Appeal No. 1999-0614 Page 5
Application No. 08/804,410
With regard to the slanted surface edges and vertical
outer surfaces that simulate the appearance of a wooden fence
in both surface grain and color, the examiner takes the
position that "since no engineering advantages have been
disclosed for forming the fence planks as having slanted
surface edges and vertical outer surfaces that simulate the
appearance of a wooden fence in both surface grain and color,
it would have been a mere design choice" (final rejection,
page 3). The examiner further asserts that:
since no engineering advantages have been set forth
in the specification for forming the components as
claimed, and since various other configurations
would appear to work equally as well, the subject
matter in question cannot be given patentable weight
and is considered a matter of design choice. It
should be noted that the limitations stated in
independent claim 7, "vertical outer surfaces that
simulate the appearance of a wooden fence in both
grain and color" do not specifically state any
dimensions or shapes, in fact, the examiner takes
the position that the definition of the appearance
of a wooden fence is undefined and could incorporate
an infinite number of shapes, colors, and designs
(i.e., a sanded, smooth, grainless cut, with black
paint versus a wooden cut with bark still attached).
Therefore, the reference of Vise can be considered
as having a [sic] vertical outer surfaces that
simulate the appearance of a wooden fence in both
grain and color [answer, page 4].
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