Appeal No. 99-0837
Application No. 29/074,268
instead, that “there is no need to rely on prior art to
establish the lack of originality of a design claim” (answer,
page 5).
While it may be true that prior art is not required in
the sense of 35 U.S.C. § 102(b), § 103, the comparison
required to apply the test in Smith II nevertheless cannot be
made in a vacuum. Instead, evidence of the appearance of the
naturally occurring form of the object in question is required
to make such a comparison. Such evidence, although not
supplied by the examiner, is nevertheless present in the
record before us in the form of the above-mentioned
photographs which accompanied appellant’s Request for
Reconsideration filed on February 27, 1998. We will therefore
rely upon those photographs to make the required comparison
between the claimed design and the naturally occurring form of
a coconut.
On pages 2 and 3 of the brief, appellant has pointed out
several uncontested differences between the claimed design and
the naturally occurring form of a coconut as depicted in the
above-mentioned photographs. Of particular interest are the
flat bottom of the illustrated design, the circumferential
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