Appeal No. 2003-1760
Application No. 29/159,145
first paragraph of Section 112, the examiner bears the initial burden of setting forth a
reasonable explanation as to why the scope of protection is thought to be not
adequately enabled by the disclosure. If that burden is met, the burden then shifts to
the applicant to provide proof that the disclosure is indeed enabling. In re Wright, 999
F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
Every design application relies to some extent upon knowledge of the person
skilled in the art to complement that which is disclosed in order to make it enabling
within the meaning of the first paragraph of 35 U.S.C. § 112. Ex parte Asano, 201
USPQ 315, 317 (Bd. App. 1978). In a design application, the person of ordinary skill in
the art is the designer of ordinary skill who designs articles of the type claimed. In re
Nalbandian, 661 F.2d 1214, 1217, 211 USPQ 782, 785 (CCPA 1981).
In view of this record, we agree with appellant that the designer of ordinary skill
who designs articles of this type would have inferred, absent some clear indication to
the contrary, that the surface treatment shown in Figures 4 and 5, other than that
representative of a seam, is repeated throughout substantially the entire surface of the
ball. We note in particular the lack of correspondence between the shading in the
Figure 3 section -- the section shown in detail in Figure 4 -- and the Figure 4 detail. The
inference to be drawn is that the shading shown in Figures 1 through 3 is not
representative of the surface ornamentation, but representative of the spherical nature
of the ball. In our view, there is insufficient basis to question whether the ordinary
designer could, within reason, be able to make and use the disclosed design.
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