Application of Blum

• Decision Date: 06 April 1967
• Docket Number: Patent Appeal No. 7766.
• Citation: 374 F.2d 904,153 USPQ 177
• Parties: Application of Louis BLUM.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

153 USPQ 177, 374 F.2d 904 (1967)

Application of Louis BLUM.

Patent Appeal No. 7766.

United States Court of Customs and Patent Appeals.

April 6, 1967.

James C. McConnon, Philadelphia, Pa., John F. Smith, Washington, D. C., for appellant.

Joseph Schimmel, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of the claim in appellant's application serial No. 67,307, filed October 30, 1961, for "Design for Handrail Unit."

The "handrail unit" embodying the design sought to be patented, which is the configuration of the goods, is illustrated in the two figures of the application drawing to which we have added, in Fig. 2, the line x-x. Fig. 1 was amended to comply with the requirements of the examiner not material to our discussion so we have not shown the amendment.

The principal issue is obviousness under 35 U.S.C. § 103 in view of the single reference:

Blumcraft Aluminum Railings Catalog,

M-57, c. 1956, pages 16, 21, and 25

The claim reads:

The ornamental design for a handrail unit, as shown and described.

The words "and described" were added at the request of the examiner along with a sentence in the specification, also suggested by him, reading: "The dominant features of my new design reside in the portions shown in full lines." These additions were made because the examiner first objected to the inclusion in the drawings of the handrail supports shown in broken lines. He also objected that the broken line showings were not consistent. Applicant responded that the design of Fig. 2 was a minor modification of the design shown in Fig. 1 and declined to remove the broken line showings. Thereafter the examiner held the claim to be indefinite under 35 U.S.C. § 112 "in that the dominant features of the claimed design have not been pointed out in the specification." He said this rejection could be avoided by stating in the specification that: "The dominant features of my new design reside in the portions shown in full lines." He also said, "The word and described should then be inserted in the claim after `shown'." Appellant made these changes and the examiner then gave his final rejection based on obviousness in view of the reference catalog pages. Appeal to the board followed.

These facts have led to internal Patent Office disagreement over what design is being claimed. At argument, appellant said this is a major issue in the case. The examiner's answer states:

The herein disclosed and claimed design relates to a handrail unit comprising a handrail, a post, and a connecting bracket, as best shown on the drawing. As stated in the specification, the dominant features of the design are shown in full lines, namely the handrail per se. The claim is directed to two embodiments of the design wherein the handrail is attached to either the top (Fig. 1) or the side (Fig. 2) of the post. Emphasis ours.

The board does not so view the matter. Its opinion states:

We note at the outset that the broken or dotted line showing in design drawings is an immaterial part of the design as to specific shape or configuration. It only indicates the general article with which the dominant features of the design shown in full lines are associated. Manual of Patent Examining Procedure, Section 1503.02; In re Wise 52 CCPA 936, 340 F.2d 982, 144 USPQ 354. It is, therefore, immaterial to the patentability of the instant case whether the supporting means for the rail are of the specific form shown in Figure 1 or Figure 2. Emphasis ours.

As it happens, all of the supporting structure is disclosed in the reference relied on and therefore it can make no difference to the outcome but we have troubled ourselves to set forth this disparity of views about what is being claimed because the debate is carried forward into the briefs before us and because if the Patent Office does not more rigorously enforce some sort of standardization about the meanings of drawings in design cases, chaos will result. When the words of the formal claim, read on the drawings in the light of the specification, convey one meaning to the examiner who specializes in design patents and something quite different to the three members of the board, how can the claim be said to meet the statutory requirement of definiteness?

We venture to suggest that the examiner was on the right track when he requested removal of the broken lines; that if the applicant, however, wished to insist that they represented parts of the design sought to be patented they should have been converted to full lines; and that they were either part of the design or they were not and it was not in the interest of clarity of claiming to insert the "dominant feature" statement under the circumstances of this case.

A clear description not having been arrived at in the Patent Office by appropriate proceedings, we are faced with an examiner's rejection based on one assumption about what is claimed and a board affirmance of it based on an entirely different assumption, together with much debate about whether the MPEP is or is not binding as law and the significance of our opinion in the Wise case wherein we held that dotted...