Appeal No. 99-0837
Application No. 29/074,268
basis for a rejection where originality of the claimed design
is lacking. Our review of the matter reveals that there is2
ample precedent for making a rejection under § 171 where one
or more requirements of that section of the statute have not
been met, albeit not for the “originality” requirement itself.
For example, the requirement of ornamentality was involved in
a § 171 rejection in In re Webb, 916 F.2d 1553, 1557, 16
USPQ2d 1433, 1435 (Fed. Cir. 1990). In addition, the
requirement that a design be embodied in an article of
manufacture was involved in a § 171 rejection in Ex parte
Tayama, 24 USPQ2d 1614, 1616 (Bd. Pat. App, & Int. 1992) and
also in a § 171 rejection in In re Zahn, 617 F.2d 261, 267,
204 USPQ 988, 994 (CCPA 1980). In all three of these cases, §
171 was expressly or implicitly recognized as the proper
statutory basis for a rejection where a requirement in § 171
had not been met.
In In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965) the
underlying issue of originality was involved in one of the
2The Manual of Patent Examining Procedure (7 ed., th
July 1998), § 1504.01(d) indicates that § 171 may be the
proper statutory basis for a design that lacks originality,
but cites no supporting precedent under the Patent Act of
1952.
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