Appeal No. 1999-1568 Page 5
Application No. 29/063,397
The difficulty we have with the examiner's rejection is
that the examiner concludes that since transparent materials
are known it would have been obvious to modify the tunnel of
Morris to be transparent (answer, pp. 3-5). We do not agree.
First, the change of Morris' tunnel from being opaque to being
transparent is more than a de minimis change since the net
effect of such change does affect the appearance of the
claimed design as a whole and the impression that the design
would make to the eye of a designer of ordinary skill. See In
re Carter, 673 F.2d 1378, 1380, 213 USPQ 625, 626 (CCPA 1982).
Second, we see no suggestion of why a designer of ordinary
skill would have modified Morris' tunnel to be transparent.
In our view, the mere fact that transparent materials existed
would not have made it obvious to a designer of ordinary skill
to have changed the basic visual appearance created by Morris'
opaque tunnel to a totally different visual appearance (i.e.,
a transparent tunnel). 2
2The examiner should have applied prior art to establish
why it would have been obvious to a designer of ordinary skill
to make the tunnel of Morris transparent.
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