Ex parte Fujisawa

Board of Patent Appeals and Interferences

Feb 17, 1998

07855945 (B.P.A.I. Feb. 17, 1998)

Application for patent filed March 23, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HIROTOSHI FUJISAWA

_____________
Appeal No. 95-3852
Application 07/855,9451
______________
HEARD: February 4, 1998
_______________
Before THOMAS, JOHN D. SMITH and McQUADE, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of the following design claim:
Appeal No. 95-3852
Application 07/885,945
The supplemental examiner’s answer indicates the examiner2
has withdrawn a provisional obviousness-type double patenting
rejection set forth in the initial answer with respect to co-
pending application Serial No. 07/855,948, filed March 23, 1992,
the subject of previous Appeal No. 95-3046 decided on March 14,
1997. The examiner withdrew this rejection due to appellant’s
submission of a terminal disclaimer.
2
The ornamental design for a SHUTTER FOR AN OPTICAL DISC
CARTRIDGE as shown and described.
The examiner has relied upon the following reference:
Shiba et al. (Shiba) 5,195,084 Mar. 16, 1993
(filed May 14, 1991)
The design claim stands rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Shiba alone. 2
We refer to the briefs and the answers for the respective
positions of the appellant and the examiner.
OPINION
Having considered the obviousness issue raised in this
appeal in light of the teachings of the applied prior art and in
light of the examiner’s remarks and appellant’s arguments, it is
our conclusion that the examiner’s rejection of the present
design claim must be reversed.
“In determining the patentability of a design, it is the
overall appearance, the visual effect as a whole of the design,
which must be taken into consideration.” See In re Rosen, 673
F.2d 388, 390, 213 USPQ 347, 349 (CCPA 1982). Where the inquiry
Appeal No. 95-3852
Application 07/885,945
3
is to be made under 35 U.S.C. § 103, the proper standard is
whether the design would have been obvious to a designer of
ordinary skill who designs articles of the type involved. See
In re Nalbandian, 661 F.2d 1214, 1217, 211 USPQ 782, 785 (CCPA
1981). Furthermore, as a starting point for a § 103 rejection,
there must be a reference, a “something in existence,” the design
characteristics of which are basically the same as the claimed
design:
Thus there must be a reference, a
something in existence, the design
characteristics of which are basically the
same as the claimed design in order to
support a holding of obviousness. Such a
reference is necessary whether the holding is
based on the basic reference alone or on the
basic reference in view of modifications
suggested by secondary references.
Rosen at 673 F.2d 391, 213 USPQ 350.
The examiner’s position is based upon the view that elements
26 and 30 comprise the claimed shutter for an optical disc
cartridge. Page 5 of the answer indicates that element 28, which
is one side of two sides (26 and 28) of the overall shutter 22 in
Shiba’s various figures was not a part of the rejection. This
view is well taken by the examiner inasmuch as column 3, lines 64
through 68 of Shiba indicates that the shutter assembly may be
Appeal No. 95-3852
Application 07/885,945
4
considered optionally designed as one-sided. As such, we
consider that it would have been obvious to the artisan as to
which side to choose to include or eliminate. In light of this
teaching, we disagree with appellant’s characterization that
Shiba is not a Rosen-type reference since the resulting design is
a something in existence, the design characteristics of which are
basically the same as the claimed design.
This conclusion, however, does not lead us to further
conclude that the design claim on appeal would have been obvious
to the artisan within 35 U.S.C. § 103. Shiba’s showing of a
single-sided shutter does indicate that the bottom portion of the
remaining side of the shutter does gently rise in an angle,
reorients parallel to the main portion of the shutter side, and
finishes with the rounded ends (Figures 7 and 8) in the manner
claimed.
Significant to us is that the appealed claim has a T-shaped
crosspiece whereas the teachings and showings in Shiba indicate
that a corresponding crosspiece member is essentially L-shaped.
Compare figures 3, 5 and 7 of the disclosed/claimed design with
figures 7 and 8 of Shiba. Shiba’s figure 8 shows shutter slide
Appeal No. 95-3852
Application 07/885,945
5
30 with a single horizontally extended region on it opposite the
engagement hole 36. This extended region also has a vertical
projection at its end farthermost from the body of shutter slide
30, which projection is normal to the upper shutter blade 26 in
Figure 8.
This extended region of the shutter slide 30/crosspiece in
Shiba including its L-shaped nature leads us to conclude that the
claimed T-shaped design of the corresponding crosspiece with its
two extended regions beyond the width of the body of the shutter
per se embodies a patentably distinct design. The longer portion
of the crosspiece of the claimed design is also of a different,
non- obvious configuration than the single extended portion of
Shiba’s crosspiece. What the examiner regards as minute details
or slight variations in the connecting element or crosspiece
(answer pages 2-3) lead us to conclude that the design claim on
appeal presents a patentably distinct overall appearance over
that shown in Shiba.
Appeal No. 95-3852
Application 07/885,945
6
In view of the foregoing, the decision of the examiner
rejecting the design claim on appeal under 35 U.S.C. § 103 is
reversed.
REVERSED

)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-3852
Application 07/885,945
7
Jay H. Maioli, Esq.
COOPER & DUNHAM
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New York, NY 10036