Appeal No. 96-2905
Application No. 29/008,076
greater particularity by including "substantially" in the
claim because the settled rule is that a design patent is
infringed if the accused design is substantially the same as
the design shown in the drawings.
This is essentially a rehash of arguments previously made
in the brief, and has been treated on pages 22-24 of our
decision. It is not apparent to us how the presence of the
word "substantially" in the Gorham test for infringement of a3 4
design claim mandates that it is proper, within the meaning of
35 U.S.C. § 112, second paragraph, for the appellant's design
claim to include the word "substantially" in the absence of
some standard or guideline in the specification apprising the
designer of ordinary skill just what that term encompasses.
Second, the appellant contends that we overlooked or
misapprehended the point that 37 CFR § 1.153(a), cited by us
on pages 12-15 of our decision in support of our position, is
3 Gorham Mfg. Co. v. White, 81 U.S. (14 Wall) 511, 528
(1872).
4In an infringement action, both parties may present
evidence on the issue of whether two designs are substantially
the same.
3
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