Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ARTHUR HANSEN
Appeal No. 88-1155
September 30, 1988
Application for Patent filed June 22, 1983, Serial No. D-506,828. Concrete Caisson Reinforcing Wire.
James E. Pittenger et al for Appellant
Primary Examiner--B.J. Bullock
Boler, Frankfort and Pate
This application is on appeal from the final rejection of the following claim:
--The ornamental design for a concrete caisson reinforcing wire, as shown and described.--
The references relied upon by the examiner as evidence of obviousness are:
German patent 2541809 March 24, 1977
Symbols, Signs, and Signets; E. Lehner, copyright 1950, page 114; cross symbol 666.
The claim stands rejected under 35 USC 103 as unpatentable over the German patent in view of the cross symbol 666. The examiner contends that it would have been obvious to modify one of the elongated loop-shaped concrete ties illustrated in Figure 1 of the German patent to arrive at the claimed design in view of the cross symbol 666.
The claim additionally stands rejected under 35 USC 171 as not meeting the requirements of ornamentality because the subject matter claimed is concealed in normal use and the result of purely functional considerations. This was a new ground of rejection set forth in the Answer.
After carefully considering the entire record, including the arguments presented by the appellant and the examiner in the Main Brief, Reply Brief, Answer and Supplemental Answer, we conclude that the rejection under 35 USC 103 should be reversed and the rejection under 35 USC 171 should be sustained.
The question with respect to the rejection under 35 USC 103 is whether it would have been obvious to the ordinary designer of subject matter of the type disclosed in appellant's application to modify the concrete tie disclosed in the German patent to arrive at the claimed design in view of cross symbol 666. In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). In order to support a holding that the claimed design would have been obvious, there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design. In re Rosen, 673 F.2d 388, 213 USPQ 347, 350 (CCPA 1982). A design claim may be rejected under 35 USC 103 on a combination of references where they are so related that the appearance of certain ornamental features in one would suggest application of those features to the other. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).
*2 As we understand the examiner's rejection under 35 USC 103, she proposes to modify one of the elongated loops formed by elements 2 and 3 of the German patent into the shape of a cross of the type shown in the secondary reference at 666. Basically we agree with appellant to the effect that there is not the slightest teaching or suggestion in the cited references that would provide motivation on the part of the ordinary designer of subject matter such as that here in issue to modify the concrete ties of the German patent in light of the shape of the 666 cross to arrive at the claimed design. In this regard, we note that the loops 2 and 3 of the German patent are associated with a plate or panel 1 with one of the loops on each side of the plate. In our view the concrete tie shown in the German reference is so far removed from the claimed design that it does not meet the requirements of a basic reference of the type as set forth in Rosen, supra. Thus, the question of whether it would have been obvious to modify the German patent in light of the cross symbol is moot. In any event, the only possible motivation for making the proposed combination flows from the impermissible use of the teachings in the application against the inventor. Thus, we conclude that the examiner has failed to make out a prima facie case of obviousness of the claimed design.
Turning to the rejection under 35 USC 171, we agree with the examiner's contention to the effect that the subject matter of the claimed design--a concrete caisson reinforcing wire--would be concealed in normal use and, therefore, is not proper subject matter for a design patent. In re Zahn, 617 F.2d 261, 269, 204 USPQ 988, 996 (CCPA 1980); In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Stevens, 173 F.2d 1015, 1016, 81 USPQ 362, 363 (CCPA 1949); Ex parte Fesco, 147 USPQ 74 (Bd.App.1965); Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079, 227 USPQ 724, 725 (D.Conn.1985); C & M Fiberglass Septic Tanks, Inc. v. T & N Fiberglass Mfg. Co., 214 USPQ 159, 160 (D.So.Car.1981). To the extent that Ex parte Bright, 121 USPQ 619 (Bd.App.1959) and Ex parte Wolfer, 121 USPQ 319 (Bd.App.1958), cited by appellant, may be deemed to be inconsistent with this holding, they are hereby overruled.
The rejection of the claim under 35 USC 103 is reversed and the rejection under 35 USC 171 is affirmed.
37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
James R. Boler
Charles E. Frankfort
William F. Pate, III