Ex parte Pearson

Board of Patent Appeals and Interferences

Feb 19, 1998

29021122 (B.P.A.I. Feb. 19, 1998)

Application for patent filed April 11, 1994. This appli-1
cation is a continuation-in-part of Application 07/990,789, filed
May 27, 1993, abandoned.
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL W. PEARSON

_____________
Appeal No. 96-4010
Application 29/021,1221
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-4010
Application 29/021,122
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of the following design claim:
The ornamental design for a CORN SAVER SHIELD
as shown and described.
As explained in appellant's originally filed design
specification, the invention for which design patent protection
is sought is a "new, original and ornamental design for a CORN
SAVER SHIELD." A first embodiment of this invention is found in
Figures 1 through 6 of the drawings and a visually different
second embodiment is seen in Figures 7 through 12. In
appellant's response (Paper No. 3, filed June 27, 1994) to the
examiner's request for information (Paper No. 2), it was
explained that the invention herein is directed to a design for a
corn saver shield which is used on a corn header, such as that
shown in U.S. Patent No. 3,241,299 to R. L. Sutton. Apparently,
similar to the gathering sheets (21) in Sutton and, more
particularly, the ridges or shields designated (22), (23) and
(24) therein, appellant's corn saver shield is to be mounted
Appeal No. 96-4010
Application 29/021,122
3
between the row units of a combine header and serves the purpose
of minimizing corn ear loss by blocking the ears of corn if they
bounce out of the gathering chains or auger. On page 2 of the
first Office action (Paper No. 5, mailed March 10, 1995), the
examiner has made the determination that the two embodiments seen
in the present application "present overall appearances that are
not distinct from one another" and that the two embodiments thus
"comprise a single inventive concept." On the record before us,
it does not appear that appellant has traversed this
determination. Accordingly, the two embodiments have been
retained and examined in this single application.
There are no prior art references relied upon by the
examiner in the rejection before us on appeal. Instead, the
examiner has asserted that appellant's design does not meet
the requirements of 35 U.S.C. § 171.
The appealed design claim stands rejected under
35 U.S.C. § 171 as "lacking ornamentality." More particularly,
it is the examiner's position that
Appeal No. 96-4010
Application 29/021,122
4
[t]he instant article is believed to be
devoid of ornamentality, as comprehended by
the statutes. Articles of this type would
seem to be devised to satisfy purely struc-
tural and mechanical requirements as well.
No concern for ornamental value may be
ascribed to its functional features. A
potential purchaser and user of the claimed
article would not select it on the basis of
any consideration other than utility (answer,
pages 2-3).
Reference is made to the examiner's answer (Paper
No. 15, mailed June 11, 1996) for the examiner's full reasoning
in support of the above-noted rejection. Attention is directed
to appellant's brief (Paper No. 14, filed March 28, 1996) for an
exposition of appellant's arguments thereagainst.
OPINION
Having carefully considered the issue raised in this
appeal 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 under 35 U.S.C. § 171 cannot be
sustained. Our reasons for this determination follow.
Appeal No. 96-4010
Application 29/021,122
5
Like the examiner, we recognize that 35 U.S.C. § 171
permits a design patent to be granted for a "new, original and
ornamental design for an article of manufacture." In this
regard, the U.S. Supreme Court has noted that
[t]o qualify for protection, a design must
present an aesthetically pleasing appear-
ance that is not dictated by function alone,
and must satisfy the other criteria of
patentability.
See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 148, 9 USPQ2d 1847, 1851 (1989).
In In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653,
654 (CCPA 1964), the Court observed, in affirming the refusal of
a patent on a design for an article, the configuration of which
was determined to be the "result of functional considerations
only," that
[m]any well-constructed articles of
manufacture whose configurations are dictated
solely by function are pleasing to look upon
. . . . But it has long been settled that
when a con- figuration is the result of
functional considerations only, the resulting
design is not patentable as an ornamental
design for the simple reason that it is not
Appeal No. 96-4010
Application 29/021,122
See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d2
234, 238, 231 USPQ 774, 777 (Fed Cir. 1986).
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"ornamental" -- was not created for the
purpose of ornamenting.
In other words, the design of a useful article is deemed to be
functional or "primarily functional" when the appearance of the 2
claimed design is inevitably dictated by the use or purpose of
the article.
Our present Court of review has further spoken to the
issue of ornamentality versus functionality on several occasions,
noting in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,
1123, 25 USPQ2d 1913, 1917 (Fed. Cir.), cert. denied, 510 U.S.
908 (1993) that
[i]n determining whether a design is
primarily functional or primarily ornamental
the claimed design is viewed in its entirety,
for the ultimate question is not the
functional or decorative aspect of each
separate feature, but the overall appearance
of the article, in determining whether the
claimed design is dictated by the utilitarian
purpose of the article.
Appeal No. 96-4010
Application 29/021,122
7
Also noted in L.A. Gear and Berry Sterling Corp. v. Pescor
Plastics Inc., 122 F.3d 1452, 1456, 43 USPQ2d 1953, 1956
(Fed. Cir. 1997), is the proposition that
[w]hen there are several ways to achieve the
function of an article of manufacture, the
design of the article is more likely to serve
a primarily ornamental purpose.
In Berry Sterling, 122 F.3d at 1456, 43 USPQ2d at 1956,
with regard to alternative designs, Judge Rich goes on to
indicate that
[c]onsideration of alternative designs,
if present, is a useful tool that may
allow a court to conclude that a challenged
design is not invalid for functionality. As
such, alternative designs join the list of
other appropriate considerations for
assessing whether the patented design as a
whole --- its overall appearance --- was
dictated by functional considerations. Other
appropriate considerations might include:
whether the protected design represents the
best design; whether alternative designs
would adversely affect the utility of the
specified article; whether there are any
concomitant utility patents; whether the
advertising touts particular features of the
design as having specific utility; and
whether there are any elements in the design
or an overall appearance clearly not dictated
by function.
Appeal No. 96-4010
Application 29/021,122
8
With the above as guidance, we have reviewed the
positions of the examiner and appellant, and reached the
conclusion that the overall appearance of the design for a CORN
SAVER SHIELD before us on appeal is not dictated by function
alone. As an initial observation, we are of the opinion that
the mere presence in this application of two alternative designs,
which are clearly visually different from one another, is
evidence that the claimed design considered as a whole is not
dictated by function alone or the result of functional
considerations only.
Further, contrary to the views of the examiner, we find
that the other prior art of record in this application (e.g.,
U.S. Patent numbers 2,366,408 (Jenson), 3,241,299 (Sutton),
3,520,121 (Ashton et al.) and 4,630,430 (Weeks)), demonstrates
not only the existence of alternative designs, but also evidences
that alternative designs would not adversely affect the utility
of the specified article, and provides evidence that appellant's
designs are not necessarily "the best design." As to the
declarations submitted by appellant in this application (Paper
Nos. 6 and 9) and the initial submissions (e.g., on December 9,
Appeal No. 96-4010
Application 29/021,122
9
1992) made in appellant's parent application Ser. No. 07/990,789,
we view these papers collectively as demonstrating, from the time
of earliest filing by applicant, that he had in mind
considerations of both the design and function of the shield, and
of the ornamentality and attractiveness of the corn saver shield
and the corn header on which it was intended to be used. In the
face of the evidence supplied by appellant, the examiner has
provided no evidence or reasoning to support her conclusion that
the claimed design is "devoid of ornamentality" or that potential
purchasers and users of the claimed article "would not select it
on the basis of any consideration other than utility" (answer,
pages 2-3).
It follows from the above considerations that we view
the present design as not being dictated by function alone
and thereby to be proper subject matter for protection under
35 U.S.C. § 171.

Appeal No. 96-4010
Application 29/021,122
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In accordance with the foregoing, the decision of the
examiner rejecting the claimed design under 35 U.S.C. § 171 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-4010
Application 29/021,122
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