Appeal No. 2002-0494 Page 7
Application No. 29/102,729
parts of an original design without running afoul of the written description requirement of
the first paragraph of 35 U.S.C. § 112. Thus, it is our determination that Figures 8-20
are drawn to new matter since they presently change the underlying patented design
itself.
In view of the foregoing, the decision of the examiner to reject the design claim
under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 251 based on new matter is
affirmed.
The rejections based on the claim not being to the same invention
We will not sustain either the rejection of the design claim under 35 U.S.C. § 251
as not for the same invention as that disclosed in the original patent or the rejection of
the design claim under 35 U.S.C. § 171 as directed to more than a single patentably
distinct design.
In our view, the examiner has not established that either Figures 8 to 14 or
Figures 15 to 20 are a patentably distinct design from Figures 1 to 7. Moreover, we
agree with the appellant (brief, pp. 10-11) that Figures 8 to 20 do not present a design
that is patentably distinct from the design shown Figures 1 to 7. Accordingly, the
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