Appeal No. 2003-1862
Application No. 29/153,657
transition cap assembly of Valu Guide=s page 30.2A by utilizing only one boss on one
opening among the four in the two Rosen-type references. This combination does not
yield the overall appearance of the claimed design.
More telling, however, as a basis of reversing the examiner=s rejection is the
examiner=s reasoning that it would have been obvious to the ordinary designer to have
duplicated the parts or otherwise considered the teaching of the placement of a boss
around all of the openings of the clamp, based upon the showing of a single boss from
a transition cap assembly from the Valu Guide brochure page 30.2A. The examiner=s
basic rationale, that it would have been obvious to the ordinary designer to have varied
the number of bosses, is further misplaced. As discussed in In re Harvey 12 F.3d at
1064, 29 USPQ2d at 1208, the examiner=s rationale appears to be utilizing design
concepts. The examiner=s basic rationale may have some place in utility patent
application analysis, but not in ornamental designs. The examiner=s evidentiary void
cannot be filled by a conceptualized approach. It is thus apparent that the examiner
has applied an improper analytical framework within 35 U.S.C.'103 as a basis of the
rejection on the applied prior art.
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