Appeal No. 98-2069
Application No. 29/052,369
this promulgation of Rule 153 was the PTO's interpretation of
how a design applicant must comply with the statutory
requirement to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention. 6
It has been consistently held for many years that it is the
appearance of a design as a whole which is controlling in
determining questions of patentability and infringement. See
Rubinfield 270 F.2d at 395, 123 USPQ at 214 and cases cited
therein. Additionally, as stated by the court in In re Mann,
861 F.2d 1581, 1582, 8 USPQ2d 2030, 2031 (Fed. Cir. 1988),
"[a] design claim has almost no scope. The claim at bar, as
in all design cases, is limited to what is shown in the
application drawings." Under such circumstances, we believe
that the inclusion of the word "substantially" in a design
claim creates uncertainty as to the actual scope of the design
have chosen to employ for failing to comply with the "formal
terms" claim format required by 37 CFR § 1.153(a).
6Under R. S. 4888, as amended, 35 U.S.C. § 33 (1949), it
was required that the inventor "shall particularly point out
and distinctly claim the part, improvement, or combination
which he claims as his invention or discovery." This
provision was carried forward into § 112, Title 35, U. S. C.
(1952) with slight modification of the language. See In re
Schechter, 205 F.2d 185, 187, 98 USPQ 144, 147 (CCPA 1953).
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