Ex Parte Wyers

Board of Patent Appeals and Interferences

Jul 20, 2009

29192232 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILLIP W. WYERS
____________

Appeal 2009-010242
Application 29/192,232
Technology Center 2900
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Decided:1 July 20, 2009
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Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
BIBHU R. MOHANTY, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-010242
Application 29/192,232

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STATEMENT OF THE CASE
Philip W. Wyers (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting the sole claim in this application. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is to an ornamental design for a
locking rod device. Figure 1, reproduced below, is illustrative of the subject
matter on appeal.

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THE REJECTION
The Appellants seek review of the Examiner’s rejection of the claim
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Des.
428,795 to Wyers (issued Aug. 1, 2000) and U.S. Patent 5,682,775 to Baber
(issued Nov. 4, 1997).

ISSUE
The Examiner found that Wyers discloses a locking device that is
substantially the same in appearance as the claimed design except for
Wyers’s “gripped knurling portion with flush ends.” Ans. 3. The Examiner
found that Baber discloses a similar lock having a bolt with plain knurling
and a raised shoulder on both ends of the lock. Id. The Examiner concluded
it would have been obvious to modify the gripped knurling portions of the
Wyers lock with that of a plain and raised shoulder of Baber to “result in an
article quite similar in overall appearance [to] the claimed design.” Id.
The Appellant contends that Baber does not disclose a cylinder that is
raised relative to the adjacent portions on the distal ends of the lock, and thus
even if the prior art designs were combined, the combination would not
result in the claimed design. Br. 12-14.
The issue presented by this appeal is:
Has the Appellant established that the Examiner erred in finding that
one having ordinary skill in the art would have been led to modify the lock
of Wyers with the cylinders of Baber to result in a lock having a cylinder
with raised portions on either end?
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Application 29/192,232

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The distal ends of the Appellant’s claimed invention are comprised
of three adjacent geometric shapes: (1) a frustoconical shape with
its largest cross-sectional dimension located farthest from the distal
tip (shape 1), (2) adjacent to a plain surface cylinder (shape 2),
(3) which is adjacent to a frustoconical shape with its largest cross
sectional dimension located closest to the distal tip (shape 3).
2. These shapes are labeled in Appellant’s Figure 3, reproduced
below:

Figure 3 shows a side view of the claimed ornamental design for a
locking rod device, with three shapes of one of the distal ends of
the device annotated.
3. As shown in Appellant’s Figures 1 and 2, reproduced below, the
plain surface cylinder (shape 2) is raised relative to each of the
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adjacent frustoconical shapes (shapes 1 and 3) such that a shoulder
is present at both ends of the plain surface cylinder (shape 2).

Figures 1 and 2 show perspective views of the claimed ornamental
design for a locking rod device, with the locking head to the left
and to the right, respectively, and with the raised shoulders on the
cylinder shapes annotated.
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4. Baber shows a lock-bolt 15 having a finger grippable portion 16
and a conical opposite leading end 17. The grippable portion 16
has a waisted portion 20, and end 17 has a shoulder 22. Baber,
col. 2, ll. 21-41.
5. As shown in Figure 2 of Baber, reproduced below, a plain surface
cylinder is located on grippable portion 16.

Figure 2 of Baber shows a cut-away view of a lock with a hand-
slideable bolt.
6. As shown in Figure 4 of Baber, reproduced below, the top end of
the plain surface cylinder of grippable portion 16 is beveled
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inwardly to meet the knurled portion directly above it, and the
bottom end of the plain surface cylinder of grippable portion 16 is
flush with waisted portion 20 below it.

Figure 4 is a vertical cross-section of the lock of Baber.
7. As shown in Figure 5 of Baber, reproduced below, the end 17 of
Baber has a plain surface cylinder with a shoulder 22 on the top
where end 17 abuts bolt 15. The cylinder is flush with the conical
end portion below it.
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Figure 5 shows a further cross-section view of the lock of Baber.

PRINCIPLES OF LAW
The central inquiry in analyzing an ornamental design for obviousness
is whether the design would have been obvious to “a designer of ordinary
skill who designs articles of the type involved.” In re Nalbandian, 661 F.2d
1214, 1216 (CCPA 1981). That inquiry focuses on a consideration of the
overall appearance, the visual effect of the design as a whole. In re Rosen,
673 F.2d 388, 390 (CCPA 1982).
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In order for a design to be unpatentable because of obviousness, there
must first be a basic design reference in the prior art, “a something in
existence, the design characteristics of which are basically the same as the
claimed design.” In re Rosen, 673 F.2d at 391; see In re Harvey, 12 F.3d
1061, 1063 (Fed. Cir. 1993). “If the basic reference alone does not render
the claimed design unpatentable, design elements from other references in
the prior art can be considered in determining whether the claimed design
would have been obvious to one of skill in the art.” In re Borden, 90 F.3d
1570, 1574 (Fed. Cir. 1996). When a Section 103 rejection is based on a
combination of references, “the long-standing test for the proper
combination of references has been ‘whether they are so related that the
appearance of certain ornamental features in one would suggest the
application of those features to the other.’” Rosen, 673 F.2d at 391 (quoting
In re Glavas, 230 F.2d 447, 450 (CCPA 1956)). If the combined teachings
of the applied references would have suggested only components of the
claimed design, but not its overall appearance, a conclusion of obviousness
under Section 103 is inappropriate. In re Cho, 813 F.2d 378, 382 (Fed. Cir.
1987).

ANALYSIS
The Examiner found that Wyers discloses a lock with cylindrical
portions on its distal ends that are flush with the distal tips. Ans. 5. The
Examiner relied on Baber to modify the surface of the cylindrical portions of
the Wyers lock. Ans. 7. The Examiner found that Baber discloses a locking
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bolt having a plain and raised cylinder to the lock and that the designer
skilled in the art of lock design would have been motivated to provide a
slightly raised configuration to the Wyers cylindrical portion as suggested by
Baber. Ans. 7.
The Appellant’s claimed design calls for distal ends having three
adjacent geometric shapes, where the center shape is a plain surface cylinder
that is raised relative to each of the adjacent surfaces to form a shoulder on
each end of the plain surface cylinder (Facts 1-3). Baber’s lock-bolt has a
plain surface cylinder located on a top grippable portion 16 (Facts 4, 5). The
cylinder has an inwardly-beveled surface on a top end of the cylinder and a
flush surface at the bottom end on the cylinder (Fact 6). Baber’s lock-bolt
also has a plain surface cylinder on the bottom end 17 of the lock-bolt
(Fact 7). This plain surface cylinder has a shoulder 22 on its top end where
it abuts bolt 15 and a flush surface at the bottom end where it abuts the
conical end portion below it (Fact 8). Neither of the plain surface cylinders
of Baber has a shoulder on each end of the cylinder. Thus, even if one were
to modify the cylindrical portion of the lock of Wyers with the either of the
plain surface cylinders of Baber, the combination would not result in a plain
surface cylinder that is raised relative to each of the adjacent surfaces to
form a shoulder on each end of the plain surface cylinder as claimed. As
such, we agree with the Appellant that the Examiner erred in rejecting the
claim as unpatentable over Wyers and Baber.

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CONCLUSION
The Appellant has established that the Examiner erred in finding that
one having ordinary skill in the art would have been led to modify the lock
of Wyers with the cylinders of Baber to result in a lock having a cylinder
with raised portions on either end.

DECISION
The decision of the Examiner to reject claim 1 is REVERSED.

REVERSED

Vsh

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