Ex parte GENATOSSIO

Board of Patent Appeals and Interferences

Aug 26, 1998

29052369 (B.P.A.I. Aug. 26, 1998)

Filed March 28, 1996 (Attorney Docket No. 02103/301001).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journal and (2) is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS F. GENATOSSIO
____________
Appeal No. 98-2069
Application No. 29/052,3691
____________
HEARD: August 5, 1998
____________
Before HAIRSTON, STAAB, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of the single design claim pending in this design
application.
Appeal No. 98-2069
Application No. 29/052,369
2
We AFFIRM.
Appeal No. 98-2069
Application No. 29/052,369
3
BACKGROUND
Louis F. Genatossio (appellant) appeals from the
rejection of the following design claim:
The ornamental design for audio signal processing unit
substantially as shown and described.
On March 28, 1996, the appellant filed this design
application with a claim to: The ornamental design for audio
signal processing substantially as shown and described. On
November 20, 1996, the examiner's first Office action (Paper
No. 2) was mailed. In that action, the examiner rejected the
claim as being indefinite under 35 U.S.C. § 112, second
paragraph, because the use of the term "substantially"
therein. On February 25, 1997, the appellant filed a response
(Paper No. 3) requesting withdrawal of the 35 U.S.C. § 112,
second paragraph, rejection. Additionally, the appellant
amended the claim to read as follows: The ornamental design
for audio signal processing unit substantially as shown and
described. On May 21, 1997, the examiner's final Office
action (Paper No. 4) was mailed. No references were relied
upon by the examiner in rejecting the claim, the sole
Appeal No. 98-2069
Application No. 29/052,369
4
rejection of the design claim being based on the second
paragraph of 35 U.S.C. § 112.
The examiner’s statement of the rejection is as follows:
The claim is rejected under 35 U.S.C. 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the
subject matter which the applicant regards as the
invention.
The claim is indefinite because of the use of
the term "substantially" therein. Cancellation of
said term will overcome the rejection. Ex parte
Sussman, 8 USPQ2d 1443 (BPAI 1988), Ex parte Pappas,
23 USPQ2d 1636 (BPAI 1992) and 37 CFR 1.153. [first
Office action, page 2]
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the § 112
rejection, we make reference to the examiner's answer (Paper
No. 9, mailed January 15, 1998) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
brief (Paper No. 8, filed October 31, 1997) and reply brief
(Paper No. 10, filed March 20, 1998) for the appellant's
arguments thereagainst.
Appeal No. 98-2069
Application No. 29/052,369
5
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's drawings,
specification and claim and to the respective positions
articulated by the appellant and the examiner. As a
consequence of our review, we
Appeal No. 98-2069
Application No. 29/052,369
6
will sustain the examiner's rejection of the claim under
35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is primarily whether the claims meet
the threshold requirements of clarity and precision, not
whether more suitable language or modes of expression are
available. If the scope of the invention sought to be
patented cannot be determined from the language of the claims
Appeal No. 98-2069
Application No. 29/052,369
7
with a reasonable degree of certainty, a rejection of the
claims under 35 U.S.C. § 112, second paragraph, is
appropriate.
In order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question
whether the claim sets out and circumscribes a particular area
with a reasonable degree of precision and particularity. That
is, the examiner must provide a reasonable explanation as to
why the scope of protection provided by the claim is not
adequately set forth with a reasonable degree of certainty.
Assuming that sufficient reason for such doubt exists, a
rejection for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the
invention will be proper on that basis.
Once the examiner has established a reasonable basis to
question the clarity of the claimed invention, the burden
falls on the applicant to present persuasive arguments,
supported by suitable proofs where necessary, that the
designer of ordinary skill in the art would be able to
Appeal No. 98-2069
Application No. 29/052,369
8
ascertain the scope of the invention sought to be patented
using the disclosure as a guide.
Thus, the dispositive issue in this appeal is whether the
appellant's disclosure, considering the ordinary skill of the
designer in the art as of the date of the appellant's
application, would have aided a person of such skill in
determining the scope of the appellant's claim. The threshold
step in resolving this issue as set forth supra is to
determine whether a reasonable basis exists to question
whether the claim sets out and circumscribes a particular area
with a reasonable degree of precision and particularity.
With this as background, we analyze the specific
rejection under 35 U.S.C. § 112, second paragraph, made by the
examiner of the claim on appeal.
The claim terminology found objectionable by the
examiner, i.e., "substantially," is a term of degree,
inherently imprecise as to its exact meaning. When a word of
degree is used, such as the term "substantially" in the claim,
Appeal No. 98-2069
Application No. 29/052,369
See White v. Dunbar, 119 U.S. 47, 51-52 (1886) and2
Townsend Engineering Co. v. HiTec Co. Ltd., 829 F.2d 1086,
1089-91, 4 USPQ2d 1136, 1139-40 (Fed. Cir. 1987).
9
it is necessary to determine whether the disclosure provides
some standard for measuring that degree. See Seattle Box
Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as
the term of degree mentioned supra, may not be precise, does
not automatically render the claim indefinite under the second
paragraph of § 112. Seattle Box, supra. Nevertheless, the
need to cover what might constitute insignificant variations
of an invention does not amount to a license to resort to the
unbridled use of such terms without appropriate constraints to
guard against the potential use of such terms as the
proverbial nose of wax.2
In Seattle Box, the court set forth the following
requirements for terms of degree:
When a word of degree is used the district court
must determine whether the patent's specification
Appeal No. 98-2069
Application No. 29/052,369
See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 2243
USPQ 617 (Fed. Cir. 1985).
10
provides some standard for measuring that degree.
The trial court must decide, that is, whether one of
ordinary skill in the art would understand what is
claimed when the claim is read in light of the
specification.
In Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985)(quoting from
Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d
124, 136, 118 USPQ 122, 132 (2d Cir.), cert. denied, 358 U.S.
884, 119 USPQ 501 (1958)), the court added:
If the claims, read in light of the specifications
[sic], reasonably apprise those skilled in the art
both of the utilization and scope of the invention,
and if the language is as precise as the subject
matter permits, the courts can demand no more.
Indeed, one fundamental purpose of a claim is to define
the scope of protection and hence what the claim precludes3
others from doing. All things considered, because a patentee
has the right to exclude others from making, using and selling
the invention covered by a United States letters patent, the
public must be apprised of what the patent covers, so that
those who approach the area circumscribed by a claim of a
Appeal No. 98-2069
Application No. 29/052,369
11
patent may more readily and accurately determine the
boundaries of protection in evaluating the possibility of
infringement and dominance. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
Another fundamental purpose of a claim is to define the
scope of the claim. Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. §§ 102 and 103 begins with
a determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472
(Fed. Cir. 1988).
We appreciate that Seattle Box, Shatterproof Glass and
the other cases cited above involved utility applications
rather than design applications. Nevertheless, we think that
the court's underlying rationale applies regardless of whether
the claim in question appears in a utility application or a
design application. See Ex parte Pappas, 23 USPQ2d 1636, 1638
Appeal No. 98-2069
Application No. 29/052,369
12
(Bd. Pat. App. & Int. 1992) (merits panel of Board cites cases
involving utility applications in support of new § 112, second
paragraph, rejection of appealed design claim containing the
phrase "or similar structure").
In the present instance, the appellant's disclosure
consists of seven drawing figures illustrating a single
embodiment of an ornamental design for an audio signal
processing unit, and a specification containing a brief
narrative description of the actual article embodying the
design and a description of the relationship of the drawing
figures to one another. In the present case, we find no
standard or guideline whatsoever in the appellant's disclosure
to aid the designer of ordinary skill who designs audio signal
processing units in determining to what extent a particular
ornamental design for an audio signal processing unit may
depart from that which is disclosed by the appellant and yet
be regarded as "substantially as shown and described."
Furthermore, it is our determination that there are no
guidelines that would be implicit to the designer defining the
Appeal No. 98-2069
Application No. 29/052,369
13
term "substantially" as used in the claim under appeal that
would enable the designer of ordinary skill in the art to
ascertain what is meant by "substantially." There is little
evidence of record that the term "substantially" in a design
claim is a well accepted term having a meaning that is well
known to the designer of ordinary skill. The mere fact that
some design patents have included the term "substantially" in
the claim is of little value for the reasons expressed infra.
We believe that the designer of ordinary skill who
designs audio signal processing units would be unable to
determine to what extent a particular ornamental design for an
audio signal processing unit may depart from that which is
disclosed by the appellant and yet be regarded as
"substantially as shown and described." Absent such
guidelines, we are of the opinion that the designer of
ordinary skill would not be able to determine the metes and
bounds of the claimed invention with the precision required by
the second paragraph of 35 U.S.C. § 112. See In re Hammack,
supra.
Appeal No. 98-2069
Application No. 29/052,369
14
In light of the foregoing, we conclude that the examiner
did have a reasonable basis to question whether the claim sets
out and circumscribes a particular area with a reasonable
degree of precision and particularity. Thus, the burden
shifted to the appellant to present persuasive arguments,
supported by suitable proofs where necessary, that the
designer of ordinary skill in the art would be able to
ascertain the scope of the invention sought to be patented
using the disclosure as a guide. This the appellant has not
done for the reasons set forth infra. Accordingly, we sustain
the standing 35 U.S.C. § 112, second paragraph, rejection of
the appealed design claim.
Alternatively, we note the requirement of 37 CFR §
1.153(a) that the claim of a design patent "shall be in formal
terms to the ornamental design for the article (specifying
name) as shown, or as shown and described." The PTO's
rulemaking power,
35 U.S.C. § 6(a), authorizes the Commissioner to "establish
regulations, not inconsistent with law, for the conduct of
proceedings in the Patent and Trademark Office." Our
Appeal No. 98-2069
Application No. 29/052,369
This rulemaking authority is directed only to the4
conduct of proceedings in the PTO, it does not grant the
Commissioner the authority to issue substantive rules. See
Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 930, 18
USPQ2d 1677, 1686 (Fed. Cir. 1991).
15
reviewing court has long held that such regulations have the4
force and effect of law when not inconsistent with the
statutes. See Norton v. Curtiss, 433 F.2d 779, 791, 167 USPQ
532, 542 (CCPA 1970); Piel v. Falkner, 426 F.2d 412, 165 USPQ
708 (CCPA 1970); In re Rubinfield, 270 F.2d 391, 123 USPQ 210
(CCPA 1959), cert. denied, 362 U.S. 903, 124 USPQ 535 (1960);
Vandenberg v. Reynolds, 268 F.2d 744, 746, 122 USPQ 381, 382
(CCPA 1959). We are unable to find any clear conflict between
37 CFR § 1.153(a) and the applicable statutes. Title 35,
section 171 of the United States Code provides that "The
provisions of this title relating to patents for inventions
shall apply to patents for designs, except as otherwise
provided." While 35 U.S.C. § 112 states that "The
specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention," that
provision does not necessarily mean that every design
Appeal No. 98-2069
Application No. 29/052,369
In Ex parte Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Int.5
1988), a case relied upon by the examiner, a merits panel of
this Board, when faced with similar claim format, (1) noted in
a footnote that the inclusion of the word "substantially" in
the claim rendered it improper under the rule, and (2)
interpreted the claim as if the offending word was not
present. In the instant case, it is not immediately clear why
the examiner did not object to the claim format the appellants
16
applicant shall, as a matter of right, be entitled to present
a claim in whatever form the applicant desires. Accordingly,
we find that the requirement of 37 CFR § 1.153(a) that the
claim of a design patent "shall be in formal terms to the
ornamental design for the article (specifying name) as shown,
or as shown and described" is not inconsistent with the
statutes.
The requirement that the claim of a design patent "shall
be in formal terms to the ornamental design for the article
(specifying name) as shown, or as shown and described" became
effective on March 1, 1949 upon the original promulgation of
Rule 153, now 37 CFR § 1.153(a). The claim format the
appellant has chosen to use here does not comply with the
formal requirement of the rule because of the presence of the
word "substantially" in the claim. It is our opinion that5
Appeal No. 98-2069
Application No. 29/052,369
have chosen to employ for failing to comply with the "formal
terms" claim format required by 37 CFR § 1.153(a).
Under R. S. 4888, as amended, 35 U.S.C. § 33 (1949), it6
was required that the inventor "shall particularly point out
and distinctly claim the part, improvement, or combination
which he claims as his invention or discovery." This
provision was carried forward into § 112, Title 35, U. S. C.
(1952) with slight modification of the language. See In re
Schechter, 205 F.2d 185, 187, 98 USPQ 144, 147 (CCPA 1953).
17
this promulgation of Rule 153 was the PTO's interpretation of
how a design applicant must comply with the statutory
requirement to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention. 6
It has been consistently held for many years that it is the
appearance of a design as a whole which is controlling in
determining questions of patentability and infringement. See
Rubinfield 270 F.2d at 395, 123 USPQ at 214 and cases cited
therein. Additionally, as stated by the court in In re Mann,
861 F.2d 1581, 1582, 8 USPQ2d 2030, 2031 (Fed. Cir. 1988),
"[a] design claim has almost no scope. The claim at bar, as
in all design cases, is limited to what is shown in the
application drawings." Under such circumstances, we believe
that the inclusion of the word "substantially" in a design
claim creates uncertainty as to the actual scope of the design
Appeal No. 98-2069
Application No. 29/052,369
18
claim. This being the case, the appellant's insistence to
include the word "substantially" in their design claim in an
apparent attempt to circumvent the requirement of 37 CFR §
1.153(a) regarding the formal terms of a design claim only
serves to foster confusion as to what the claim is intended to
cover. This provides an additional reason for sustaining the
standing 35 U.S.C. § 112, second paragraph, rejection of the
appealed design claim.
We have, of course, considered all of the appellant's
arguments. However, we are not persuaded that the examiner
erred in rejecting the claim.
On page 3 of the brief and page 2 of the reply brief, the
appellant cites Dobson v. Hartford Carpet Co., 114 U.S. 439,
446 (1885) for the proposition that the use of the word
"substantially" in a design claim does not render the claim
indefinite under the second paragraph of 35 U.S.C. § 112.
Contrary to that which the appellant would apparently have us
believe, the Supreme Court in Dobson did not establish some
sort of per se rule to the effect that the use of
Appeal No. 98-2069
Application No. 29/052,369
We have reviewed both the brief for appellants and the7
brief for appellee to the Supreme Court. The issue of whether
or not the use of "substantially" is acceptable language in a
design claim was not mentioned in either brief.
19
"substantially" is acceptable language in a design claim in
all cases. Rather, the court held that "the patent is valid,
at least for purposes of this case" since the bill was taken
pro confesso, 114 U.S. at 446. While the Supreme Court then
went on to state that "[a]side from this, we see no good
objection to the form of the claim," such comment is dicta
especially since Dobson never objected to the use of
"substantially" in a design claim. 7
On pages 4-6 of the brief, the appellants state that

[t]here follows other decisions demonstrating that
the inclusion of the word "substantially" in claims to an
ornamental design does not interfere with courts or
litigants in determining that the design patent claim
with "substantially" "particularly points out and
distinctly claims what . . . [the inventor] regards as
his invention." 35 U.S.C. § 112.
In re Geiger, 165 U.S.P.Q. 572, 573 (C.C.P.A. 1970)
("The claim on appeal is of the form prescribed in design
patent applications, reciting: The ornamental design for
an automobile substantially as shown and described.")
(Footnote omitted.).
In re Fee, 158 U.S.P.Q. 277, 278 (C.C.P.A. 1968)
("The ornamental design for a lawn sprinkler
substantially as shown and described.").
Appeal No. 98-2069
Application No. 29/052,369
20
In re Levy, 135 U.S.P.Q. 447 (C.C.P.A. 1962) ("The
single claim refers to the drawing and claims the ink
cartridge 'substantially as shown.'").
In re Rubinfield, 123 U.S.P.Q. 210, 214 (C.C.P.A.
1959)("A single claim to 'the ornamental design for a
floor waxer substantially as shown' would afford exactly
the same degree of protection to appellant in the instant
case as would the claims involved in this appeal [also
including 'substantially']. Id . 211.").
Super Prod. Corp. v. Metal France Aquariuza Co., 117
U.S.P.Q. 17, 20 (D.N.J. 1958) ("The claim of the patent
hereinabove described as 'I claim: The ornamental design
for an aquarium filter, substantially as shown.'").
R. Wallace & Sons Mfg. Co. v. Ellmore Silver Co., 85
U.S.P.Q. 479 (D. Conn. 1950) ("Its single claim is 'The
ornamental design for a spoon or other article of
flatware, substantially as shown.'").
Smith v. Dental Prod. Co., 60 U.S.P.Q. 260, 272 (7th
Cir. 1944), cert. denied, 322 U.S. 743 (1944) ("The
patentee claims: 'The ornamental design for an ampule
substantially as shown.'").
Viehmann et al. v. D.F.H. Novelty Furniture Co., 41
U.S.P.Q. 468, 469 (E.D.N.Y. 1939) ("'The ornamental
design for a kitchen table or the like, substantially as
shown and described.'").
We have reviewed the eight cases cited above by the
appellant but do not find any to be controlling for the
following reasons. The issue decided in Geiger was whether
the appellants in their design application were claiming the
"same invention" claimed in their design patent. The Court in
Geiger did not decide the issue of whether the use of
"substantially" in a design claim renders the claim indefinite
Appeal No. 98-2069
Application No. 29/052,369
We note that the Court's dicta that the claim on appeal8
is of the form prescribed in design patent applications is not
controlling and is inaccurate since Rule 153(a) did not permit
the use of the word "substantially" in a design claim.
21
under the second paragraph of 35 U.S.C. § 112. The issues8
decided in Fee were whether the appellants' design claim was
properly rejected under double patenting and that the
application lacks a sufficient disclosure. The Court in Fee
did not decide the issue of whether the use of "substantially"
in a design claim renders the claim indefinite under the
second paragraph of 35 U.S.C. § 112. The issue decided in
Levy was whether the appellant's design claim was obvious over
the prior art. The Court in Levy did not decide the issue of
whether the use of "substantially" in a design claim renders
the claim indefinite under the second paragraph of
35 U.S.C. § 112. The issues decided in Rubinfield were
whether the appellant could present multiple embodiments and
multiple claims in a design application. The Court in
Rubinfield did not decide the issue of whether the use of
"substantially" in a design claim renders the claim indefinite
under the second paragraph of 35 U.S.C. § 112. The issues
decided in Super Products were whether the appellants' design
Appeal No. 98-2069
Application No. 29/052,369
22
patent was valid over three prior patents and whether the
patent was infringed. The Court in Super Products did not
decide the issue of whether the use of "substantially" in a
design claim renders the claim indefinite under the second
paragraph of 35 U.S.C. § 112. The issues decided in Wallace
were whether the appellants' design patent was valid over the
prior art and whether the patent was infringed. The Court in
Wallace did not decide the issue of whether the use of
"substantially" in a design claim renders the claim indefinite
under the second paragraph of 35 U.S.C. § 112. The design
issue decided in Smith was that the appellants' design patent
was invalid for lack of invention. The Court in Smith did not
decide the issue of whether the use of "substantially" in a
design claim renders the claim indefinite under the second
paragraph of 35 U.S.C. § 112. The issue decided in Viehmann
was whether the appellants' design patent was valid over the
prior art. The Court in Viehmann did not decide the issue of
whether the use of "substantially" in a design claim renders
the claim indefinite under the second paragraph of 35 U.S.C. §
112. Thus, the eight cases cited by the appellant are not
controlling and do not support the appellant's position
Appeal No. 98-2069
Application No. 29/052,369
In fact, our research has not uncovered any final court9
or Board decision in which the issue of how inclusion of the
word "substantially" in a design claim impacts upon the
requirement of 35 U.S.C. § 112, second paragraph, was decided.
This includes the cases cited by the examiner to support the
rejection. Thus, there is no binding precedent for this panel
of the Board to follow. See Ex parte Holt, 19 USPQ2d 1211,
1214 (Bd. Pat. App. & Int. 1991).
23
because none of them addresses the issue of how inclusion of
the word "substantially" in a design claim impacts upon the
requirement of 35 U.S.C.
§ 112, second paragraph, that an inventor must particularly
point out and distinctly claim what he regards as his
invention. 9
On page 8 of the brief, the appellant criticizes the
examiner's reliance on Ex parte Sussman, 8 USPQ2d 1443 (Bd.
Pat. App. & Int. 1988) in support of the rejection. According
to the appellant, the footnote of Sussman relied upon by the
examiner is dicta and inconsistent with "the settled law of
the Supreme Court of the United States, the predecessor court
of the Federal Circuit Court of Appeals and other courts that
the use of 'substantially' is proper in the single claim to an
ornamental design in a design patent." As is apparent from
Appeal No. 98-2069
Application No. 29/052,369
Our research indicates that Manual of Patent Examining10
Procedure (MPEP) § 1504.04 "Considerations Under 35 U.S.C.
112" was revised in January of 1995 when original Edition 6 of
the MPEP was published. That revision of the MPEP amended §
1504.04, in pertinent part, to read as follows:
Defects in [design] claim language give rise to
a rejection of the claim under the second paragraph
of
35 U.S.C. 112[.] Typical examples include:
1. Use of phrases in the claim such as
"substantially as shown," "or similar article," "or
the like," or equivalent terminology.
This circumstance may serve to partially explain the numerous
design patents which have issued in the past with the word
"substantially" appearing in the claim and why the examiner
has rejected the appellants' claim.
24
our discussion above, our conclusion that the examiner did not
err in rejecting the appealed claim under 35 U.S.C. § 112,
second paragraph, does not depend on the Sussman decision.
On pages 6-8 of the brief and pages 3-4 of the reply
brief, the appellant specifically calls to our attention
numerous design patents and utility patents that issued with10
the word "substantially" appearing in the claim, for the
purpose of showing that the appellant's use of the word
"substantially" is consistent with settled practice in the
PTO. We recognize that design patents and utility patents
Appeal No. 98-2069
Application No. 29/052,369
25
have issued with the word "substantially" appearing in the
claim. However, the appellant has not cited any authority
which holds that the issuance of a patent has any significant
precedential value. In evaluating compliance with 35 U.S.C.
§§ 112 and 171, each design application must be evaluated on
the record developed in the Patent and Trademark Office (PTO).
See In re Gyurik, 596 F. 2d 1012, 1018 n.15, 201 USPQ 552, 558
n.15 (CCPA 1979) and In re Phillips, 315 F. 2d 943, 137 USPQ
369 (CCPA 1963). To the extent any error has been made in the
rejection or issuance of claims in a particular application,
the PTO and its examiners are not bound to repeat that error
in subsequent applications. Accord, In re Donaldson, 16 F.3d
1189, 1193, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) ("The fact
that the PTO may have failed to adhere to a statutory mandate
over an extended period of time does not justify its
continuing to do so."); In re Cooper, 254 F.2d 611, 617, 117
USPQ 396, 401 (CCPA), cert. denied, 358 U.S. 840, 119 USPQ 501
(1958) (decision in a trademark application in accordance with
law is not governed by possibly erroneous past decisions of
the Patent Office); In re Zahn, 617 F.2d 261, 267, 204 USPQ
988, 995 (CCPA 1980) ("[W]e are not saying the issuance of one
Appeal No. 98-2069
Application No. 29/052,369
26
patent is a precedent of much moment."); Ex parte Tayama, 24
USPQ2d 1614, 1618 (Bd. Pat. App. & Int. 1992) (prior issuance
of patents for designs referred to as icons has no significant
precedential value in evaluating compliance with 35 U.S.C. §
171). Compliance with §§ 112 and 171 requires analysis of the
statutes and interpretation of case law. Mere reference to
possibly contrary decisions of an examiner in other
applications, applications in which the issue raised here was
not even addressed, are not helpful in this analysis.
Furthermore, it is debatable whether or not this data
establishes that for which it is cited. In any event, the
appellant does not contend, and it is not apparent to us, that
these design patents and utility patents constitute evidence
establishing that a designer of ordinary skill in the relevant
art would understand the metes and bounds of the appellant's
design claim when read in light of the appellant's
specification.
On page 6 of the brief and pages 1-2 of the reply brief,
the appellant cites Gorham Mfg. Co. v. White, 81 U.S. (14
Wall) 511, 528 (1872) for the proposition that "the settled
Appeal No. 98-2069
Application No. 29/052,369
This argument would be equivalent to an argument that11
"substantially" in a utility claim would never be indefinite
since the term "substantially" is used by the courts in
applying the doctrine of equivalents in an infringement suit.
A finding of infringement under the doctrine of equivalents
requires proof of insubstantial differences between the
claimed and accused products. A patentee may prove this
insubstantial change by showing that the accused device
performs substantially the same function, in substantially the
same way, to produce substantially the same result as the
claimed invention. See Hilton Davis Chem. Co. v.
Warner-Jenkinson Co., 62 F.3d 1512, 1516-21, 35 USPQ2d 1641,
1644-47 (Fed. Cir. 1995) (en banc), rev'd on other grounds,
117 S. Ct. 1040, 41 USPQ2d 1865 (1997) and Graver Tank & Mfg.
Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 85 USPQ 328,
330 (1950).
We note that in an infringement action, both parties12
may present evidence on the issue of whether the two designs
are substantially the same.
27
law established by the Supreme Court has been infringement
occurs when 'two designs are substantially the same.'" The
appellant argues that since "substantially" was used by the
Supreme Court in defining design patent infringement, surely
it is proper for the appellant to use "substantially" in
claiming the subject matter they regard as the invention. We
are unpersuaded by this argument. It is not apparent to us11
how the presence of the word "substantially" in the Gorham
test for infringement of a design patent mandates that it is12
proper, within the meaning of 35 U.S.C. § 112, second
Appeal No. 98-2069
Application No. 29/052,369
28
paragraph, for the appellant's design claim to include the
word "substantially" in the absence of some standard or
guideline in the specification apprising the designer of
ordinary skill just what that term encompasses. If we were to
accept the appellant's argument, infringement in designs would
occur not only when a competing design is substantially the
same as a patented design, but also when a competing design is
substantially the same as an undisclosed and indeterminant
variation of a patented design.
Furthermore, we are not persuaded by the position that
the presence of "substantially" in the present design claim
merely makes explicit what is implicit in every design claim
for the purpose of defining the boundaries of protection in
infringement. While the word "substantially" is used in the
test for infringement of a design patent, it is not obvious to
us how this implicitly enlarges the scope of the claim in
determining whether a claim is patentable over the prior art
under 35 U.S.C. §§ 102 and 103. As stated in In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970), "[a]ll
words in a claim must be considered in judging the
Appeal No. 98-2069
Application No. 29/052,369
29
patentability of that claim against the prior art." Thus, we
view the scope of the appellant's design claim "The ornamental
design for audio signal processing unit substantially as shown
and described" to be of a different scope than the following
claim: "The ornamental design for audio signal processing unit
as shown and described." It is our inability to determine the
actual extent of this difference in scope that renders the
appellant's design claim indefinite under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which the appellant
regards as the invention.
CONCLUSION
To summarize, the decision of the examiner to reject the
claim under 35 U.S.C. § 112, second paragraph is affirmed.
Appeal No. 98-2069
Application No. 29/052,369
30
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-2069
Application No. 29/052,369
31
CHARLES HIEKEN
FISH & RICHARDSON
225 FRANKLIN ST.
BOSTON, MA 02110-2804
APPEAL NO. 98-2069 - JUDGE NASE
APPLICATION NO. 29/052,369
APJ NASE
APJ STAAB
APJ HAIRSTON
DECISION: AFFIRMED
Prepared By: Gloria
Henderson
DRAFT TYPED: 05 Aug 98
FINAL TYPED:
3 MEMBER CONF. HEARD: 05 Aug 98