Appeal No. 97-2313
Application 29/024,479
does not instruct as to what constitutes the “SIDE, UPPER AND
SOLE PERIPHERY OF A SPRING SHOE”. In light of the above, we8
are unable to determine what would be the periphery of the
side, upper and sole of spring shoe, the design for which
8Appellant calls upon this board to address the appropriateness of the
present application being labeled a “continuation” (main brief, pages 17, 18
and reply brief, pages 6 and 7). In this case, all of the effective dates of
the applied references predate the filing date of appellant’s parent utility
application Serial No. 08/169225 (U.S. Patent No. 5,435,079 to Gallegos).
Ordinarily, under these circumstances, we would not have any reason to address
the appropriateness of labeling the present application a “continuation”.
However, because of the difficulty we have encountered in understanding the
language of the design claim on appeal, as explained above, we have had to
review the content of the earlier utility application. Having considered the
disclosure of the earlier application, this panel of the board makes the
determination that the label “continuation” is a misnomer relative to the
present design application. Neither of the two embodiments of the design in
the present application, as partially portrayed in respective Figures 1
through 3 and Figures 4 through 6, appear (are disclosed) in the earlier
utility application; lack of descriptive support under 35 U.S.C. 112, first
paragraph. Aesthetically unlike the present design, the design of the
embodiment of Figures 1 and 2 of the Gallegos patent includes, inter alia, the
design appearance of a serrated ground impacting surface 14, a very deep “V”
spacing between the two portions 16, 18 of the sole, an upper spacer 22, and
a stepped hollow portion 28,30. Ornamentally unlike the present design, the
design of the embodiment of Figure 4 of the Gallegos patent includes, inter
alia, the design appearance of a very deep “V” spacing between the two
portions of the sole, an upper spacer, and a stepped hollow portion.
Ornamentally unlike the present design, the design of the embodiment of Figure
4A of the Gallegos patent includes, inter alia, the design appearance of a
serrated ground impacting surface, a spacer 22N, and a ring-shaped spacer 28N.
Simply stated, the present design cannot be found in the earlier utility
patent. Thus, it is clear to us that the present design is not disclosed in
the manner provided by the first paragraph of section 112, an integral part of
35 U.S.C. § 120 (Benefit of earlier filing date in the United States) in that
the earlier application (Serial No. 08/169,225) contains illustrations that
fail to depict the ornamental design illustrated and claimed in this present
and later filed design application. See Racing Strollers Inc. v. TRI
Industries Inc., 878 F.2d 1418, 1420 11 USPQ2d 1300, 1301 (Fed. Cir. 1989).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007