Appeal No. 97-1566
Application 29/033,924
as the primary reference is analogous, secondary references can
be properly combined . . . . In this respect, secondary
references need not be analogous to the claimed design”
(examiner’s answer, pages 3-4). The examiner also states that
[because] the Spiegel patent discloses a kicking tee
which is overwhlemingly [sic] similar in overall
general appearance to that of appellant’s claimed
‘Kicking Tee’, the modifications to the outer shape by
means of substituting one well-known geometric shape
for another well-known shape as discussed above are
obvious and well within the skill of an ordinary
designer. [examiner’s answer, page 5]
Appellant’s arguments in support of patentability can be
found in the main brief (pages 3-11) and the reply brief.
We have carefully evaluated appellant’s depicted design, the
designs shown by the Spiegel patent and the Hornung handbook
relied upon by the examiner, and the respective positions
advocated by appellant and the examiner. As a result thereof, we
have reached the conclusion that the examiner’s rejection of
appellant’s design claim under 35 U.S.C. § 103 is not well
founded. Our reasoning for this determination follows.
We will concede to the examiner that the primary reference
to Spiegel qualifies as a Rosen reference, that is, a proper
starting point to support a holding of obviousness. We will 2
2When a § 103 rejection is based upon a combination of
references, “there must be a reference, a something in existence,
-3-
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