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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