Application of Laverne

• Citation: 356 F.2d 1003
• Decision Date: 10 March 1966
• Docket Number: Patent Appeal No. 7546.
• Parties: Application of Erwine LAVERNE and Estelle Laverne.
• Court: United States Court of Customs and Patent Appeals

356 F.2d 1003 (1966)

Application of Erwine LAVERNE and Estelle Laverne.

Patent Appeal No. 7546.

United States Court of Customs and Patent Appeals.

March 10, 1966.

Michael S. Striker, Gordon D. Coplein, New York City, for appellants.

Clarence W. Moore, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for Commissioner of Patents.

Before RICH, Acting Chief Judge, and MARTIN, SMITH and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of application serial No. D-68,190, filed January 4, 1962, for a Design for Chair or the Like.

The sole issue, as we see it, is the obviousness of appellants' design, under 35 U.S.C. § 103, in view of the single reference relied on by the board, the design patent to Eero Saarinen, Des. 181,945, issued Jan. 21, 1958. The Patent Office Solicitor so regarded the issue, but neither the examiner nor the board referred to any statutory ground of rejection.

Appellants' chair and the Saarinen chair are of the same general type in that each consists of a one-piece molded seat supported on a pedestal (the latter being no part of the design claimed), a back, and sides.

We reproduce front, a perspective, and side views of appellants' chair and below them corresponding views of the Saarinen reference chair.

Appellants' claim is conventional: "The ornamental design for a chair or the like as shown and described." See Patent Office Rule 153. However, there is no description other than the showing of the drawings.

The Patent Office does not question novelty.

The following excerpts from the Examiner's Answer show his grounds of rejection (emphasis ours):

It is the Examiner\'s position that the chair disclosed and claimed herein is substantially similar in overall appearance to the Saarinen chair and as such it possesses no patentable merit thereover.

Applicant\'s sic omission of the peripheral edge employed by Saarinen is noted. However, the omission of this flange is well within the expected skill of a competent designer and in any event it is insufficient as a basis for patentability.

* * * * * *

Appellant directs attention to the lipped edge of Saarinen, the angle of the side walls and, to the curvature of the back thereof when viewed in side elevation.

These remarks, however, are held to be directed to variations which constitute differences in minutiae. * * *

* * * * * *

Consequently, it is not believed that the difference between the Saarinen chair and the chair disclosed herein can be called inventive without defining the term invention to be nothing more than the sort of variation to be expected from any ordinarily skillful mechanic conversant with the art involved.

The board, in affirming, expressed its reasons in one paragraph, saying:

* * * the over-all similarity between the two designs is so close that the ordinary individual would take them to be mere variations of the same design rather than essentially new or different designs. In re Johnson, 36 CCPA 1175; 1949 C.D. 458; 627 O.G. 911; 175 F.2d 791; 82 USPQ 199, and In re Lamb, 48 CCPA 817; 1961 C.D. 219; 769 O.G. 1051; 286 F.2d 610; 128 USPQ 539.

The patentability of designs is provided for in 35 U.S.C. § 171, the second paragraph of which reads:

The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

On the patentability issue, novelty under 35 U.S.C. § 102 not being questioned, the statutory provision which controls here is 35 U.S.C. § 103. Stating the issue in the words of the statute, it is whether

* * * the differences between the subject matter sought to be pattented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

It will be noted that section 171 distinguished between "patents for inventions" and "patents for designs," which would seem to indicate a legislative consciousness that "inventions" and "designs" are different in kind. Because they are, the language of section 103, designed to apply to inventions in the field of process, machine, manufacture, and composition of matter (35 U.S.C. § 101), is somewhat difficult to apply to the problem of the patentability of designs.

What is "the art to which the subject matter pertains" in this case? Is it the molded chair "art" or is it the ornamental design "art"? In what field is the "inventor" of the design operating?¹ Since those who create designs are designers, not chair makers, it would seem to follow that he is operating in the field of industrial design and that it is the "art" involved.

The next question, then, is who is a "person having ordinary skill in" this art? In the mechanical, chemical, and electrical "arts" we have distinguished, since Hotchkiss v. Greenwood, 52 U.S. 248, 13 L.Ed. 683 (1850), between "an ordinary mechanic acquainted with the business" and the "inventor"; between the craftsman or routineer on the one hand and the innovator on the other, now, by statute, the innovator who makes unobvious innovations. With respect to such inventions, these two categories of persons are workers in the same "art."

In the field of design the analysis is not so easy. Design inventing or originating is done by designers. The examiner here has referred to "the expected skill of a competent designer" as the basis of comparison. However, if we equate him with the class of mechanics, as the examiner did, and refuse design patent protection to his usual work product, are we not ruling out, as a practical matter, all patent protection for ornamental designs for articles of manufacture? Yet the clear purpose of the design patent law is to promote progress in the "art" of industrial design and who is going to produce that progress if it is not the class of "competent designers"? We cannot equate them with the mechanics in the mechanic vs. inventor test for patentability. Correspondingly, we cannot solve the problem here, obviousness, by using for our basis of comparison the inventor class in the field of industrial design.

This court recognized and wrestled with the inherent difficulties of this problem under the old statutes twenty years ago in In re Faustmann, 155 F.2d 388, 33 CCPA 1065, with respect to the "existence of invention" and appreciated that the problem "must necessarily be approached from a different angle."

The codification of the design law provisions in 1952, continuing as it did the statutory provisions for design patents without change in substance (see former statutes R.S. 4929 and 4933), did nothing to alleviate the difficulties. One thing it did do, however, as the examiner seems not to have appreciated, was to abolish as the test whether or not the design is "inventive," substituting the unobviousness test of section 103.

We feel that the test of patentability of an admittedly new design cannot be whether it is no more than a "competent designer" might produce. That would be parallel to saying of a mechanical invention that it is no more than a "competent inventor" might produce. The test must be obviousness, for that is the dictate of section 103, but it must be applied in a way which will implement the legislative intent to promote progress in the field of industrial design by means of the patent incentive. This will not be done by denying patents to everything competent designers produce by the skill of their calling.

Following the mandate of section 103, it would seem that what we have to do is to determine obviousness to the ordinary intelligent man. The test is inherently a visual test, for the design is nothing more than appearance, and the appearance is that of the article as a whole. In re...