Ex parte LYNCH

Board of Patent Appeals and Interferences

Aug 25, 1998

29052205 (B.P.A.I. Aug. 25, 1998)

Application for design patent filed March 26, 1996.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT V. LYNCH
_____________
Appeal No. 98-2105
Design Application 29/052,2051
______________
HEARD: August 5, 1998
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and COHEN
and MEISTER, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of the following design claim under 35 U.S.C. § 103:
The ornamental design for an angled
shaft for a putter as shown and
described.
Appeal No. 98-2105
Application 29/052,205
See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982).2
2
The following references are relied upon by the examiner
as evidence of obviousness in support of his rejection under
§ 103:
Hyde 3,066,936 Dec. 4, 1962
Lombardo 5,409,220 Apr. 25, 1995
The appealed claim stands rejected under 35 U.S.C. § 103
as being unpatentable over Hyde in view of Lombardo. The examiner
considers Hyde to be a Rosen reference and takes the following2
position:
It would have been obvious to a designer
of ordinary skill in the art at the time the
invention was made to have modified the basic
shaft of Hyde by having a more acute angled
shaft as disclosed by Lombardo; to do so
would have resulted in an article
substantially similar in overall appearance
as appellant’s claimed design. [Answer, page
3].
In support of patentability, appellant argues that Hyde is
not a Rosen reference because it does not create the same basic
visual impression as appellant’s design. In addition, appellant
Appeal No. 98-2105
Application 29/052,205
3
contends in substance that Lombardo does not suggest the
examiner’s proposed modification of Hyde.
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we conclude that the rejection of the
appealed claim cannot be sustained.
The Hyde reference does not show any angled bend in the
putter shaft. Instead, this reference merely shows a gradually
curved bend of relatively large radius in an intermediate portion
of the putter shaft. In contrast, appellant’s putter shaft design
has a sharply angled bend lying between straight shaft portions
about midway between the ends of the putter shaft.
Nevertheless, even if it is assumed that the Hyde reference
satisfies the Rosen requirements, we cannot agree that the
teachings of the applied references would have suggested the
overall appearance of the claimed design as required in In re
Cho, 813 F.2d 378, 382, 1 USPQ2d 1662, 1663 (Fed. Cir. 1987).
Hyde obviously lacks a suggestion of the overall appearance of
appellant’s design because, as noted supra, it lacks an angled
Appeal No. 98-2105
Application 29/052,205
4
bend in the putter shaft. Lombardo, on the other hand, does show
an angled bend in the putter shaft, but this bend, rather than
being located about midway between the ends of the putter shaft,
lies near the lower end of the shaft adjacent to the putter head.
If anything, Lombardo suggests an angled bend but at a
location spaced substantially from the location of appellant’s
angled bend to provide a distinctively different appearance as
compared with appellant’s design. Furthermore, contrary to the
examiner’s findings, the midpoint of Hyde’s curved bend is not
located midway between the ends of the putter shaft. Instead, it
appears to be located substantially closer to the lower end of
the shaft so that even if the proposed substitution were made,
there still would be significant differences between the modified
Hyde design and appellant’s design.
At best, the combined teachings of the applied references
suggest only components of appellant’s design. However, absent a
suggestion of the overall appearance of appellant’s design, a
rejection under § 103 is inappropriate. Cho, 813 F.2d at 382, 1
USPQ2d at 1663-1664.
Appeal No. 98-2105
Application 29/052,205
444 F.2d 1168, 170 USPQ 285 (CCPA 1971).3
5
Furthermore, it appears that the examiner has improperly
treated this design case as if it were an application for a
mechanical utility patent, looking upon appellant’s design as a
?combination of old elements? and citing In re Antle , which3
involves a utility patent application. However, the issue here is
whether appellant’s claimed design would have been obvious from a
design standpoint, not from a utility standpoint. Cho, 813 F.2d
at 382, 1 USPQ2d at 1664.
In view of the foregoing, we cannot agree that the examiner
has made out a prima facie case of obviousness. His decision
rejecting the appealed claim is therefore reversed.
REVERSED
)
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
Appeal No. 98-2105
Application 29/052,205
6
)
) INTERFERENCES
)
JAMES M. MEISTER )
Administrative Patent Judge )
Philip J. Pollick
P.O. Box 141510
Columbus, OH 43214-6510