Appeal No. 98-2069
Application No. 29/052,369
applicant shall, as a matter of right, be entitled to present
a claim in whatever form the applicant desires. Accordingly,
we find that 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" is not inconsistent with the
statutes.
The requirement 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" became
effective on March 1, 1949 upon the original promulgation of
Rule 153, now 37 CFR § 1.153(a). The claim format the
appellant has chosen to use here does not comply with the
formal requirement of the rule because of the presence of the
word "substantially" in the claim. It is our opinion that 5
5In Ex parte Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Int.
1988), a case relied upon by the examiner, a merits panel of
this Board, when faced with similar claim format, (1) noted in
a footnote that the inclusion of the word "substantially" in
the claim rendered it improper under the rule, and (2)
interpreted the claim as if the offending word was not
present. In the instant case, it is not immediately clear why
the examiner did not object to the claim format the appellants
16
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007