BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE JOHN D. WEBB JR., ROY Y. HORI AND GEORGE E. SIMPSON

Board of Patent Appeals and Interferences

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


Appeal No. 93-0584

September 23, 1993

 Application for Patent filed February 19, 1986, Serial No. 06/833,470. Grooved Femoral Hip Stem Prosthesis.

Todd A. Dawson, for appellants. [FN1]

Primary Examiner--Stella Reid

Before Lynch, Hairston and Krass





 This is an appeal from the rejection of the sole claim in this design application. This is the second appeal in this application. In the first appeal, Appeal No. 89-2649, the claim stood rejected as being unpatentable under 35 U.S.C. § 171 as being directed to nonstatutory subject matter. The examiner held that since the design is totally hidden in its ultimate use, it is not the proper subject matter for a design patent. The Board, in a decision rendered November 30, 1989, affirmed the rejection. An appeal to the Court of Appeals for the Federal Circuit was taken, and in its decision of October 11, 1990, In re Webb, 916 F.2d 1553, 16 USPQ2d 1433 (Fed.Cir.1990), the Court reversed the rejection and remanded the application holding that the Board had created "-- a per se rule that a design for an article which will not be visible in the final use for which the article was created is nonstatutory subject matter even if the design is observed at some stage of the article's commercial life." The Court further held that the normal and intended use of an article also includes 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." The Court commented that "-- 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."

 On remand, the examiner again rejected the claim under 35 U.S.C. § 171 as being nonstatutory. [FN2] The examiner now maintains that the claim is nonstatutory because it defines an article which is functional in use. However, the examiner invited the appellant to come forward with further evidence which would establish ornamentality during the period between its manufacture and its ultimate use in accordance with the Court's remand. No such evidence was submitted.

 The claim at issue reads as follows:

 The ornamental design for a grooved femoral hip stem prosthesis as shown and described.

 The examiner relies on the following evidence to establish the functionality of appellant's design:

Webb, Jr. et al. (Webb)  4,714,470          Dec. 22, 1987

                                   (filed Feb. 19, 1986)

*2 Zimmer, Inc. brochure (Zimmer), MACROFIT HIP PROSTHESIS, 1986.

 Rather than reiterate the arguments of appellant and the examiner, reference is made to the brief and answer for the respective details thereof.


 The rejection of the sole claim at issue, as being directed to nonstatutory subject matter under 35 U.S.C. § 171, is affirmed. We have carefully considered the complete record and find ourselves in agreement with the examiner. We sustain the rejection for the reasons well-stated by the examiner as amplified below. In addition, pursuant to 37 CFR 1.196(b), we enter an alternative rejection of the sole design claim as being nonstatutory under § 171 in that the device remains subject to the hidden in end use requirement because appellant has not shown ornamentality between the manufacture of the device and its ultimate hidden end use.

 The position of the examiner is that the subject matter of this design (a hip stem prosthesis) is primarily functional in use in view of references to Webb and Zimmer. We agree with the examiner that the device is functional, and since the appellant has not presented evidence of ornamentality during the period between the manufacture of the device and its ultimate hidden end use, the rejection is clearly correct.

 Appellant argues that the examiner is estopped from resurrecting a rejection of the claim for lack of ornamentality based on a functionality argument which was originally raised and dropped in the prior prosecution in response to a traversal and argument by the appellant. Appellant further argues that the examiner has erred in rejecting the instant design as being functional since the design could be formed with alternative appearances while retaining the same function. Finally, appellant argues that the examiner has improperly required appellant to submit evidence to support his position that the device is not functional.

 Appellant's argument that the examiner is estopped from raising a functionality argument is not persuasive. Appellant's argument is based on the following quote from the Court's decision:

   The Examiner's final rejection did not clearly specify functionality as a ground for rejection. We therefore read the Examiner's decision to have accepted Webb's argument, namely that the article in question did not warrant rejection on functionality grounds.

   (But this quotation has been taken out of context.

Thus, the Court continues):

   Since a rejection for functionality was not a part of the decision appealed to the Board by Webb, that ground cannot be incorporated into the Board's decision by operation of 37 CFR § 1.196(a). Consequently, the issue of functionality is not before us. "[W]e can express no opinion because we are a court of review and do not pass on issues not raised...." In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

  *3 Accordingly, the Court did not rule on the issue of functionality, but it also did not rule out the possibility of raising that issue in subsequent prosecution. To the contrary, the clear import of the Court's holding is simply that the issue of functionality was not before it, but that the PTO on remand was to consider all issues concerning ornamentality during the period between the manufacture of appellant's hip prosthesis and its ultimate hidden end use. Surely the issue of functionality is an issue which directly affects ornamentality. In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964). We cannot believe that the Court intended the PTO to ignore such an issue. This was what happened in the previous appeal and the Court chided the Solicitor of the PTO for trying to raise the issue on appeal to the Court. Therefore, we hold that the PTO, in response to the remand, would be remiss if it did not consider all issues affecting ornamentality during the period of time between the manufacture of the article and its implant.

 Moreover, the Courts have consistently held that the only effect of a prior decision by the Court is to govern further proceedings in the case. There is nothing unusual about an examiner changing his viewpoint as to the patentability of a claim as the prosecution progresses, and, so long as the rules of the PTO are duly complied with, appellant has no ground for complaint because of the change in view. Thus, the PTO has the jurisdiction and authority to reopen prosecution and to reject the claim here at issue on a new rationale. See, In re Ruschig, 343 F.2d 965, 145 USPQ 274 (CCPA 1965). Also see, In re Clemens, 622 F.2d 1029, 206 USPQ 289 (CCPA 1980); In re Oelrich, 656 F.2d 578, 212 USPQ 323 (CCPA 1981); In re Waldbaum, [FN3] 559 F.2d 611, 194 USPQ 465 (CCPA 1977); In re Arkley, 455 F.2d 586, 172 USPQ 524 (CCPA 1972); In re Fisher, 448 F.2d 1406, 171 USPQ 292 (CCPA 1971); In re Johnsen, 359 F.2d 905, 149 USPQ 630 (CCPA 1966); In re Citron, 326 F.2d 418, 140 USPQ 220 (CCPA 1964); and Jeffery Mfg. Co. v. Kingsland, 179 F.2d 35, 83 USPQ 494 (D.C.Cir.1949). Thus, we do not agree with appellant's argument that the remand was solely to determine the novelty and obviousness of the design with respect to prior art, or that the examiner's functionality rationale is inconsistent with the Court's prior decision, and therefore, appellant's estoppel argument is not persuasive. We also do not agree that the examiner is deliberately taking a piecemeal approach to examination. Sometimes these situations occur, and they are regrettable, but this is not a sufficient reason to reverse a proper rejection. As the Court stated in Ruschig, supra, "[t]he life of a patent solicitor has always been a hard one."

  *4 The position of the examiner on the functionality issue is spelled out in detail in the Answer. Beginning on page 4 through page 9 of the Answer, the examiner has pointed out how the features of appellant's design are functional in light of the Webb utility patent (filed on the same date as this application) and the Zimmer brochure (a brochure which describes appellant's device). Moreover, the examiner has found that the design as a whole is solely directed to a functional purpose. An article which is primarily functional cannot be the subject of a design patent under § 171. This is entirely in accord with the basic directive from the Courts in this area. See for example, In re Carletti, supra.

 The examiner's rationale is also in complete agreement with Power Control Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed.Cir.1986). In that case, a patent attorney named Wickersham submitted an affidavit which made an analysis which was directly comparable to the examiner's analysis herein, and of which the Court fully approved. Accord, Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 5 USPQ2d 1625 (Fed.Cir.1988).

 As pointed out by the Court in Power Control, in view of the strong and clear showing of functionality made in the Wickersham affidavit, it was incumbent on the patentee to come forth with countervailing evidence. Here, a similar burden should be placed on appellant, but appellant has not rebutted a single point raised by the examiner. Rather than showing how the examiner is wrong, appellant cites Pensa Inc. v. L.A. Gear Cal., Inc., 748 F.Supp. 1100, 4 USPQ2d 1016 (C.D.Cal.1987), aff'd. sub. nom., Avia Group v. L.A. Gear Cal., Inc., 853 F.2d 1557, 7 USPQ2d 1549 (Fed.Cir.1988), for the proposition that if the functional aspect of the design can be accomplished in many other ways, that fact is enough to destroy the examiner's position that the design is primarily functional. But appellant does not show how the features of his design can be accomplished in many other ways. To the contrary, appellant simply makes the bald allegation that this is so. Moreover, appellant cannot rely on the numerous patents submitted in his prior art statements to support this argument.

 In the prior art statements submitted by appellant during the course of the prosecution of this application, numerous hip stem prosthesis patents (foreign, domestic, utility and design) as well as manufacturer's brochures have been presented. All of the hip stem prosthesis have the same general outside profile as appellant's, but that is about as far as any meaningful comparison can be made. None of these submissions disclose or suggest the same specific groove attachment means disclosed in appellant's utility patent or the Zimmer brochure. The various prosthesis depicted in the prior art submissions include; screw-type attachment means; smooth attachment surfaces; roughened attachment surfaces; rasp-like attachment surfaces; knob-like (circular and other shaped) attachment protrusions; circular and other shaped indentations as attachment surfaces; and vertical grooves, horizontal grooves, or grooves at an angle with respect to the length of the stem, as the attachment means. But none of these attachment means disclose or suggest accurate grooves which are formed of portions of concentric circles as depicted in Figure 7 of appellant's utility patent (Webb, col. 3, lines 39-41). Appellant's concentric circular grooves have a vertical, an angled, as well as a horizontal component, which prevents the stem from moving relative to the bone in any direction (Webb, col. 4, line 50 through col. 5, line 33). None of the attachment means in the references cited in the prior art statements have this particular combined function. Moreover, the profile of appellant's grooves (Figure 8 of Webb and the Figure shown in the left-hand column of page 3 of Zimmer) are shaped to provide a locked attachment to the bone after insertion and the bone heals, which also facilitates removal should that be necessary (Webb, col. 3, line 42 through col. 4, line 5). No comparable groove profile having these multi-functional features is disclosed or suggested by any of the references cited in the prior art statement, alone or in combination. Accordingly, we find that these functional purposes cannot be accomplished by any of the other references, much less in many other ways as argued by appellant. Therefore, appellant's design cannot be compared with the shoe designs involved in the Pensa decision.

  *5 Moreover, attorney argument is no substitute for facts. Appellant's response is thus just like the response in Power Control, supra, which the Court held inadequate because it made "-- no attempt to answer the specific and detailed discussion in Mr Wickersham's affidavit of the functional nature of the various features of the '580 design he discusses." Thus, contrary to appellant, the Power Control decision is directly comparable to the facts herein and that decision has not been effectively overruled by Pensa as argued by appellant.

 Finally, when appellant's design is considered as a whole, it is primarily functional because the article in its entirety is directed toward its ultimate function as a hip stem prosthesis. As with the design under consideration in In re Carletti, supra, in view of the dearth of evidence to the contrary, we find that appellant's device was not created for the purpose of ornamenting. To the contrary, it was apparently done without a thought of ornamentality. The fact that it may have a sleek or modernistic appearance is totally the result of its functional end use, and not because the inventors set forth to create an ornamental design. Moreover, even though the examiner invited appellant to come forth with further evidence that those viewing the article in the time period between its manufacture and its ultimate disappearance as a replacement for someone's hip stem would view the device for its ornamental features, not a single iota of such evidence has been forthcoming. Accordingly, for all of these reasons, the rejection is sustained.

 Finally appellant argues that it was improper for the examiner to require the appellant to submit further evidence to establish ornamentality during the period from manufacture to ultimate implantation. Appellant maintains that the prior art statements provide this evidence because appellant's design is unique and nonobvious in light of these prior art statements. Appellant also maintains that the requirement is improper because the examiner is thus imposing a use requirement comparable to a commercial success showing which is improper. We do not agree with appellant.

 In the first place, the prior art statements do not supply evidence of ornamentality during the period between manufacture and the ultimate hidden end use for the reasons set forth above. Moreover, the examiner has not imposed a use requirement on appellant, but has simply responded to the Court's remand. As pointed out by the Court, "-- 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." The Court then makes reference to other commercial designs such as colorful vitamin pills or burial caskets which have designs which are clearly intended to be noticed during the process of sale and are equally clearly intended to be completely hidden from view in the final use. The clear implication of these statements by the Court is that on remand appellant was to be put to his proofs to establish ornamentality during the period between manufacture and the ultimate hidden end use of his prosthesis. Accordingly, none of appellant's arguments are persuasive, and the rejection is sustained.

  *6 Pursuant to 37 CFR 1.196(b), we enter the following additional rejection of the sole design claim at issue.

 The claim is rejected under 35 U.S.C. § 171 as being directed to an object which is hidden in its ultimate end use, and therefore, not the proper subject matter for a design patent. As pointed out by the Court in its decision, "[i]t is possible, as in Stevens (In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949)), that although an article may be sold as a replacement item, its appearance might not be of any concern to the purchaser during the process of sale--[and] [i]n such circumstances, the 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." Therefore, we conclude that this application was remanded for the purpose of providing appellant an opportunity to present such evidence of ornamentality during the period between manufacture and implant, and therefore, the examiner's requirement for such additional evidence of ornamentality is a reasonable response to the Court's remand. However, since appellant has chosen not to submit any further evidence, we hold that there is no evidence during the period of commercial life where ornamentality is a matter of concern to those viewing the device. Accordingly, a hidden in use rejection of this claim under § 171 is also appropriate.

 We acknowledge that the Court found that there was ample evidence that the features of the device were displayed in advertisements and in displays at trade shows. The Court held that this evidence was disregarded by the Board in its prior decision because the Board held that doctors should select implants solely for their functional characteristics, not their design. However, this evidence was not disregarded by the Board in its prior decision. To the contrary, it was not seen how appellant's promotion of his device at trade shows or by means of other advertisements could prove ornamentality. Moreover, as pointed out above, appellant's device may have a sleek, modern appearance, but the appearance of the device has been dictated by its functional characteristics not by its ornamentality and appellant has still not proven otherwise. Accordingly, we hold that the hidden in use rejection is still applicable and should be sustained.

 We have carefully considered all the arguments advanced by appellant and the examiner. We hold that the subject matter of the disclosed application is not proper subject matter under 35 U.S.C. § 171. Accordingly, the decision of the examiner is affirmed. In addition, we have entered a new ground of rejection under § 171 based on a hidden in end use rationale.

 Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).

  *7 With respect to the new rejection under 37 CFR 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 U.S.C. 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.

 If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.

 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).

 Effective August 20, 1989, 37 CFR 1.196(b) has been amended to provide that a new ground of rejection pursuant to the rule is not considered final for the purpose of judicial review under 35 U.S.C. 141 or 145.

 Failure by appellants to timely request reconsideration by the Board or to timely seek prosecution before the examiner with respect to the new rejection as provided for by 37 CFR 1.196(b) will result in the cancellation of all the claims subject to the new rejection.

AFFIRMED--37 CFR 1.196(b)


Thomas E. Lynch


Kenneth W. Hairston


Errol A. Krass


FN1. Hereafter appellant.

FN2. This appeal was taken in response to the non-final action taken by the examiner in response to the remand. However, since the claim in this case has been twice rejected, the appeal is properly before us in accordance with 35 U.S.C. § 134.

FN3. The rejection in this case under § 171 is the design equivalent of a rejection under § 101. See, in re Finch, 535 F.2d 70, 190 USPQ 64 (CCPA 1976). Thus, the decision in Waldbaum is closely comparable to appellant's situation in that a first rejection of the claims at issue as being nonstatutory under § 101 was reversed in a first appeal to the Court, and on return to the PTO, a second rejection as being nonstatutory under § 101 was made, but under a different rationale, and a second appeal was taken to the Court. The Court clearly did not find that the PTO was estopped from making the second rejection since the rejection was affirmed.

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