Ex parte HONG - Page 9




          Appeal No. 1999-1567                                                        
          Design Application 29/035,428                                               
          from the block-shaped appearance.  The well in the bottom is                
          shallow and has a large diameter.  Thus, although Stolte                    
          discloses stacking like-shaped containers, the container in                 
          Stolte does not have a bottom well having the appearance of                 
          the claimed design.  If this were a utility application, we                 
          might agree that it would have been obvious for utility                     
          reasons to modify the shape of the bottom well of Bourcart so               
          that vials could be stacked on top of each other in view of                 
          Stolte or, alternatively, that it would have been obvious to                
          modify the containers in Stolte to use a neck and cap of the                
          shape of Bourcart with a correspondingly shaped bottom well.                
          However, this is a design application and modifications must                
          be done for ornamental reasons.  See In re Cho, 813 F.2d 378,               
          382, 1 USPQ2d 1662, 1664 (Fed. Cir. 1987) ("Although it may                 
          have been obvious, from a utility standpoint, to place                      
          cylindrical depressions in crown type caps and to include                   
          flaps in the depressions, it does not follow that Cho's design              
          was obvious."); Harvey, 12 F.3d at 1063, 29 USPQ2d at 1208                  
          ("In ornamental design cases, a proper obviousness rejection                
          based on a combination of references requires that the visual               
          ornamental features (design characteristics) of the claimed                 
          design appear in the prior art in a manner which suggests such              
                                        - 9 -                                         





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007