In re Zahn
This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board) affirming the examiner’s rejection under
BACKGROUND
The Application
Zahn’s claimed invention is an ornamental design for a drill tool. Figs. 1-4 of the application drawings are:
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Fig. 1 is an elevation of a drill bit, Fig. 2 is a top end view, Fig. 3 a section on the line 3-3 of Fig. 1, and Fig. 4 is a partial elevation from the right side of Fig. 1.
Involved here are the propriety of using dotted or broken lines in design patent drawings, section 1503.02 of the Manual of Patent Examining Procedure (MPEP) as amended, supposedly to comply with statements this court made in In re Blum,
The application as filed indicated in its title that it sought protection for a design “for the Shank of a Drill Bit.” The original claim, in the prescribed form long required by 37 C.F.R. 1.153(a),
The ornamental design for a Shank of a Drill Bit as shown and described.
The description in the specification read:
The phantom representation of the cutting portion of the drill bit is made in the drawings merely for the purpose of illustrating the type of cutting portion that may be formed integral with the shank portion to form the drill bit.
This must be taken together with the description of Fig. 1 which initially read:
FIGURE 1 is a side elevational view of the shаnk of a drill bit illustrating one embodiment of the new design and showing the cutting portion of the drill bit in phantom.
The oath, using the title in the customary way, said that applicant had invented the described design for a shank of a drill bit. So did a second oath required by the examiner to correct an omission.
Examiner’s Actions
Having made it crystal clear he described and desired to patent a design for a drill bit shank, appellant encountered, in the first office action, opposition from the examiner, who rejected the claim under
Appearance of claimed article indefinite as a result of the failure to disclose a complete article of manufacture in full lines. Broken line disclosure is not claimed, nоte M.P.E.P. 1503.02 and In re Blum,153 U.S.P.Q. 177 .
Appellant responded, evidently after study of Blum, without changing his drawing, by amending his description of it so it read (changed matter emphasized):
The phantom representation of the cutting portion of the drill bit is made in the drawings merely for the purpose of illustrating the environment in which the shank of this invention is used. The structure shown in broken lines is not part of the design sought to be patented.
He cited the provision of MPEP 1503.02 expressly permitting the use of broken lines to show environmental structure and reiterated that the cutting part of the article shown “does not embody the design,” consistent with his claim that his design was for a shank portion of a drill bit.
The examiner countered with his second action, dropping his
§ 171 Patents for designs
Whoever invents any new, original and ornаmental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title [Title 35] relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
Citing
Claim rejected as failing to be directed to discrete article of manufacture. Twist drills are one article of manufacture having shank portions, which are not separate elements, separately protectable as articles of manufacture. Situation here is generally analogous to a screwdriver having a blade and a shank portion.
In an evident (and in our view mistaken) effort to comply with the еxaminer’s views of the law, appellant responded by amendments of which he said:
The title, specification and claim have been amended to recite a complete articleof manufacture rather than merely a portion thereof.
He thoroughly amended his specification and claim by deleting all references to shank of a drill bit and substituting “Drill tool” or “tool” while leaving his drawings untouched.
The examiner’s response was a final rejection saying:
The rejection of the claim as failing to be directed to a discrete article of manufacture under35 U.S.C. § 171 has not been shown to be in error and is consequently repeated and made final.
The claim now reads in its present form on appeal:
The ornamental design for a Drill tool or the like as shown and described.
The thus frustrated applicant filed a request for reconsideration and later aрpealed to the board arguing in vain that a “Drill tool” is in fact a “discrete article of manufacture.” The examiner’s Answer on appeal asserted, nevertheless, that the claim “was in fact the same claim as originally filed” because “the claim * * * is the drawing — no more and no less” and is therefore still directed to the shank of a drill tool because the cutting portion, shown in phantom, is “disclaimed” in the special description. He argued for his rejection on the sole ground that the claim does not conform to
The case was fully briefed before the board and orally argued not only by appellant but also by the examiner. In a very detailed opinion, the board not only affirmed the examiner’s
In the first part of its opinion, sustaining the examiner, the board included the entire specification and claim as amended,
In view of our conclusion that only the shank portion, rather than the entire tool, is being claimed, we feel constrained by Blum (supra) to hold that a design patent cannot properly be granted for the ornamental design of a portion only of an ■ article of manufacture. [Emphasis, except “supra,” is ours.]
In connection with this statement, the board had said earlier in its opinion:
During the hearing, the examiner stated that sufficient views are present [in the drawings], he understands how to make 'and use the illustrated tool and that he knows the metes and bounds of the subject matter appellant is seeking to claim. The examiner characterized the claim as covering оnly the shank portion * * *. [Emphasis ours.]
Thus, both the examiner and the board said that they knew what was being claimed and that the design claimed was for only the shank portion of a drill tool or the like. (The significance of this will appear in our consideration of the board’s new rejection.)
We shall not attempt to summarize the board’s explanation of its new rejection, which is grounded on
The claim is rejected under 35 U.S.C. § 112 , second paragraph, as failing to claim the subject matter appellant regards as his invention. In re Conley et al.,490 F.2d 972 ,180 USPQ 454 (CCPA 1974).
Appellant regards as his invention for purposes of meeting the requirements of35 U.S.C. § 171 an entire drill tool in view of the title. The title is of great importance in a design application. It serves to identify the article in which the design is embodied by the name generally used by the public.
However, appellant regards the claim to be only for shank portions of the drill tool. Thus, appellant intends that the claim would cover all sorts of undisclosed drill tool appearances, no matter what relatiorj the diameter and length the cutting portion might have to the shank portion, and no matter what the effect on the appearance of the drill tool as a whole would be. Inasmuch as the claim does not conform to appellant’s arguments, there is clearly a question as to what is being claimed and the claim is therefore not in compliance withSection 112 .
Appellant requested reconsideratiоn by the board, dealing separately with (1) the board’s affirmance of the examiner’s rejection under
Relying on Blum, appellant insisted that this court there recognized that an article illustrated in a design patent can have parts in which the new design is embodied, and other parts which embody none of the new design, the latter being termed “environment.” Stated another way, he argued that Blum recognized explicitly that a novel design may reside in only a portion of an article of manufacture. To illustrate the point, appellant produced a copy of U.S. Patent D-89,448 which issued March 14, 1933, to Northup, the appellant in the Northup case cited by the examiner, on a parent application of the one involved in that ease, which identifies the patent in a footnote. The patent is entitled “Design for an Automobile Body,” claims a design “for an automobile body, substantially as shown and described,” shows most of an automobile body in which only the windshield portion is shown in solid lines, all the rest being in dotted lines, and contains explanatory matter in the specification, which we set forth in the footnote, showing that what is claimed in the patent is only a design for thе windshield portion of the body.
On point (2), the board’s new
The board’s second opinion found nothing new to consider on the
As to the new rejection§ 112 , appellant concedes that the article of manufacture in which the ornamental design is embodied is an entire drill tool. Both the title and the claim so indicate. However, the basis of this rejection is that the drawings, by showing the cutting tool portion in broken lines, demonstrate that the cutting portion of the article is not part of the claimed subject matter, viz, the ornamental design of the article of manufacture. Therefore, notwithstanding the title and the claim which both specify a drill tool, appellant seeks to establish an exclusive property right in the appearance of merely the shank portion of the entire article of manufacture.
A claim limited to just the design appearance of the shank portion would not be to the design appearance of an article of manufacture. A claim to the design appearance of a shank portion would be totally independent of the design appearance of the entire drill tool since the cutting portion could have any length, any diameter, and be of any shape. To illustrate a design appearance of an article of manufacture, the design appearance including the length, diameter and shape of the cutting portion must somehow be correlated with the design appearance of the shank portion.
If a patent is to be granted, we think the title and claim should be commensurate with the scope of protection accorded so that interested parties will be able to determine, without the need for an adjudication in the courts, the boundaries of protection involved to evaluate the possibility of infringement and dominance.
OPINION
The
Picking up where the board left off, we advert to the fact that the examiner gave up his
The board, likewise, in its main opinion, concluded “that only the shank portion, rather than the entire tool, is being claimed * * * >f
Our own consideration of the application in its present form makes it perfectly clear to us what is being claimed and what is not within the scope of the claim. It also
The
Turning to the examiner’s final rejection based on non-compliance with
If, as we hold, a design for an article of manufacture may be embodied in less than all of an article of manufacture, it is apparent that the principal reason given by board for its decision involves a non sequitur. It reasoned that the claim had to be rejected because “appellant has disclaimed the cutting portion of the claimed DRILL TOOL * * *” and “only the shank portion, rather than the entire tool, is being claimed * * That, we hold, is not a valid reason for rejecting a claim. Furthermore, it will be noted, the board erred in treating the claim as directed to a drill tool and only to the shank portion of a tool — the article itself rather than the design for the article. That is the same flaw that persists in MPEP 1503.02, which speaks of the “designed аrticle” and prohibits dotted lines therein, because, quoting what we said in Blum, “There are no portions of a design which are ‘immaterial’ or ‘not important’.” We did not there speak of a “designed article” but of a design; note the original emp'hasis. An article may well have portions which are immaterial to the design claimed. Blum does not support the present MPEP language.
The only precedent relied on by the examiner was the 1932 board decision in Ex parte Northup, which appears to us to have been inconsistent with the contemporaneous act of the PTO in issuing Northup patent No. D-89,448, referred to in the opinion in that case. The board there said Northup could not claim the design for the “forward corner” of an automobile body because it was not “a complete article of manufacture,” since it was “never manufactured and sold as a separate article of manufacture.” Patent D-89,448, as here, has a claim referring to a complete article, namely, “an automobile body” but when the claim is read, as it must be, in conjunction with the specification and drawing, it is clear that the claim is for the design of the windshield portion only, which is shown in solid lines in the drawing, all the rest of the body being in dotted or broken lines. One board decision is not binding on the construction of a statute; and, of course, we are not saying the issuance of one patent is a precedent of much moment. Both are no more than food for thought. We turn for guidance to a higher authority.
In the Supreme Court case of Gorham Co. v. White,
The PTO having raised no issue based on the other qualifications found in
The board “felt constrained” to make its holding by our 1967 Blum opinion but did not say why. Nor do we see why. The issue in Blum was obviousness but a preliminary question was identification of a design; as we said, there was internal PTO disagreement as to what design was there claimed because of lack of clarity in the description. The problem revolved around the use of dotted lines and their explanation or lack of it. We found the provisions of thе MPEP as then written conducive to the confusion. We criticized the use of dotted lines to show any part of the design sought to be patented and the use of “dominant feature” statements in conjunction with a dotted-line showing of part of the design, as distinguished from its environment. As noted by the board here, the MPEP has now been changed. It is greatly improved but still lacks clarity. (See note 4, supra.) We have searched the Blum opinion in vain, however, for any statement justifying the board’s statement that an ornamental design cannot be incorporated or embodied in something less than an entire article of manufacture. What we have found, however, is a clear statement, which we feel constrained to emphasize again, which supports appellant’s position in this case (
There is a distinction to be observed between parts of the total article illustrated, in which a new design is embodied, and parts of that article which embody none of the design. [Original emphasis.]
Nothing in our opinion in Blum, or the decision therein, compels, or even supports, the
Our review of the complex prosecution of the present application leaves us with the feeling thаt the character of the design here disclosed may have unconsciously influenced the decisions made by reason of certain matters on which the PTO has remained silent. We have in mind questions on which we can express no opinion because we are a court of review and do not pass on issues not raised, such as whether the shank is “ornamental” or dictated by function or is substantially concealed or obscured while the shank is in normal use. In re Stevens,
The dissenting opinion reliеs heavily on a presumed “uniform, consistent, long-standing view of the PTO,” citing in support Ex parte Northup, supra, a 1932 board decision which was even contemporaneously inconsistent with issuance of a patent to Northup the very next year on a windshield portion of an auto body. The Northup decision is a “one swallow does not make a summer” situation. A casual inspection of currently issued design patents in the 1979 Official Gazette confirms there has been no such “consistent construction” and that it does not exist even today, designs for parts of articles having been regularly patented where the designs have been so described.
The decision of the board is reversed.
REVERSED.
BALDWIN, Judge, dissenting, with whom WATSON, Judge, joins.
I disagree that the question before the court is in any way related to the presence or absence of the dotted lines found in the drawings of appellant’s claims. I suggest that the problem is much more closely tied to the very foundation of design patent law. The majority decision makes wholesale changes to a century of practice which has required disclosure of the article to which a design is applied. The decision in this case permits this appellant, and applicants who follow him, to effectively claim abstract designs without disclosing a sufficient amount of the articles in which they are embodied to allow an observer to evaluate the overall visual impression of that article.
My dissent rests on the construction to be given “design for an article of manufacture” as provided in
I will agree with the majority that a design may well be embodied in less than all of an article of manufacture. However, there is ample judicial and administrative precedent to support a construction of
For instance, Gorham Co. v. White,
[T]he thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. The law manifestly contemplates that giving certain new and originаl appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. * * * It is the appearance itself which attracts attention and calls out favor or dislike. It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recompense. * * * As the acts of Congress embrace only designs applied, or to be applied, they must refer to finished products of invention rather than to the process of finishing them, or to the agencies by which they are developеd. [Supra at 525.]
Although the patent in Gorham was for a design for handles of spoons and forks, the disclosure therein was clearly sufficient to allow the Court to evaluate the overall visual impression of those utensils. Gorham cannot be read to extend the protection of
A later Supreme Court case, relying on Gorham, stated the test for infringement in this manner:
“[T]he true test of identity of design is sameness of appearance, — in other words, sameness of effect upon the eye; that it is not necessary that the appearance should be the same to the eye of an expert, and that the test is the eye of an ordinary observer, the eyes of men generally, of оbservers of ordinary acuteness, bringing to the examination of the article upon which the design has been placed that degree of observation which men of ordinary intelligence give.” Ripley v. [Elson] Glass Co.,49 F. 927 . [Emphasis ours. Smith v. Whitman Saddle Co.,148 U.S. 674 , 679,13 S.Ct. 768 , 770,37 L.Ed. 606 (1893).]
Thus, in this instance, it is the article upon which the design has been placed that is observed and its appearance determined.
The frequently cited passage from Pelouze Scale & Mfg. Co. v. American Cutlery Co. et al.,
Design, in the view of the patent law, is that characteristic of a physical substance which, by means of lines, images, configuration, and the like, taken as a whole, makes an impression, through the eye, upon the mind of the observer. The essence of a design resides, not in the elements individually, nor in their method of arrangement, but in the tout ensemble — in that indefinable whole that awakens some sensation in the observer’s mind. Impressions thus imparted may be complex or simple; in one a mingled impression of gracefulness and strength, in another the impression of strength alone. But whatever the impression, there is attached in the mind of the observer, to the object observed, a sense of uniqueness and character.
This court, in determining the nonobvi-ousness of new designs under
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The dotted lines were sufficient in that instance for a comparison of that impression with the prior art.
I think it quite clear, as illustrated by the selection of cases above, that the overall appearance of the article is considered in questioning infringement or validity of issued design patents as well as the nonobvi-ousness of claims in design applications. The quantum of disclosure must include that article.
With such judicial support, it is not surprising that the administrative practice of the PTO has amply reflected a construction that
It is required in 37 C.F.R. 1.153 that “[t]he title of the design must designate the particular article. * * * The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.” In 37 C.F.R. 1.152 it states that “[t]he design must be represented by a drawing made in conformity with the rules laid down for drawings of mechanical inventions and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article.”
These cited portions are found in the 1949 codification of Title 37 of the Federal Regulations.
81. The proceedings in applications for patents for designs are substantially the same as in applications for other patents. Since a design patent gives to the patentee the exclusive right to make, use, and vend articles having the appearance of that disclosed, and since the appearance can be disclosed only by a picture of the article, the claim should be in the broadest form for the article as shown.
84. The design must be represented by a drawing made to conform to the rules laid down for drawings of mechanical inventions.
In 37 C.F.R. 1.152, old rule 84 was incorporated, with the significant addition that the drawing constitute a complete disclosure of the appearance of the article.
In 37 C.F.R. 1.153, old rule 81 was incorporated, specifying' that the title of the design designate the particular article, and more particularly showing that the claim is to the design for the article as shown and desсribed. The Rules of Practice must be granted the force and effect of law unless they are inconsistent with statute. In re Rubinfield,
The solicitor argues that at least since Ex parte Northup,
The majority dismisses Northup as “[o]ne board decision * * * not binding on the construction of a statute.” I disagree. Faced with the Rules of Practice dating back to 1904 together with the earlier judicial precedents cited above, I am inclined to agree with the solicitor that the Northup view represents a uniform, consistent, longstanding view of the PTO and as such must be given consideration as an indicator of the meaning of the law.
Prior to Application of Blum,
The dicta of Blum made the distinction between a design for an article and an article in which a design is embodied. I hesitate to regard that dicta as a sufficient basis for extending the scope of
Appellant admits in his brief that the portions of the drawing shown in broken lines are not to be considered as even exemplary of the appearance of the article in which his design is embodied. Since appellant fails to disclose sufficient detail of the drill bit to allow one to appreciate the overall appearance of that article, I consider the disclosure not to be in conformance with
I would affirm the decision of the board.
Notes
. There are 4 other figures showing a “second embodiment” which are not germane to the issues here. The PTO has said nothing about them.
. In pertinent part reading, “The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.”
.
. MPEP Section 1503.02, 2nd paragraph after the rule, reads:
The ornamental design which is being claimed must be shown in solid lines in the drawing. Dotted lines for the purpose of indicating unimportant or immaterial features of the designed article are not permitted. There are no portions of a claimed design which are immaterial or unimportant. In re Blum,
Appellant’s criticism is that to conform to Blum the emphasized words should be replaced with the word “design.” As explained infra, we agree.
. Even appellant has had some difficulty, before us as well as before the board, in following his own insight at times as when, for example, he speaks of granting a design patent for an article of manufacture, or of claiming a “drill tool.” A design patent is, in every case, for a design. '
. “The dominant feature of my new design comprises the appearance of the forward corners and parts surrounding the windshield, as shown in the full lines. The parts shown in the dotted lines are illustrative of a conventional standard type of automobile body * * *. The said dominant feature may be employed and embodied without substantial change, in the following conventional types of closed automobile bodies: coupés, four-door sedans, coaches or two-door sedans and victorias.”
. It was even clearer from the original specification and claim what scope of protection was being sought and what appellant regarded as his invention. The title, the specification and drawing, and the claim were all consistent and “commensurate. ’ ’
. For example, Des. No. 251,577, Chair or similar article 4/17/79 (pedestal support in dotted lines); Des. No. 252,282, Cabinet which houses components employed in surgery, 7/3/79 (3 instrument dials in dotted lines); Des. No. 252,352, Pair of automobile headlamp lenses, 7/10/79 (whole car body and wheels in dotted lines); Des. No. 252,457, Steering wheel rim, 7/24/79 (integral supporting bracket in dotted lines).
. As noted, infra, this аppellant avers that the overall appearance of the unitary drill bit is of no importance to him; the appearance of the shank portion being his “design.”
. A similar situation is found in the area of utility patents. The law does not provide protection for “ideas” or “inventive concepts” but rather requires that they be fleshed out in the form of a “process, machine, manufacture, or composition of matter.” An applicant does not claim a naked temperature; instead, he claims a process using that particular temperature.
. The 1952 Act did no more than codify the law as it existed prior to that time. The commentary by P. J. Federico on the 1952 Act goes so far as to say that the chapter of the act relating to design patents made no “substantive changes.”