Appeal No. 98-2069
Application No. 29/052,369
"substantially" is acceptable language in a design claim in
all cases. Rather, the court held that "the patent is valid,
at least for purposes of this case" since the bill was taken
pro confesso, 114 U.S. at 446. While the Supreme Court then
went on to state that "[a]side from this, we see no good
objection to the form of the claim," such comment is dicta
especially since Dobson never objected to the use of
"substantially" in a design claim. 7
On pages 4-6 of the brief, the appellants state that
[t]here follows other decisions demonstrating that
the inclusion of the word "substantially" in claims to an
ornamental design does not interfere with courts or
litigants in determining that the design patent claim
with "substantially" "particularly points out and
distinctly claims what . . . [the inventor] regards as
his invention." 35 U.S.C. § 112.
In re Geiger, 165 U.S.P.Q. 572, 573 (C.C.P.A. 1970)
("The claim on appeal is of the form prescribed in design
patent applications, reciting: The ornamental design for
an automobile substantially as shown and described.")
(Footnote omitted.).
In re Fee, 158 U.S.P.Q. 277, 278 (C.C.P.A. 1968)
("The ornamental design for a lawn sprinkler
substantially as shown and described.").
7We have reviewed both the brief for appellants and the
brief for appellee to the Supreme Court. The issue of whether
or not the use of "substantially" is acceptable language in a
design claim was not mentioned in either brief.
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