Ex parte DECURSU

Board of Patent Appeals and Interferences

Feb 19, 1998

29029284 (B.P.A.I. Feb. 19, 1998)

Application for a design patent filed October 3, 1994.1
1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte GIORGIO DECURSU
AND
ALBERTO BERTANI
_____________
Appeal No. 97-3411
Application 29/029,2841
______________
HEARD: February 3, 1998
_______________
Before HAIRSTON, STAAB, and WALTZ, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 97-3411
Application No. 29/029,284
2
DECISION ON APPEAL
This is an appeal from the final rejection of the
following design claim:
The ornamental design for a pull handle, as shown
and described.
According to appellants (Brief, page 2), the ornamental
design for the pull handle includes barrel-shaped circular legs
joined by a gently arcing gripping portion. The bottom of the
gripping portion is described as having a very slight arc, and
the width of the gripping portion is described as being uniform.
The references relied on by the examiner are:
Amerock pull handle 937-CW2, Amerock Hardware Catalog C-2094,
August 1984, page 18.
Pull handle HD9852, Forms + Surfaces Catalog 83, 1989, page 36.
The design claim on appeal stands rejected under 35 U.S.C.
§ 103 as obvious. As evidence of obviousness, the examiner
relies on the Amerock pull handle 937-CW2 in view of the Forms +
Surfaces pull handle HD9852. According to the examiner (Answer,
page 4):
The Amerock pull has a configuration which is
substantially identical to that of the claimed design
except for the peak under the gripping portion, the
inclusion of a floral pattern on the upper surface
which has slightly curved edges, and the shape of the
legs.
The Forms + Surfaces pull has a flat surface under
Appeal No. 97-3411
Application No. 29/029,284
A sample of the Amerock pull 937-CW2 is attached to the2
Examiner Interview Summary Record (paper number 12).
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the gripping portion, a plain upper surface of even
width, and round legs.
It would have been obvious to one of ordinary
skill in the art at the time the invention was made to
modify the Amerock pull by making the surface under the
gripping portion flat, the upper surface plain and of
even width as taught by the Forms + Surfaces pull as
well as rounding the legs.
This modification of the basic reference in light
of the secondary prior art is proper because the
applied references are so related that the appearance
of features shown in one would suggest the application
of those features to the other. In re Rosen, 213 USPQ
347 (CCPA 1982). . . .
Appellants note that “[b]ecause Amerock shows only one view
(which is not very clear), a sample of the product has been made
a part of the record of this application” (Brief, page 3). As a2
result of the lack of other views (e.g., a bottom view) of the
Amerock pull, appellants argue (Brief, page 5) that “[r]ejection
of a claim based on something that is not shown in a reference is
improper.” Based upon the single view of the Amerock 937-CW2
pull reference and the sample of the same, appellants conclude
(Brief, pages 4 and 5) that the gripping portion of the Amerock
pull has a substantially thick, triangular cross-section, is
wider at the ends than at the middle, and includes a short oblong
leg at each end thereof. Appellants argue (Brief, pages 4 and 5)
Appeal No. 97-3411
Application No. 29/029,284
In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA3
1982).
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that the claimed pull design shows a gripping portion of uniform
width with a nearly flat top, and a rounded bottom, that includes
a tall circular leg at each end thereof.
Appellants have not challenged the examiner’s conclusion
that the Amerock 937-CW2 pull is a Rosen reference (i.e., “a3
something in existence, the design characteristics of which are
basically the same as the claimed design”), but they have
questioned the propriety of modifying the Amerock pull design
with the Forms + Surfaces HD9852 pull design. Appellants argue
(Brief, pages 6 and 7) that:
F+S is cited for showing a plain upper surface and legs
that meet the bottom surface of the gripping portion at
right angles. There is no suggestion to modify Amerock
to include these features of F+S. Amerock is a
traditional design, as evidenced by the flower print,
soft curves, and porcelain finish. F+S is modern
design, as evidenced by the plain surfaces, sharp
corners, and stainless finish. Thus, there is no
suggestion to combine such different styles of handles
conveying different impressions. Moreover, the
triangular cross-section of the Amerock gripping
portion does not suggest using the same right angle
intersection as shown in F+S. As discussed above, even
when the modifications stated by the examiner are made,
they do not result in the present invention. The
examiner has not identified how the references suggest
combination to result in the present invention. Thus,
the examiner has not made a prima facie case of
obviousness.
Appeal No. 97-3411
Application No. 29/029,284
5
Appellants conclude that the obviousness rejection is improper
because the combined designs would have suggested only components
of the claimed design, and not its overall appearance (Brief,
page 6 and Reply Brief, page 3).
Reference is made to the briefs and the answers for further
detailed positions of the appellants and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection.
An initial inspection of the perspective view of the Amerock
937-CW2 pull design reveals a pull that is substantially similar
in appearance to the claimed design. In this perspective view
the top of the gripping surface appears to be of uniform width,
and slightly angled towards the ends of the pull. The legs of
the pull also appear to have a round shape. Without the benefit
of other views, we are not able to determine the bottom nor the
side appearances of the Amerock pull. In the absence of such
views, we will turn to the sample Amerock pull for a
determination of the appearance of the pull from other views.
Appeal No. 97-3411
Application No. 29/029,284
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After inspection of the sample pull, we agree with the
appellants that the Amerock pull has a substantially thick
triangular cross section because of the V-shaped area on the
bottom side of the gripping portion, and has a wider profile at
the ends than in the middle. We also agree with the appellants
that the Amerock pull has two short oblong legs.
We agree with the examiner that the top, side and
perspective views of the Forms + Surfaces drawing show a pull
with a flat upper surface, a flat lower surface, and rounded
corners. We do not, however, agree with the examiner (Answer,
page 5) that the limited views of the Forms + Surfaces pull show
round legs. The “circular tubes” referred to in the Forms +
Surfaces description could be limited to the clearly illustrated
rounded corners of the pull. In the side view, the other side of
each of the two legs could just as easily be straight edges.
Only a bottom view of the Forms + Surfaces pull would reveal
whether the legs are completely round.
As indicated supra, the examiner has reached the conclusion
that modification of the Amerock reference pull design in light
of the Forms + Surfaces reference pull design is proper because
“the appearance of features shown in one would suggest the
application of those features to the other” (Answer, page 4). We
Appeal No. 97-3411
Application No. 29/029,284
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disagree. The only thing the two reference designs have in
common is their end use. Any modification of the Amerock pull
design with the features of the Forms + Surfaces pull design to
arrive at the claimed design would only occur after observing the
overall design features of the claimed design. It is classic
hindsight to pick and choose only those features from the two
disparate designs that are needed to arrive at the claimed
design. Even if the Amerock pull is modified as directed by the
examiner (Answer, page 4), the final Amerock design would have a
flat upper surface, as opposed to an angled upper surface. The
formerly oblong legs of Amerock’s pull would have rounded outer
edges, but the inner edges of the legs would have an unknown
shape because the views of the Forms + Surfaces pull design do
not show enough views to determine the complete shape of the
legs.
In view of the foregoing, we agree with appellants that the
obviousness rejection is improper because the combined designs
would have suggested only components of the claimed design, and
not its overall appearance (Brief, page 6 and Reply Brief, page
3). The obviousness rejection is reversed.
Appeal No. 97-3411
Application No. 29/029,284
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DECISION
The decision of the examiner rejecting the claimed design
under 35 U.S.C. § 103 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 97-3411
Application No. 29/029,284
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PEARNE GORDON MCCOY & GRANGER
1200 Leader Building
Cleveland, OH 44114-1401