Appeal No. 2004-2299
Application No. 09/244,006
alphabetic characters, does not constitute, by itself, clear and
particular evidence or showing of motivation to provide Goodman’s
article with a “three-dimensional character face” as required by
the appealed claims. More is needed to support a conclusion of
unpatentability as explained in the new ground of rejection below.
As noted above, the examiner concludes that it is within the
ordinary skill in the art to “fabricate the three dimensional
decorative applique in any desired shape as a matter of obvious
design choice” because it has “no effect [sic] on the function of
the item.” Supplemental Answer, page 4. Although we agree with
the examiner that the decorative applique has no affect on the
function of the article (for reasons expressed in the new ground of
rejection below), we note that the examiner has not provided any
factual findings or reasoning or legal authority to support his
obviousness conclusion. Furthermore, the examiner has only stated
this conclusion for one of the three rejections under section
103(a)(see page 4 of the Supplemental Answer).
For the foregoing reasons and those stated in the Brief, Reply
Brief, and the Supplemental Brief, we determine that the examiner
has not established a prima facie case of obviousness in view of
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