Appeal No. 97-1983
Application No. 29/038,982
This is essentially a rehash of arguments previously made
in the brief, and has been treated on pages 22-24 of our
decision. It is not apparent to us how the presence of the word
"substantially" in the Gorham test for infringement of a design3 4
claim mandates that it is proper, within the meaning of 35
U.S.C. § 112, second paragraph, for the appellants' design claim
to include the word "substantially" in the absence of some
standard or guideline in the specification apprising the
designer of ordinary skill just what that term encompasses.
Second, the appellants contend that we overlooked or
misapprehended the point that 37 CFR § 1.153(a), cited by us on
pages 12-15 of our decision in support of our position, is in
exactly the same form as when adopted on December 22, 1959, and
in force when (1) the PTO issued the at least 18,537 design
patents with "substantially" in the claim since 1971, and (2)
two court decisions were decided. The first point the
3 Gorham Mfg. Co. v. White, 81 U.S. (14 Wall) 511, 528
(1872).
4In an infringement action, both parties may present
evidence on the issue of whether two designs are substantially
the same.
3
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