Appeal No. 99-0837
Application No. 29/074,268
merely simulates a naturally occurring form. Finally, there
is authority (Smith I and Smith II) to support a rejection of
a design of a naturally occurring form that lacks “originative
faculty” under a design statute where originality is one of
the requirements for patentability. Smith I, 77 F.2d at 513,
25 USPQ at 360. The foregoing authorities constitute
appropriate precedent for concluding that § 171 constitutes a
proper statutory basis for a rejection of a design claim that
lacks originality.
Turning now to the merits of the examiner’s rejection,
the Smith II court held that a claimed design must represent
“some grotesqueness or departure from the natural form” of an
object in order to be patentable. See Smith II, 77 F.2d at
515, 25 USPQ at 362. Application of such test obviously
requires a comparison of the claimed design with the natural
form of the object in question. The court in Smith I and
Smith II had before it prior art representations of the
natural form of a living baby in order to make such a
comparison.
In the present case, the examiner proffered no evidence
of the naturally occurring form of a coconut. She stated,
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