Appeal No. 2004-0401
Application 29/160,956
In order to establish a prima facie case of obviousness of the claimed design, the
examiner must provide “a reference, a something in existence, the design of which is basically
the same as the claimed design,” In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA
1982), which can be combined with other teachings of the prior art by a designer of ordinary skill
who designs articles of the type involved, in order to modify the design of the primary reference
to create a design that has the same overall visual appearance as the claimed design. See
generally, In re Borden, 90 F.3d 1570, 1574-75, 39 USPQ2d 1524, 1526-27 (Fed. Cir. 1996);
In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993); Rosen, 673 F.2d
at 390-91, 213 USPQ at 349-50. In order to combine the prior art designs, there must be some
suggestion in the prior art to modify the basic design of the primary reference with the features
from the design in a secondary reference; the suggestion is provided where the design of the
secondary reference is so related to the design of the primary reference that the appearance of
certain ornamental features in the design of the secondary reference would have suggested the
application of the features to the design of the primary reference. See Borden and cases cited
therein, 90 F.3d at 1574-75, 39 USPQ2d at 1526-27. However, where a major modification
would be required to make the design of the primary reference have the same overall appearance
of the claimed design, the design of the primary reference “cannot qualify as a basic design.”
Harvey, 12 F.3d at 1063, 29 USPQ2d at 1208. In other words, the modification of the “basic
design” of the primary reference necessary to achieve the claimed design cannot destroy the
fundamental characteristics of the “basic design” of the primary reference. Rosen, 673 F.2d
at 391, 213 USPQ at 350.
The examiner concedes that significant modifications are necessary to the design of
Pomeroy ‘559 by stating that it would have been obvious to one of ordinary skill in the art “to
modify the armrests of glider chair of [Pomeroy ‘559] so as to have the same armrests as taught
in the glider of” Pomeroy ‘340 (Paper No. 3, page 2; emphasis supplied). In our view, appellants
accurately describe, physically, the “arm supports of the glider chair . . . [of Pomeroy ‘559 as] an
upside-down U-shape,” and those of Pomeroy ‘340 as “arm supports that begin at the back of the
loveseat, extend across the entire seat portion, then downwardly towards the feet of the loveseat,
across the bottom, and then up to near the starting position . . . creating this near-loop” (brief,
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