Appeal No. 2002-0494 Page 6
Application No. 29/102,729
in that case to have possessed the invention in the prior application that is claimed in
the second application, thereby entitling the appellant in that case to benefit under
35 U.S.C. § 120 of the earlier filing date. We view Daniels as indicating basically that
surface indicia is not a part of an initial design. The binding precedential value of
Daniels would be that a logo or part number or the like may be removed, without being
new matter, to the extent it may be fairly characterized as surface indicia not a part of
the original or initial design.
The appellant's apparent position is bottomed upon an extension of this view
such that if the design is "clearly visible" in the earlier design it may be claimed in any
manner of combination and subcombination of elements in this design reissue
application. We do not see any "clear visibility" test to be derived from Daniels beyond
removal of surface ornamentation which did not obscure the underlying design itself,
such as to permit the appellant here to file a reissue application and essentially carve
out now something for which there was no possession within 35 U.S.C. § 112, first
paragraph, in the underlying patent. Thus, the changing of the transparent aquatic
board from one of determinate length as shown in Figures 1-7 to the transparent
aquatic board of indeterminate length as shown in Figures 8-20 does not correspond to
the removal of surface indicia according to Daniels. It is our view that Daniels does not
stand for the proposition that the appellant is now permitted to remove elements or
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