Appeal No. 99-0837
Application No. 29/074,268
imitation or simulation of known or recognized expressions of
a young baby. In Smith I, the court held that “to take a
natural form, in a natural pose, . . . does not constitute [a
patentable] invention.” Smith I, 77 F.2d at 515, 25 USPQ at
360. In Smith II, the court stated that it found “no
authority . . . which supports the conclusion that a naked
baby doll simulating the natural features . . . of a baby
without embodying some grotesqueness or departure from the
natural form can involve such invention as to comply with the
requirements of the design patent statute.” Smith II, 77 F.2d
at 515, 25 USPQ at 362. Although the rejections in Smith I
and Smith II were not expressly based on any particular
provision of the 1902 Act, the court, as noted supra in Smith
II, specifically held that a design of a naked baby doll
simulating the natural features of a baby did not comply with
the requirements of the design patent statute. Id.
Summarizing the state of the law discussed supra, several
cases (Webb, Zahn, and Tayama) have recognized § 171 as a
proper statutory basis for a rejection where a patentability
requirement of § 171 has not been met. There also is post-
1952 authority (Wise) to support a rejection of a design that
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