Appeal No. 99-0837
Application No. 29/074,268
before us is the propriety of the examiner’s rejection under §
171. This section of the statute provides in pertinent part:
Whoever invents any new, original and ornamental
design for an article of manufacture may obtain a
patent therefor, subject to the conditions and
requirements of this title.
In the office action mailed November 24, 1997 (see page
2), the examiner concluded that “[t]he [claimed] design is
merely simulating [sic, merely simulates] a coconut shell
which the applicant himself did not invent.” In support of
this position, the examiner states in the final office action
mailed March 31, 1998 (see page 2) that:
The statute requires that for a design to be
patentable it must be “original”. The prima facie
[sic] basis for the rejection of the claim is that
the design clearly simulates a known and naturally
occurring object without any departure from the
normal and expected appearance of that object and
is, therefore, not original. It is not necessary to
rely on prior art in a rejection of the claim as not
being directed to statutory subject matter under 35
U.S.C. 171 as the rejection is not based on prior
art but rather an evaluation of the claim with a
category of known objects, namely coconuts. The
rejection does not take the position that the claim
copies a particular object/coconut but that it
simulates that type of object. The examiner is
aware that all coconuts are not identical but the
differences between the many coconuts are not
patentable ones.
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