Appeal No. 2004-2299
Application No. 09/244,006
present invention’s “decorative surface” including a “unique
design” (page 2)).
Where claimed features relate to ornamentation only and have
no mechanical function whatsoever, they cannot be relied upon for
patentability, as the appealed claims are not directed to a design
but are structural claims. See In re Seid, 161 F.2d 229, 231, 73
USPQ 431, 433 (CCPA 1947). In this appeal, all claims are directed
to utility (as opposed to design) articles with a specific
structure (e.g., see claim 23 on appeal). As discussed above, we
have determined that the “three-dimensional character face” as
claimed relates only to matters of ornamentation or aesthetic
design. Therefore the particular three-dimensional character face
affixed to the claimed article does not patentably distinguish this
article from that of the prior art.
As previously mentioned, the Remand to the Examiner (Paper No.
24) presented the issue of “printed matter” to the examiner and
appellant. Both the examiner and appellant averred that no
“printed matter” issue occurred in the claimed subject matter on
appeal (Supplemental Answer, Paper No. 26; Supplemental Reply Brief
dated Feb. 5, 2004). However, we consider the patentability issue
before us in this appeal “analogous” to or an extension of the
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