of appearances or
sameness between the game board design of Ockenfels and the golf
ball marker design of the instant invention in order to determine
the appropriateness of the examiner’s rejection under 35 U.S.C.
' 102.
While both sides argue the difference or de minimus nature
between the curves of the crescent designs of both Ockenfels and
the instant invention, we need not reach that issue since the two
designs are not identical in all material aspects, in the sense
of 35 U.S.C. ' 102, for other reasons.
The instant claimed invention is a three-dimensional design
for a golf ball marker having a crescent shape, in top view, as
shown in Figure 1, and a relatively thin height, or thickness, in
Appeal No. 96-3648
Application No. 07/685,563
3
the side view, as shown in Figure 2. The game board of
Ockenfels, albeit crescent-shaped, describes no specific
discernible thickness. The examiner does not dispute that
Ockenfels shows only a single view of the game board but argues
that “it has long been accepted in the art to describe the
thickness of a game board as being conventional with no visual
disclosure” [principal answer-page 4]. The examiner also employs
a dictionary definition of “board” to contend that it means a
sheet of relatively thin material.
We do not gainsay that a game board usually has a relatively
thin “thickness” and that most “conventional” game boards may
well be relatively thin. However, the fact that most game boards
are relatively thin does not lead to the conclusion that all game
boards are inherently so. The examiner does not, and cannot,
claim that all game boards are inherently relatively thin.
Accordingly, while it may be that Ockenfels’ game board is
relatively thin, there is no certainty that it is. That lack of
certainty can only lead to a conclusion that Ockenfels’ crescent-
shaped game board anticipates the instant claimed design under
35 U.S.C. ' 102 if we engage in unwarranted speculation derived
from a knowledge of appellant’s invention. This, of course, is
improper in an analysis of novelty under 35 U.S.C. ' 102.
Since the claimed design is not described in the single
Appeal No. 96-3648
Application No. 07/685,563
4
applied reference, a rejection of the claimed design under
35 U.S.C. ' 102 over Ockenfels cannot lie.
The examiner’s decision rejecting the design claim under
35 U.S.C. ' 102 based on Ockenfels is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Fred E. McKelvey, Senior )
Administrative Patent Judge )
Appeal No. 96-3648
Application No. 07/685,563
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