Ex parte Kovach

Board of Patent Appeals and Interferences

Feb 26, 1998

29043747 (B.P.A.I. Feb. 26, 1998)

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(2) is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT L. KOVACH and
ROBERT A. KOVACH
_______________
Appeal No. 98-0064
Application 29/043,7471
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and KRASS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
the single design claim pending:
The ornamental design for a SPOILER WITH LEGS as shown and
described.
The examiner relies on the following reference:
J.C. Whitney & Co. (Whitney), Catalog No. 540J, p. 74, 81992,
Curved Wing Spoiler - Item C, Reference Nos. 86-5755A and
20-0544T.

1 Application for patent filed September 11, 1995.
Appeal No. 98-0064
Application No. 29/043,747
2
The sole claim on appeal, directed to the ornamental design
for a spoiler with legs, stands rejected under 35 U.S.C. ' 103 as
unpatentable over Whitney. The examiner contends that the
instant claimed invention is not patentably distinct over the
curved wing spoiler of Whitney.
Reference is made to the brief and answer for the respective
positions of appellants and the examiner.
OPINION
We reverse.
At the outset, we note that a rejection of a design claim
under 35 U.S.C. ' 103 requires that 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. In other words, the basic reference
design must look like the claimed design. See In re Harvey,
12 F.3d 1061, 1063; 29 USPQ2d 1206, 1208 (Fed. Cir. 1993) and In
re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).
Notwithstanding the examiner’s contention to the contrary,
there is simply no evidence of record that Whitney constitutes a
Rosen-type reference. The only differences recognized by the
examiner [bottom of page 3 to the top of page 4 of the answer]
are in the slight upward curving of the top of the spoiler in
instant Figure 7 and a suggestion of a curve on the bottom, but
the examiner considers these differences “so minor that the final
Appeal No. 98-0064
Application No. 29/043,747
3
effect does not affect the appearance of the design as a whole
and the impression that the design would make to the eye of a
designer of ordinary skill.”
The examiner has simply not made out a prima facie case of
obviousness. The claimed design covers all views shown in the
drawing. For example, Figure 6 shows a bottom view of the
spoiler wherein the corner edges of the rear of the spoiler
(bottom left and right in Figure 6) each have a larger radius
than the corner edges of the front of the spoiler (top left and
right in Figure 6). As appellants point out, from the bottom of
page 2 to the top of page 3 of the brief,2 the “underbelly and
the shoulder (top) of the instant invention do not at all
resemble the” Whitney reference. Also, “[n]one of the contours
in the instant invention are illustrated” by Whitney. Appellants
also note how difficult it is to view the reference.
Clearly, the single, small view the examiner points to in
Whitney is insufficient for any meaningful conclusions to be
reached regarding the overall design of the Whitney spoiler.
But, in any event, no bottom or side view of that spoiler is
shown. Thus, we do not know what the underbelly of the Whitney
spoiler looks like and we cannot tell what the specific contour
of the shoulder looks like in Whitney. Therefore, even when the

2 We note that appellants refer to the J.C. Whitney reference
repeatedly as the “J.C. Penney” reference.
Appeal No. 98-0064
Application No. 29/043,747
4
Whitney spoiler is viewed in the best light, we would need to
resort to speculation in order to find the instant claimed design
patentably indistinct thereover. From the limited view we have
of the Whitney spoiler, it does not appear to have the differing
contours of the instant claimed design and we will not speculate
that it does.
Contrary to the examiner’s position, we do not view these
differences between the instant claimed design and that shown by
Whitney to be de minimus. The examiner has provided us with no
cogent rationale as to why the overall effect of the Whitney
spoiler would have made the instant claimed design obvious
thereover.
The examiner’s decision is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Kenneth W. Hairston ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Errol A. Krass )
Administrative Patent Judge )
Appeal No. 98-0064
Application No. 29/043,747
5
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