Application of Zahn
| Decision Date | 21 February 1980 |
| Docket Number | Appeal No. 79-560. |
| Citation | 617 F.2d 261 |
| Parties | Application of Hajo ZAHN. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Paul J. Lerner, New Haven, Conn., attorney of record, for appellant.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Harry I. Moatz, of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN and MILLER, Associate Judges, and WATSON,* Judge.
This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board) affirming the examiner's rejection under 35 U.S.C. § 171 and entering a new rejection under 35 U.S.C. § 112 of the single claim of design patent application serial No. 611,034, filed Sept. 8, 1975. We reverse.
Zahn's claimed invention is an ornamental design for a drill tool. Figs. 1-4 of the application drawings are:1
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, 374 F.2d 904, 54 CCPA 1231, 153 USPQ 177 (1967), other sections of Chapter 1500 of the MPEP, the construction of 35 U.S.C. § 171, and the distinction, largely disregarded by the PTO in this case, between a design for an article of manufacture and the article itself.
It will be observed that the above figures show a drill bit of the masonry drill type, the shank portion being shown in full lines and the twist-drill portion in broken lines. The drill bit is assumed to be integral — all in one piece.
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),2 read:
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 shank 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.
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 35 U.S.C. § 112 solely for the following reason:
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, note 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 § 112 indefiniteness rejection and making a new one based on the principal design patent statute, 35 U.S.C. § 171, which reads in full:
Citing § 171, his entire explanation of the rejection was:
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 examiner'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 article of 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 under 35 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 appealed 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 § 171 because it is not directed to "a discrete article of manufacture." Apart from the statute, the only authority cited by the examiner to support his position was a single decision by the Board of Appeals in 1932, Ex parte Northup, 24 USPQ 63, which, he opined, states the law as it has been ever since. The solicitor said at oral argument he knows of no other case.
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 § 171 rejection but added a new rejection under 37 C.F.R. 1.196(b) based on § 112.
In the first part of its opinion, sustaining the examiner, the board included the entire specification and claim as amended, 35 U.S.C. § 171, reported on what appellant and the examiner had argued at the hearing, quoted at length from this court's Blum opinion, and discussed the Commissioner's Notice of February 26, 1969, 860 O.G. 999, and amendment of MPEP 1503.02 which resulted from Blum and which the examiner had said he was trying to follow. The board then stated its reasons for sustaining the examiner in the following paragraph:
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 only 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 § 112, second paragraph,3 but set it forth in full:
Appellant requested reconsideration by the board, dealing separately with (1) the board's affirmance of the examiner's rejection under § 171 and (2) the board's new rejection under § 112. In the first part, appellant argued that Blum supports...
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