BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE WILLIAM T. COLE Appeal No. 90-1266

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 90-1266

November 1, 1990



 Application for Patent filed September 8, 1986, Serial No. 06/D-905,060. Shotgun Cartridge Wad Or Similar Article



Alan N. McCartney et al. for appellant



Primary Examiner--A. Hugo Word



Before Serota






Seidleck and W. Smith






W. Smith






 This is an appeal from the final rejection of the claim in this design application which reads as follows:



 The ornamental design for the shotgun cartridge wad as shown.



 The sole ground of rejection in the Examiner's Answer is that the subject matter of the claimed design does not meet the requirement of ornamentality of 35 USC § 171 since shotgun cartridge wads are concealed in normal use.



 Currently, this appeal is scheduled for hearing on November 5, 1990. Appellant filed a paper October 26, 1990, citing In re Webb, No. 90-1176 (Fed.Cir. October 11, 1990) in which this issue was considered. In Webb, the court construed the term "normal and intended use"D' to be:

   a period in the article's life, beginning after completion of manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the article. Although the period includes all commercial uses of the article prior to its ultimate destination, only the facts of specific cases will establish whether during that period the article's design can be observed in such a manner as to demonstrate its ornamentality.

The court also stated:

   [T]he PTO may properly conclude that an application provides no evidence that there is a period in the commercial life of a particular design when its ornamentality may be a matter of concern. However, in other cases, the applicant may be able to prove to the PTO that the article's design is a 'matter of concern' because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use."DD'



 As is apparent due to the recent issuance of the decision in Webb, the examiner has not considered the evidence of record in light of the court's decision. Included in the evidence of record is the declaration of Joseph Callahan in which Mr. Callahan asserts, inter alia, that shot shell wads are sold in clear bags so that their visual configuration is clearly visible and that aesthetic appearance of the product is a critical factor in the marketplace. Indeed, the examiner has not set forth his written consideration of the Callahan declaration on this record.



 In view of the decision in Webb, the rejection before us is reversed for the reasons set forth by the court in that decision in regard to the rejection before them. Accordingly, we vacate the hearing set for November 5, 1990, reverse the examiner's rejection under 35 USC § 171 of the claim in this design application, and remand this application to the examiner to review all the evidence of record in light of the decision in Webb.



  *2 This application, by virtue of its "special"D' status, requires an immediate action, M.P.E.P. 708.01(d). It is important that the Board be informed promptly of any action affecting the appeal in this case.









Saul I. Serota






James A. Seidleck






William F. Smith





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