Ex parte LEIGHT - Page 4




          Appeal No. 96-3568                                                          
          Application 29/009,122                                                      



                    Having carefully considered the anticipation issue                
          raised in this appeal in light of the applied prior art, the                


          examiner's remarks and appellant's arguments, it is our                     
          conclusion that the examiner's rejection of the present design              
          claim under 35 U.S.C.  102(b) cannot be sustained.  Our reasons            
          for this determination follow.                                              


                    Initially, we note that the proper test for determining           
          novelty under 35 U.S.C.  102 with respect to designs is the                
          "ordinary observer" test (as distinguished from the "ordinary               
          designer" test applicable in determining obviousness under                  
          35 U.S.C.  103).  See In re Nalbandian, 661 F.2d 1214, 1217,               
          211 USPQ 782, 785 (CCPA 1981).  With respect to the “ordinary               
          observer” test for determining whether novelty is present under             
           102 the court in In re Barlett, 300 F.2d 942, 943-944, 133 USPQ           
          204, 205 (CCPA 1961) set forth (in quoting with approval from               
          Shoemaker, Patents for Designs, page 76):                                   
                    If the general or ensemble appearance-                            
                    effect of a design is different from that                         
                    of others in the eyes of ordinary observers,                      
                    novelty of design is deemed to be present.                        
                    The degree of difference required to                              
                    establish novelty occurs when the average                         

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