Appeal 2007-0916
Application 10/051,486
and did so to stand out in a very crowded field. Aesthetic distinctness
without more is a subjective consideration that has no place in the objective
tests for obviousness.43
DECISION
The examiner's rejection of all pending claims as having been obvious
is AFFIRMED.
No time period for taking any subsequence action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
GRON, Administrative Patent Judge, concurring in the result only.
Appellant’s Brief and the Examiner’s Answer make their respective
cases for and against the patentability of the claimed subject matter under
35 U.S.C. § 103 without raising or discussing “printed-matter” issues. The
Examiner’s case for obviousness is conventionally presented in terms of the
combined prior art teachings, motivation to modify, and the reasonable
expectation of success. Appellant has responded in kind. “Printed-matter”
is mentioned in this case for the first time by the Majority in their decision
on appeal. The Majority focuses exclusively on Appellant’s claims directed
to shingles and disregards Appellant’s claims drawn to methods of making
shingles.
43 De gustibus non est disputandum. See Justice Scalia's concurrence in
Pope v. Illinois, 481 U.S. 497, 505-506 (1987), regarding the difficulty of
fitting an aesthetic test within an objective test.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013