Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE MORRIS SUSSMAN
Appeal No. 87-0417
January 25, 1988
Application for Patent filed March 21, 1984, Serial No. 591,991. Serving Tray.
Michael Ebert et al. for appellant
Winifred E. Herrmann
Before Stahl, Pendegrass and Frankfort
This is a decision on the appeal from the final rejection of the following design claim:
"The ornamental design for a serving tray substantially as shown and described." [FNa1]
The references relied upon by the examiner to support her rejection of the claim under 35 U.S.C. 103 are:
Propst et al. (Propst) Des. 224,751 Sept. 12, 1972
Taschler (German Patent) 141,902 June 11, 1935
Plexiglas, Home Furnishing Idea Book, Fifth Edition, page 10, Item No. 40, "Lap Tray" (1980)
Housewares Review, page 50, Panel B, "Teak Serving Trays" (January 1969)
The Hecht Co. Caravan Catalog, page 15, Item J, Serving Tray (1977)
The examiner has described the appellant's design as follows:
The design is to a rectangular tray with curved corners and with elongated end handles having rounded corners curved in the manner of the tray corners. The flat handles extend outwardly from the rim of the tray at right angles to the walls thereof. The curvature of the handle edges at the corners, the connecting curve between handle and tray and the curvature of the tray corners which provide a sinuous form are best seen in Fig. 2 (top plan view) of the drawing. The separated feet that follow the outline of the tray bottom were mentioned in earlier Office actions. No arguments are directed to the bottom of the tray in appellant's brief.
The examiner states her rejection as follows:
The claim was finally rejected under 35 U.S.C. 103 as being obvious over the R [Plexiglas] cited publication tray as modified by the § [Housewares Review] publication tray considered with Propst et al, the German patent or the T [The Hecht Co. Caravan Catalog] publication tray.
The examiner concludes that it would have been obvious to one of ordinary skill in the art to enlarge the handles of the Plexiglas tray following the teachings of either one of Housewares Review or Propst. The examiner further states that the Taschler and The Hecht Co. Caravan Catalog show rounded corners on trays and the examiner concludes it would have been obvious to so modify the corners of the Plexiglas tray.
The test for determining obviousness of a claim design under 35 U.S.C. 103 is whether the design would have been obvious to a designer of ordinary skill in the art who designs articles of the type presented in the application. In re Nalbandian, 661 F.2d 1214, 211 U.S.P.Q. 782 (C.C.P.A.1981). The appellant's claimed design lies within the realm of designers of trays and related articles.
*2 When a Section 103 rejection is based upon a combination of references, there must be a reference, the design characteristics of which are basically the same as the claimed design. In re Rosen, 673 F.2d 388, 213 U.S.P.Q. 347 (C.C.P.A.1982). The designs of other references may properly be relied upon for modification of the basic design when the references are so related that the appearance of certain ornamental features in one would have suggested the application of those features to the other. In re Glavas, 230 F.2d 447, 109 U.S.P.Q. 50 (C.C.P.A.1956). The tray illustrated in the Plexiglas reference is directed to the same general type of tray as the claimed invention, namely, a rectangular serving tray with handles adjacent the top ledge of the tray's short ends. We consider this illustration of a tray in Plexiglas to satisfy the Rosen requirement of an ornamental design basically the same as the claimed design.
The Plexiglas tray is appropriate inasmuch as the shape of the tray including the proportions, the wall height and the position of the handles on the short side of the rectangular tray, is nearly identical to the features of the appellant's design. The main difference between the appellant's design and that of the Plexiglas tray is the enlargement of the handles and the curved corners of the tray. The secondary art relied upon by the examiner clearly shows this arrangement to have been conventional in the identical art area of the Plexiglas tray. We agree with the examiner that it would have been obvious to one of ordinary skill in the art of the designer of trays to modify the Plexiglas design by adopting the elongated handle configuration of the secondary references without hindsight of the appellant's design.
The appellant's argument that the Plexiglas reference is not a Rosen type reference is believed in error and we find no hindsight in the modification of the Plexiglas tray following the teachings of the secondary analogous prior art.
The decision of the examiner is affirmed.
37 C.F.R. 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS and INTERFERENCES
Robert F. Stahl
Verlin R. Pendegrass
FNa1. The claim format utilized herein is improper (37 C.F.R. 1.153 and M.P.E.P. § 1503.01, page 1500-2, "Claim"), because of the inclusion of the term "substantially." We have, in this decision, considered the claim as directed to the ornamental design for a serving tray as shown and described (the description referring herein only to the reference in the specification to the various figures). Compare with In re Blum, 374 F.2d 904, 153 U.S.P.Q. 177 (C.C.P.A.1967); Ex parte Kahn, 116 O.G. 2008, 1905 C.D. 212; Ex parte Kurz, 113 O.G. 2215, 1904 C.D. 557. As stated by Commissioner Allen in Ex parte Kahn:
"Whatever form the claim takes, it includes nothing more nor less than the design which the appellant discloses as the one which he has invented. He cannot change his design by changing the wording of his claim, and the attempt to do so is objectionable because [it is] likely to confuse the public."
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