Appeal No. 98-2069
Application No. 29/052,369
In light of the foregoing, we conclude that the examiner
did have a reasonable basis to question whether the claim sets
out and circumscribes a particular area with a reasonable
degree of precision and particularity. Thus, the burden
shifted to the appellant to present persuasive arguments,
supported by suitable proofs where necessary, that the
designer of ordinary skill in the art would be able to
ascertain the scope of the invention sought to be patented
using the disclosure as a guide. This the appellant has not
done for the reasons set forth infra. Accordingly, we sustain
the standing 35 U.S.C. § 112, second paragraph, rejection of
the appealed design claim.
Alternatively, we note the requirement of 37 CFR §
1.153(a) that the claim of a design patent "shall be in formal
terms to the ornamental design for the article (specifying
name) as shown, or as shown and described." The PTO's
rulemaking power,
35 U.S.C. § 6(a), authorizes the Commissioner to "establish
regulations, not inconsistent with law, for the conduct of
proceedings in the Patent and Trademark Office." Our
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