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1504.01(c) Lack of Ornamentality [R-2] - 1500 Design Patents
1504.01(c) Lack of Ornamentality [R-2]
I. FUNCTIONALITY VS. ORNAMENTALITY
An ornamental feature or design has been defined as one which was "created for the purpose of ornamenting" and cannot be the result or "merely a by-product" of functional or mechanical considerations. In re Carletti, 328 F.2d 1020, 140 USPQ 653, 654 (CCPA 1964); Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp. 333, 337, 127 USPQ 452, 454 (S.D.N.Y. 1960), aff'd, 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961). It is clear that the ornamentality of the article must be the result of a conscious act by the inventor, as 35 U.S.C. 171 requires that a patent for a design be given only to "whoever invents any new, original, and ornamental design for an article of manufacture." Therefore, for a design to be ornamental within the requirements of 35 U.S.C. 171, it must be "created for the purpose of ornamenting." In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).
To be patentable, a design must be "primarily ornamental." "In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article." L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a "primarily functional invention is not patentable" as a design.
A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a determination based on their ornamental contribution to the design as a whole.
While ornamentality must be based on the entire design, "[i]n determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered." Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986). The court in Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990), states that if "significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations", this information may establish the ornamentality of a design.
"However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function." Avia Group International Inc. v. L. A. Gear California Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988). The distinction must be maintained between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.
**>II. < ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER
To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. The court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), stated that "the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."
>The proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality is an evaluation of the appearance of the design itself. The examiner's knowledge of the art, a reply to a letter of inquiry, a brochure emphasizing the functional/mechanical features of the design, the specification of an analogous utility patent (the applicant's or another inventor), or information provided in the specification may be used to supplement the analysis of the design. If a design is embodied in a specific mechanical article, the analysis that the design lacks ornamentality because its appearance is dictated by functional requirements should be supported by reference to utility patents or some other source of information about the function of the design. If the design is embodied in an article that has a more general use, such as a clip, the analysis and explanation as to why the design lacks ornamentality should be detailed and specific. The examiner's contention that the specific appearance of the claimed design lacks ornamentality may be supported by the holding of the court in In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964), that a design to be patentable must be "created for the purpose of ornamenting" the article in which it is embodied. The presence or lack of ornamentality must be made on a case by case basis.
Knowledge that the article would be hidden during its end use based on the examiner's experience in a given art or information that may have been submitted in the application itself would not be considered prima facie evidence of the functional nature of the design. See Seiko Epson Corp v. Nu-Kote Int'l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999). "Visibility during an article's 'normal use' is not a statutory requirement of §171, but rather a guideline for courts to employ in determining whether the patented features are 'ornamental'." Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988). If there is sufficient evidence to show that a specific design "is clearly intended to be noticed during the process of sale and equally clearly intended to be completely hidden from view in the final use," it is not necessary that a rejection be made under 35 U.S.C. 171. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). The mere fact that an article would be hidden during its ultimate end use is not the basis for a rejection under 35 U.S.C. 171, but this information provides additional evidence to be used in support of the contention that the design lacks ornamentality. The only basis for rejecting a claim under 35 U.S.C. 171 as lacking in ornamentality is an evaluation of the design itself in light of additional information, such as that identified above.<
Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: (A) common knowledge in the art; (B) the appearance of the design itself; (C) the specification of a related utility patent; >or< (D) information provided in the specification**.
A rejection under 35 U.S.C. 171 for lack of ornamentality must be supported by evidence and rejections should not be made in the absence of such evidence.
*>III. < REJECTIONS MADE UNDER 35 U.S.C. 171
Rejections under 35 U.S.C. 171 for lack of ornamentality based on a proper prima facie showing fall into two categories:
(A) a design visible in its ultimate end use which is primarily functional based on the evidence of record; or
(B) a design not visible in its ** >normal and intended use as evidence that its appearance is not a matter of concern.< In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949) ** >;< In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).
When the examiner has established a proper prima facie case of lack of ornamentality, "the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under 35 U.S.C. 171 for lack of ornamentality may be overcome by providing evidence from the inventor himself or a representative of the company that commissioned the design that there was an intent to create a design for the "purpose of ornamenting." In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). >Attorney's arguments are not a substitute for evidence. Once a proper prima facie case of lack of ornamentality is established by the examiner, it is incumbent upon applicant to come forth with countervailing evidence to rebut the rejection made by the examiner. Evidence may be provided by the applicant or a representative of the company which commissioned the design to establish the ornamentality of the design by providing evidence of the motivation behind the creation of a design. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Int. 1993).< Form paragraph 15.08 or 15.08.01, where appropriate, may be used to reject a claim under 35 U.S.C. 171 for lack of ornamentality.
**>¶ 15.08 Lack of Ornamentality (Article Visible in End Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be "created for the purpose of ornamenting" the article in which it is embodied. See Seiko Epson Corp. v. Nu-Kote Int'l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999); Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 40 USPQ2d 1048 (Fed. Cir. 1996); Avia Group International Inc. v. L. A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986); In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Hygienic Specialties Co. v. H.G. Salzman, Inc., 302 F.2d 614, 133 USPQ 96 (2d Cir. 1962);A & H Manufacturing Co. v. Contempo Card Co., 576 F. Supp. 894 , 221 USPQ 67 (D. R.I. 1983); Blisscraft of Hollywood v. United Plastic Co., 189 F.Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961); Jones v. Progress Ind. Inc.,163 F.Supp. 824, 119 USPQ 92 (D. R.I. 1958); and Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. &Inter. 1993) .
The following evidence establishes a prima facie case of a lack of ornamentality: [1]
An affidavit/declaration under 37 CFR 1.132 may be submitted from applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claim were created with a concern for the appearance of the design not dictated by function.
Within the above affidavit/declaration, possible alternative ornamental designs which could have served the same function may also be submitted as evidence that the appearance of the claimed design was the result of ornamental considerations. L. A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993). Advertisements which emphasize the ornamentality of the article embodying the claimed design may also be submitted as evidence to rebut this rejection. Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997). Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. Seiko Epson Corp. v. Nu-Kote Int' l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999).
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Evidence may be provided by the applicant or a representative of the company which commissioned the design to establish the ornamentality of the design by providing evidence of the motivating factors behind the creation of the design. This information will enable the examiner to determine if the design as a whole was created with "thought of ornament" meeting the requirement of 35 U.S.C. 171 that a design be ornamental. In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Int. 1993).
Examiner Note
In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.
¶ 15.08.01 Lack of Ornamentality (Article Not Visible in its Normal and Intended Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality. To be patentable, a design must be "created for the purpose of ornamenting" the article in which it is embodied. The fact that the claim is hidden during its normal and intended use establishes that the design would be "primarily functional" and its appearancewould not be a matter of concern. See Seiko Epson Corp. v. Nu-Kote Int'l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999); In re Webb, 916 F.2d 1553,16 USPQ 2d 1433 (Fed. Cir. 1990); In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); Larson v. ClassicCorp., 683 F. Supp. 1202, 7 USPQ2d 1747(N.D. Ill. 1988); Norco Products, Inc. v. Mecca Development, Inc., 617 F. Supp. 1079, 227 USPQ 724 (D. Conn. 1985); C & M Fiberglass Septic Tanks, Inc. v. T &N Fiberglass Mfg. Co., 214 USPQ 159(D. S.C. 1981); Blisscraft of Hollywood v. United Plastic Co., 189 F.Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961); and Ex parte Webb, 30 USPQ 2d 1064 (Bd. Pat. App. & Inter. 1993).
The following evidence establishes a prima facie case of lack of ornamentality: [1]
In an attempt to establish that the appearance of the design is a "matter of concern" during the period between its manufacture and its ultimate end use, applicant may submit a showing that the ornamental appearance of the article was of concern to prospective customers/users or an affidavit/declaration from actual customers/users attesting to their concern with the design of the article. The "normal use" of a design during its commercial life is "limited to the ordinary function for which it was designed . items are not designed for sale, display, replacement or repair", Norco Products, inc. v. Mecca Development, Inc., 617 F. Supp. 1079, 227 USPQ 724 (D. Conn. 1985). Visibility during sale, display, replacement or repair does not demonstrate that the design is visible during normal use and will not avoid the requirement that applicant must establish that its ornamental appearance is of concern during its commercial life. Unless applicant is directly involved with the sale of the design or works with users of the design, he cannot provide factual evidence as to the reasons for the purchase/selection of the article embodying the design.
It would then be necessary to establish that during this period of visibility the design as a whole was created for the "purpose of ornamenting" or with "thought of ornament," and therefore, that the design is "primarily ornamental."
An affidavit/declaration under 37 CFR 1.132 may be submitted from applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claim were created with a concern for the appearance of the design not dictated by function.
Within the above affidavit/declaration, possible alternative ornamental designs which could have served the same function may also be submitted as evidence that the appearance of the claimed design was the result of ornamental considerations. L. A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993). Advertisements which emphasize the ornamentality of the article embodying the claimed design may also be submitted as evidence to rebut this rejection. Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997). Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. Seiko Epson Corp. v. Nu-Kote Int' l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999).
Attorney arguments are insufficient to establish the ornamentality of the claim as only the applicant or a representative of the company which commissioned the design can provide evidence of the motivating factors behind the creation of the design. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986); Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993).
This information will enable the examiner to determine if the design as a whole was created with "thought of ornament" meeting the requirement of 35 U.S.C. 171 that a design be ornamental. (In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Int. 1993)).
Examiner Note
In bracket 1, insert source of evidence of design lacking ornamentality, for example, an analysis of the design and a utility patent, a brochure, a response to a letter of inquiry.
<*>IV. < EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER
In order to overcome a rejection of the claim under 35 U.S.C. 171 as lacking in ornamentality, applicant must provide evidence that he or she created the design claimed for the "purpose of ornamenting" as required by the court in In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). This information must be submitted in the form of an affidavit or declaration under 37 CFR 1.132 over applicant's signature clearly explaining, specifically and in depth, which areas of the claimed design were created for primarily ornamental reasons. This may be demonstrated by showing that the creation of specific features was done with "thought of ornament." In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 655 (CCPA 1964). Evidence to show ornamentality may also be submitted by way of an affidavit or declaration under 37 CFR 1.132 from a representative of the company which commissioned the design, as these sources could establish the intent behind the creation of the design. Applicant may also show that the functional features of the design can be equally accomplished in other ways by giving specific examples which establish that design choice was the basis for the selection of features. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 40 USPQ2d 1048 (Fed. Cir. 1996); Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). Attorney arguments are insufficient to establish such intent, as only the applicant can know the motivation behind the creation of a design. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986); Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993).
The mere display of the article embodying the design at trade shows or its inclusion in catalogs is insufficient to establish ornamentality. Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). There must be some clear and specific indication of the ornamentality of the design in this evidence for it to be given probative weight in overcoming the prima facie lack of ornamentality. Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).
The examiner must then evaluate this evidence in light of the design as a whole to decide if the claim is primarily ornamental. It is important to be aware that this determination is not based on the size or amount of the features identified as ornamental but rather on their influence on the overall appearance of the design.
In a rejection of a claim under 35 U.S.C. 171 in which >some of< the evidentiary basis for the rejection is that the design would be hidden during its end use, the applicant must establish that the "article's design is a 'matter of concern' because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use." In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). >This concern may be shown by the submission of evidence that the appearance of the article was of concern during its period of commercial life by declarations from prospective/actual customers/users attesting that the ornamentality of the article was of concern to them. Unless applicant is directly involved with the sale of the design or works with users of the design, he or she cannot provide factual evidence as to the reasons for the purchase/selection of the article embodying the design.<
Once applicant has proven that there is a period of visibility during which the ornamentality of the design is a "matter of concern," it is then necessary to determine whether the claimed design was primarily ornamental during that period. Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N. D. Ill. 1988). The fact that a design would be visible during its commercial life is not sufficient evidence that the design was "created for the purpose of ornamenting" as required by the court in In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Examiners should follow the standard for determining ornamentality as outlined above.
"The possibility of encasing a heretofore concealed design element in a transparent cover for no reason other than to avoid this rule cannot avoid the visibility [guideline]... , lest it become meaningless." Norco Products Inc. v. Mecca Development Inc., 617 F. Supp. 1079, 1081, 227 USPQ 724, 726 (D. Conn. 1985). Applicant cannot rely on mere possibilities to provide factual evidence of ornamentality for the claimed design.
The requirements *>for< visibility **>of the design and that it was created for the "purpose of ornamenting" must be met for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use<.
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