BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE GEORGE S. PAPPAS Appeal No. 92-0935

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 92-0935

February 27, 1992



 Application for Design Patent filed July 28, 1988, Serial No. 226,362. Feed Bunker.



Phillip A. Rein for appellant



Supervisory Patent Examiner--A. Hugo Word



Examiner--Cathy Anne MacCormac



Before McCandlish, Pendegrass and Lyddane












On Brief


 This appeal is from the examiner's rejection of the following design claim under 35 USC 103:

   The ornamental design for a feed bunker [sic, bunk [FN1]] or similar structure as shown and described.



 In rejecting the appealed claim, the examiner relies upon the following prior art:

   Lien   3,911,869    Oct. 14, 1975

   Architectural Precast Concrete Drafting Handbook (Architectural Handbook), page 56, Fig. 2-66 (right side, center) (found in Art Unit 2904 Design Library), Copyright 1975.



 The appealed claim stands rejected under 35 USC 103 as being unpatentable over the Lien patent in view of the Architectural Handbook. The examiner concedes that the bunk shown in the Lien patent does not have inclined corners in the interior of the U-shaped bunk at the junctures between the interior vertical side surfaces and the interior flat bottom surface of the bunk. The examiner, however, concludes that it would have been obvious to provide the bunk of Lien with such inclined corners in view of the teachings in the Architectural Handbook, particularly the illustration on page 56 immediately above the caption "Figure 2-66."



 In support of patentability, appellant argues, inter alia, that the Architectural Handbook is not analogous art.



 We have carefully considered the issues raised in this appeal together with appellant's arguments. We nevertheless conclude that the rejection of the appealed claim is sustainable, although not for all of the reasons stated by the examiner. Our reasons supporting the rejection follow.



 Before considering the rejection and appellant's arguments, it is first necessary to interpret certain language in the appealed claim, namely the phrase "or similar structure." Because of this phrase, the claim language is indefinite and hence fails to particularly point out and distinctly claim the subject matter which appellant regards as his invention under the second paragraph of 35 USC 112 as will be discussed in detail infra in our new rejection entered under the provisions of 37 CFR 1.196(b).



 Nevertheless, for the purpose of reviewing the art rejection we shall interpret the phrase "or similar structure" as encompassing concrete structures having at least one upstanding leg generally perpendicular to a base portion especially in view of the dictionary definition (see footnote 1, supra ) which states that bunks may be made of concrete. Given this interpretation, we cannot agree that the Architectural Handbook is of such a nature that it cannot be combined with the Lien patent. Indeed, based on this interpretation or any other reasonable interpretation that may be applied to the phrase "or similar structure", the claim is broad enough to cover structures of the type shown in the Architectural Handbook.



  *2 Moreover, the question in design cases, as distinguished from utility or "mechanical" cases, is "not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other." In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). This test is met in the present case inasmuch as both references disclose structures in which at least one upstanding leg is generally perpendicular to a base portion to define a corner configuration between the leg and the base portion.



 We also cannot agree with appellant's statement of the test for obviousness of designs under § 103. In this regard, the test for determining obviousness of a claimed design under § 103 is whether the design would have been obvious to a designer of ordinary skill who designs articles of the type involved, not to "an average worker" as asserted by appellant. See In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).



 Moreover, to support a rejection of a design patent claim under § 103, the teachings of the applied references must be such as to have suggested the overall appearance of the claimed design. In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982).



 In the present case, contrary to appellant's argument, appellant's bunk and Lien's bunk do closely resemble one another in that both are generally U-shaped in cross section, having one vertical leg extending higher than the other vertical leg of the U-shaped configuration. Indeed, the only significant difference between Lien's bunk and appellant's bunk is the configuration of the corners or junctures between the vertical legs and the horizontal base portion of the trough configuration.



 Lien's bunk admittedly lacks appellant's inclined corner configuration. However, the Architectural Handbook recognizes appellant's inclined corner configuration as an alternative to a generally perpendicular corner, the former appearing to have a somewhat more aesthetically pleasing appearance than the latter.



 Since the Architectural Handbook design of joining leg and base portions is sufficiently related in appearance to Lien's configuration, we are satisfied that the Architectural Handbook design suggests the concept of providing Lien's bunk with inclined corners similar to appellant's design. We therefore agree with the examiner that it would have been obvious to modify Lien's bunk by providing the patentee's bunk with inclined corners. Any remaining differences between appellant's claimed design and the prior art designs are de minimis in that the net effect of such differences, if any, does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill. See In re Carter, supra.



  *3 In view of the foregoing, we will sustain the examiner's § 103 rejection of the appealed claim.



 Under 37 CFR 1.196(b), we enter the following new rejection of the appealed claim.



 The appealed claim is rejected under the second paragraph of 35 USC 112 as being indefinite, thus failing to particularly point out and distinctly claim the subject matter which appellant regards as his invention. Our difficulty with the claim language, as stated supra, centers on the phrase "or similar structure." This phrase renders the claim indefinite because it is obviously unclear from the specification what appellant intended to cover by the recitation of "similar structure." See Ex parte Kristensen, 10 USPQ2d 1701 (BPAI 1989). See also Ex parte Steigerwald, 131 USPQ 74 (Bd.App.1961), Ex parte Hasche, 86 USPQ 481 (Bd.App.1949), Ex parte Hall, 83 USPQ 38 (Bd.App.1948) and Ex parte Caldwell, 1906 C.D. 58 (Comm'r.1905). Although all of these cited cases involve utility applications rather than design applications, the effect of the language in question is the same in that it obscures the metes and bounds of the claimed design.



 Furthermore, because of the addition of the phrase "or similar structure", the claim language does not comply with 37 CFR 1.153 and therefore is improper.



 In summary, the examiner's decision rejecting the appealed claim is affirmed, and a new ground of rejection is entered against the appealed claim pursuant to 37 CFR 1.196(b).



 Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).



 With respect to the new rejection under 37 CFR 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 USC 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.



 If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.



  *4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).



AFFIRMED, 37 CFR 1.196(b).






Harrison E. McCandlish






Verlin R. Pendegrass






William E. Lyddane






FN1. The structure illustrated in appellant's drawings appears to be a bunk rather than a bunker. According to its definition in Webster's Third New International Dictionary (G. & C. Merriam Company, 1971), the word "bunk" is defined as a long, usually wood or concrete trough or manger for feeding cattle. Reference is also made to the description of the structure shown in the Lien patent cited infra.


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