Appeal No. 1999-0410
Application 29/063,883
Initially, we note that the proper test for determining
novelty under 35 U.S.C. § 102 with respect to designs is the
"ordinary observer" test (as distinguished from the "ordinary
designer" test applicable in determining obviousness under 35
U.S.C. § 103). See In re Nalbandian, 661 F.2d 1214, 1217, 211
USPQ 782, 785 (CCPA 1981). With respect to the “ordinary
observer” test for determining whether novelty is present
under § 102 the court in In re Bartlett, 300 F.2d 942, 943-
944, 133 USPQ 204, 205 (CCPA 1961) set forth (in quoting with
approval from Shoemaker, Patents for Designs, page 76):
If the general or ensemble appearance-effect of a
design is different from that of others in the eyes
of ordinary observers, novelty of design is deemed
to be present. The degree of difference required to
establish novelty occurs when the average observer
takes the new design for a different, and not a
modified already-existing, design.
It therefore follows that, in order to establish lack of
novelty (i.e., anticipation), the ordinary observer must take
the general
or ensemble appearance-effect of the design under
consideration to be the same as that of an already-existing
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