Appeal No. 2004-2299
Application No. 09/244,006
together with a wide selection of decorative appliques,
especially alphabetic characters, of attractive design and
finish.
The examiner further relies on Goodman at col. 2, ll. 48-60, which
in pertinent part teaches “[t]he appliques may be purely
decorative, but monogram characters are of special importance” and
“[a]ppliques of a series having different designs or characters
should be of the same size or shape...”. Based on these teachings,
the examiner takes the position that “the reference clearly
suggests the applique may be of different designs or shapes and
therefore there is sufficient motivation to one of ordinary skill
in the art to employ or fabricate the applique of Goodman into any
desired design or character” (Supplemental Answer, page 8). We
disagree.
Initially, it is appropriate to clarify that the word
“character” as used by Goodman does not refer to a “three-
dimensional character face” as recited in the claims on appeal but
rather to alphabetic or “monogram characters” (see Goodman, col. 2,
ll. 47-48). Furthermore, we note that the evidence or showing of
motivation must be clear and particular. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). The teaching
of Goodman that “a wide selection of decorative appliques” can be
available for sale, along with numerous examples to monograms and
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