In re Nalbandian ( 1981 )

NIES, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection under 35 U.S.C. § 103 by the examiner of appellant’s application, serial No. 792,482, filed April 29,1977, for “Combined Tweezer and Spotlight.” We affirm.

Background

The claimed ornamental design is for an implement referred to as an illuminable tweezer. The primary reference on which the examiner and the board relied is U.S. Patent Des. 175,259, issued to Johnson et al. (Johnson) on August 2; 1955, also for an illuminable tweezer. The respective designs are reproduced below:

As can be seen from these drawings, appellant’s design resembles Johnson’s in overall form. The only readily noticeable difference is in the fluting on the cylindrical sleeve which surrounds the body of the implement near the end housing the spotlight. The board agreed with the examiner that secondary references disclosed fluting similar to that in appellant’s design, as well as the slight differences in the pincers. However, as we consider it unnecessary to rely on these references, they are not reproduced herein.¹

The board, in affirming the examiner, stated:

It appears to us that the references are all from reasonably pertinent arts and the claimed design would have been obvious in view of such designs in the prior art. We arrive at this conclusion under Graham et al. v. John Deere Company, 383 U.S. 1, 86 S.Ct. 684, [15 L.Ed.2d 545] 825 OG 24, 148 USPQ 459 (1966), whether the test employs a “worker of ordinary skill in the art” or an “ordinary intelligent man.”

OPINION

The sole issue on appeal is whether appellant’s design would have been obvious within the meaning of 35 U.S.C. § 103. In the words of the statute, are

. . . the differences between the subject matter sought to be patented and the prior art . . . 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[?]

In In re Laverne, 53 CCPA 1158, 356 F.2d 1003, 148 USPQ 674 (1966), this court specifically rejected the interpretation generally given to the statutory language “one of ordinary skill in the art” as referring to a designer. The court concluded that this interpretation would not effectuate the intent of Congress to promote progress in designs since it would result in the denial of patent protection for the work of competent designers. Accordingly, it was held that the obviousness of designs over the prior art must be tested by the eyes of the “ordinary intelligent man,” who was also referred to as the “ordinary observer.”

Since the Laverne decision, the Second, Third, Tenth and District of Columbia circuits have specifically considered the “ordinary observer” test set forth therein and rejected it. These circuits continue to interpret “one of ordinary skill” as requiring obviousness to be tested from the viewpoint of the “ordinary designer.”² Since board decisions may be reviewed by the District of Columbia Circuit as well as this court, the PTO has been faced with two standards in design cases.

We believe it is appropriate to close this schism. Accordingly, with this case we hold that the test of Laverne will no longer be followed. In design cases we will consider the fictitious person identified in § 103 as “one of ordinary skill in the art” to be the designer of ordinary capability who designs articles of the type presented in the application. This approach is consistent with Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), which requires that the level of ordinary skill in the pertinent art be determined.

In Laverne, this court recognized that the statute does not specifically create a test for nonobviousness of a design which is different from that for inventions defined in 35 U.S.C. § 101. That § 103 applies to designs follows from 35 U.S.C. § 171, which states: “The provisions of this title relating to patents for inventions shall apply to patents for designs . . . . ” An ordinary intelligent man was, nevertheless, held to be the person skilled in the art within the meaning of § 103, rather than a designer working in the art, on the following rationale:

In the mechanical, chemical, and electrical “arts” we have distinguished, since Hotchkiss v. Greenwood, 52 U.S. 248 [11 How 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. [Id. at 1162, 356 F.2d at 1006, 148 USPQ at 676-77. Emphasis in original.]

If an “ordinary designer” test for designs were necessarily equivalent to applying an “ordinary inventor” test for inventions, we would not return to it here. However, the problem thus stated can be viewed as one created by semantics. The “ordinary designer” means one who brings certain background and training to the problems of developing designs in a particular field, comparable to the “mechanic” or “routineer” in non-design arts. We do not have a name for that person in the design field other than “designer” which is also the name we must use for the person who creates a patentable design.

In any event, we do not believe the determination of the level of ordinary skill in the art, as required under Graham v. John Deere Co., supra, cannot be made with respect to designs. Thus, in view of the statutory requirement that patents for designs must be evaluated on the same basis as ■ other patents, the test of Graham must be followed.

It is apparent the “ordinary designer” standard has been found helpful to courts in infringement litigation because of the objective evidence which can be brought to bear on the question of obviousness under the tests of Graham. Cf. Sidewinder Marine, Inc. v. Starbuck Kustom Boats & Products Inc., 597 F.2d at 209-10, 202 USPQ at 364-65; Lancaster Colony Corp. v. Aldon Accessories, Ltd., 506 F.2d 1197, 1199-1200, 184 USPQ 193, 195 (CA 2 1974); Rains v. Cascade Industries, Inc., 402 F.2d 241, 246-47, 159 USPQ 322, 326 (CA 3 1968). We believe it also can be more effectively dealt with by an applicant during patent prosecution than can the “ordinary observer” test. For example, where an examiner selects features from various designs, or relies on common knowledge in the art, the possibility is present of submitting an affidavit from an expert in whose opinion, subjective though it may be, it would not have been obvious to an ordinary designer, despite knowledge (or imputed knowledge) of the prior art to combine features or make modifications as shown in an applicant’s design. Cf. In re Neave, 54 CCPA 999, 1007, 370 F.2d 961, 968, 152 USPQ 274, 279-80 (1967) (expert’s perception of color in the dyestuff art is necessarily subjective, but nonetheless entitled to more weight than a layman’s evaluation of the same color); Rains v. Cascade Industries, Inc., 402 F.2d at 246, 159 USPQ at 326 (opinion of expert on nonobviousness and evidence of commercial success must be considered). This possibility is not present using the “ordinary observer” test. No affiant can be qualified as an expert ordinary observer who might, thereby, persuade the person who is deciding the matter that the latter’s judgment of the reaction of an ordinary observer is in error.

Rejection of the “ordinary observer” test under 35 U.S.C. § 103 does not preclude its application in other contexts. The “ordinary observer” test was applied in determining whether a claim to a design had been infringed as long ago as Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 20 L.Ed. 731 (1871). Further, the “ordinary observer” test has been applied when determining anticipation under § 102 by courts which apply the “ordinary designer” test under § 103.³

Conclusion

Applying the “ordinary designer” test of § 103 to the case at bar, the question is whether the changes made by appellant in the Johnson design for an illuminated tweezer would have been obvious to an ordinary designer of such implements. As noted, the claimed design is substantially identical in overall configuration to the design shown in Johnson for the same type of article. The differences in the finger grips of a slightly different shape and the straight, rather than slightly curved pincers, are de minimis. We also agree that it is well within the skill of an ordinary designer in the art to make the modification of the fluting and that it would have been obvious to do so. Such changes do not achieve a patentably distinct design. In re Lamb, 48 CCPA 817, 286 F.2d 610, 128 USPQ 539 (1961). We agree, therefore, that the PTO has shown a prima facie case of obviousness.

Once the prima facie case of obviousness was established, the burden shifted to appellant to rebut it, if he could, with objective evidence of nonobviousness. In response, appellant filed a declaration regarding alleged commercial success of his illuminable tweezer. Both the examiner and the board found, and we agree, that the declaration was not persuasive because the alleged commercial success was not shown to be attributable to the design.

In view of the unrebutted prima facie case of obviousness, the rejection of the claimed ornamental design must stand. Accordingly, the decision of the board is affirmed.

AFFIRMED.

1 . We do not fault the PTO for buttressing the rejection with these references. Indeed, it is prudent to do so. However, we do not find them necessary.

2 . Sidewinder Marine, Inc. v. Starbuck Kustom Boats & Products, Inc., 597 F.2d 201, 202 USPQ 356 (CA 10 1979); Hadco Products, Inc., v. Walter Kidde & Co., 462 F.2d 1265, 174 USPQ 358 (CA 3), cert. denied, 409 U.S. 1023, 93 S.Ct. 464, 34 L.Ed.2d 315 (1972); Fields v. Schuyler, 153 U.S.App.D.C. 229, 472 F.2d 1304, 175 USPQ 514 (CA D.C. 1972), cert. denied, 411 U.S. 987, 93 S.Ct. 2270, 36 L.Ed.2d 965 (1973); Rains v. Niaqua, Inc., 406 F.2d 275, 160 USPQ 370 (CA 2), cert. denied, 395 U.S. 909, 89 S.Ct. 1751, 23 L.Ed.2d 222 (1969). The Ninth Circuit has applied the “ordinary observer” standard of Laverne to invalidate the patent in Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d 295, 168 USPQ 258 (1970). While we do not question the result, it is apparent from the opinion that the less discerning eye made it easier for that court to find invalidity, thus frustrating the stated purpose of Laverne. Other circuits, as discussed infra, have continued applying the “ordinary designer” test without noting Laverne.

3 . This court has applied the “ordinary observer” test under § 102. See, e. g., In re Bartlett, 49 CCPA 969, 300 F.2d 942, 133 USPQ 204 (1962). We note that a number of circuit courts, again including the District of Columbia Circuit in Fields v. Schuyler, supra, have expressly stated, with respect to design patents, that the “ordinary observer” standard is applicable in determining anticipation under § 102 and the “ordinary designer” standard in determining obviousness under § 103. See Clark Equip. Co. v. Keller, 570 F.2d 778, 779, 197 USPQ 209, 225-26 (CA 8), cert. denied, 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978); Schnadig Corp. v. Gaines Mfg. Co., 494 F.2d 383, 389, 181 USPQ 417, 421 (CA 6 1974); Hadco Products, Inc. v. Walter Kidde & Co., supra, 462 F.2d at 1272, 174 USPQ at 363. See also, Sidewinder Marine, Inc. v. Starbuck Kustom Boats & Products, Inc., supra, 597 F.2d at 205, 202 USPQ at 363. The only departure from this dual standard appears in the Ninth Circuit in Schwinn, supra. However, the court there was considering a reference so similar to the patented design that the court below found it to be anticipated under § 102. This ground was not argued on appeal. Similar circumstances of a § 102 rejection or, alternatively, a § 103 rejection based on a prior “almost identical” design led to affirmance on the grounds of obviousness in Mayview Corp. v. Rodstein, 620 F.2d 1347, 205 USPQ 302 (CA 9 1980).