Ex parte Nagashima

Board of Patent Appeals and Interferences

May 12, 1998

29030090 (B.P.A.I. May. 12, 1998)

Application for design patent filed October 20, 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(2) is not binding precedent of the Board.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 JOJI NAGASHIMA

_____________
Appeal No. 98-0068
Application 29/030,0901
______________
HEARD: May 5, 1998
_______________
Before COHEN, FLEMING and HANLON, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 98-0068
Application 29/030,090
The description of Figure 2 in the specification is2
inconsistent with the portrayal of the automobile in Figure 2.
The showing in Figure 2 is not a right side perspective view, but
simply a right side view. The description in the brief (page 2)
correctly describes Figure 2 as a right side view.
2
DECISION ON APPEAL
This is an appeal from the final rejection of the
following design claim:
The ornamental design for an AUTOMOBILE as
shown and described.
As described in the specification (page 2), Figures 1
through 7 correspond to perspective right side, perspective right
side, rear, perspective left side, front, rear, and top views,2
respectively, of the claimed automobile design.
As evidence, the examiner has applied the document
specified below:
Autocar & Motor, “BMW carves a new benchmark,” November 3, 1993,
pages 36, 37.
The following rejection is the sole rejection before us
for review.
Appeal No. 98-0068
Application 29/030,090
3
The design claim stands rejected under 35 U.S.C.
§ 102(a) as being anticipated by the Autocar & Motor reference.
As stated by the examiner (Paper No. 5; page 2, paragraph 5):
Despite the presence of minor differences,
the automobile shown in the Autocar & Motor
article is seen as of substantially the
same appearance as the claimed design in
the eyes of the ordinary viewer, thus
precluding patentability.
The full text of the examiner's response to the
argument presented by appellant appears in the answer (Paper No.
16), while the complete statement of appellant’s argument can be
found in the brief (Paper No. 12).

OPINION
In reaching our conclusion on the anticipation issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification, Figures 1 through 7, and
design claim, the design shown in the applied reference, and
the respective viewpoints of appellant and the examiner. As
a consequence of our review, we make the determination which
follows.
Appeal No. 98-0068
Application 29/030,090
4
We are constrained to reverse the rejection on appeal.
Simply stated, this panel of the board shares the argued view of
appellant (brief, pages 6 and 7) that the applied reference is
deficient in that it fails to display the rear view and top views
of the automobile design, thereby preventing us from assessing
the reference automobile design as a whole. Our full analysis
follows.
With respect to the rejection of a design claim as
being anticipated, an ordinary observer test is applicable for
determining the novelty of the design under 35 U.S.C. § 102. See
In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 785 (CCPA
1981). As to the particular test for the novelty of a design,
the court in In re Bartlett, 300 F.2d 942, 943-44, 133 USPQ 204,
205 (CCPA 1961) set forth (in quoting from Shoemaker, Patents for
Designs, page 76):
If the general or ensemble appearance-
effect of a design is different from that of
others in the eyes of ordinary observers,
novelty of design is deemed to be present.
The degree of difference required to
establish novelty occurs when the average
observer takes the new design for a
different, and not a modified already-
existing, design.
Appeal No. 98-0068
Application 29/030,090
The applied reference portrays a BMW automobile and the3
appeal brief (page 1) informs us that the real party in interest
in this design application is “Bayerische Motoren Werke AG”
(BMW). The automobile shown in the reference has a license plate
mounted thereon. This circumstance leads us to question whether
the overall appearance of this vehicle may have been available to
the public prior to appellant’s invention. If publicly
available, it would appear reasonable to say that other
automobile periodicals may have published a more complete design
showing of the automobile. Additionally, we note that
appellant has argued differences between the automobile design
partially shown in the applied reference and the claimed design
(brief, pages 4 through 6). However, we are not certain from the
record if the reference automobile (new 5-series BMW due in 1995)
is a version of the same model year automobile for which design
patent protection is now being sought.
5
To apply the aforementioned test, we must be able to
consider each of the claimed and reference designs in their
entirety. As pointed out by appellants (brief, pages 6 and 7),
rear and top views are part of the presently claimed design, but
the rear view and the top view of the reference design are not
shown. Since portions of the overall automobile design of the
reference are not shown, we cannot fairly assess the reference
design relative to the claimed design. Solely for this reason,
we are constrained to reverse the rejection of appellant’s design
claim under 35 U.S.C. 102(a). 3
Appeal No. 98-0068
Application 29/030,090
6
In summary, this panel of the board has reversed the
rejection of appellant’s design claim under 35 U.S.C. § 102(a)
as being anticipated by the Autocar & Motor reference.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Appeal No. 98-0068
Application 29/030,090
7
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