Appeal No. 1999-0410
Application 29/063,883
agree with the examiner (answer, page 5) that the claimed
design “presents an appearance remarkably similar to that of
the prior art.” As we have already stated above, the overall
appearance of the claimed design is, in our opinion,
significantly different from that of the embossed sheet
material seen in Satas Figure 1. Moreover, we must agree with
appellant that it would not have been obvious to a designer of
ordinary skill to modify the surface pattern as seen in Satas
Figure 1 to emulate that of the claimed design. For that
reason, the examiner’s rejection of the claimed design under
35 U.S.C. § 103(a) based on Satas will also not be sustained.
In accordance with the foregoing, the decision of the
examiner rejecting the claimed design under 35 U.S.C. § 102(b)
and § 103 based on Satas is reversed.
In addition, we find it necessary to REMAND this
application to the examiner for a consideration of whether or
not a rejection of the design claim on appeal would be
appropriate under either or both 35 U.S.C. § 112, first
paragraph, as being nonenabling because the appearance and
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