Appeal No. 2006-1451
Application No. 08/802,472
several sports balls explicitly as potential embodiments, and that golf and tennis would
be immediately apparent as alternative embodiments to a person of ordinary skill in the
art of creating sports novelty items as being similarly shaped balls in other popular
sports. The appellant argues essentially the same as in claim 5, particularly the lack of
a specific description that the photographs are used during the respective activity, and
our discussion with respect to claim 5 applies here as well.
Therefore, we find the appellant's arguments as to claims 8 and 12 to be
unpersuasive. Accordingly, we sustain the examiner’s rejection of claims 8, and 12
under 35 U.S.C. § 103 as being unpatentable as obvious over Gossard.
As to claims 10, 14 and 15, these claims are dependent from claim 5 and specify
that the icon is a life preserver, a wheel and a credit card respectively. We note that
Gossard describes several sports balls and a hockey puck explicitly as potential
embodiments, and that while other sports balls would be immediately apparent as
alternative embodiments to a person of ordinary skill in the art of creating sports novelty
items as being similarly shaped balls in other popular sports, the icons in these claims
are not ball or hockey puck shaped and nothing in Gossard suggests other shapes.
The examiner argues that these shapes are mere matters of design choice. Were there
no connection between the icon and the contents, this might be a viable argument. But
given the claim element of the connection between the icon and the contained articles,
the choice of the iconic representation is more than mere design choice and some
suggestion for that claimed iconic representation must be found in the prior art to
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