Appeal No. 97-3824
Application 29/042,728
[t]he central inquiry in analyzing an ornamental
design for obviousness is whether the design would
have been obvious to "a designer of ordinary skill
who designs articles of the type involved." Avia
Group [Int'l Inc. v. L.A. Gear Calif., Inc.], 853
F.2d [1557,] at 1564, 7 USPQ2d [1548,] at 1554
[(Fed. Cir. 1988)]; In re Nalbandian, 661 F.2d 1214,
1216, 211 USPQ 782, 784-85 (CCPA 1981). That
inquiry focuses on the visual impression of the
claimed design as a whole and not on selected
individual features. Petersen Mfg. Co. v. Central
Purchasing, Inc., 740 F.2d 1541, 1548-49, 222 USPQ
562, 567-68 (Fed. Cir. 1984); In re Rosen, 673 F.2d
388, 390, 213 USPQ 347, 349 (CCPA 1982).
In order for a design to be unpatentable because
of obviousness, there must first be a basic design
reference in the prior art, "a something in
existence, the design characteristics of which are
basically the same as the claimed design." In re
Rosen, 673 F.2d at 391, 213 USPQ at 349; see In re
Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208
(Fed. Cir. 1993). A finding of obviousness cannot
be based on selecting features from the prior art
and assembling them to form an article similar in
appearance to the claimed design. In re Jennings,
37 C.C.P.A. 1023, 182 F.2d 207, 208, 86 USPQ 68, 70
(1950) (the claimed design "must be [. . .] compared
with something in existence, not with something that
might be brought into existence by selecting
individual features from prior art and combining
them"); see L.A. Gear[, Inc. v. Thom McAn Shoe Co.],
988 F.2d [1117,] at 1124, 25 USPQ2d [1913,] at 1918
[(Fed. Cir.), cert. denied, 510 U.S. 908, 114 S.Ct.
291, 126 L.Ed.2d 240 (1993)]; In re Sung Nam Cho,
813 F.2d 378, 382, 1 USPQ2d 1662, 1664 (Fed. Cir.
1987).
Furthermore, a reference is not a “Rosen” reference if the
modifications required to achieve the claimed design would
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007