DECISIONS

OF THE

COMMISSIONER OF PATENTS

In the United States Patent Office Before the Board of Appeals EX PARTE FRANCE, DOLAN, EPTON AND TOFFOLI

Appeal No. 364-45. Decided February 17, 1961

774 0.G. 5

1. DESIGNS-APPLICATION DISCLOSURE-MUST SHOW COMPLETE APPEARANCE. Rule reiterated that "the clear intent of the design law and the established practice in carrying out that law is to require the design disclosure to depict the configuration and complete appearance [of] an article of manufacture in which the design is embodied."

2. Same—Same—Same-BouNDS OF ARTICLE MUST BE SHOWN.

"The complete appearance of an article of manufacture includes the bounds of the configuration of the article."

3. SAME-SAME-DRAWING OF AUTOMOBILE TEST TRACK COVERING HAVING INDETERMINATE BOUNDS DOES NOT SHOW ARTICLE OF MANUFACTURE.

Held that the drawing of an application for design patent on an automobile test track covering in which the bounds of the covering are rendered indeterminate by reason of lines indicating cut-away portions, and also by reason of the omission of any indication of horizontal limiting margins, "does not show an article of manufacture."

4. SAME-SAME-DRAWING SHOWING MOVABLE MARKERS NOT AGGREGATIVE.

Held that, even if it be assumed that a design is shown as including movable flags and markers, it is not properly rejected as aggregative because "the design claim would cover the article with the flags and markers positioned in the precise manner actually shown on the drawing."

5. PATENTABILITY-EVIDENCE-ALLOWANCE OF OTHER PATENTS NOT DETERMINATIVE OF PATENTABILITY.

In connection with appellants' reference to the allowance of other design patents Held the "proceedings leading to the grant of a patent on another unrelated application cannot be determinative of the present issue." APPEAL from the Examiner.

AFFIRMED.

Before DUNCOMBE, ASP and MAGIL, Examiners-in-Chief DUNCOMBE, Examiner-in-Chief.

This is an appeal from the final rejection of the following claim: An ornamental design for an automobile test track covering as shown. The following references are mentioned in the Examiner's answer: Marshall, 1,625,041, April 19, 1927.

Brown, D. 169,355, April 21, 1953.

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The design for which a patent is sought is said to be an automobile test track covering. FIGURE 1 represents a layout of street intersections and curb lines. A street is shown with a center line and indicia representing caution and stop stripes at street intersections. Irregular lines are shown cutting one of the streets transversely at two places. Appellants state in their brief that the purpose of such irregular lines is "to show that more straight sections bearing caution stripes and stop stripes may be used or are intended in the entire test track or course." The layout shown in the drawings is not limited by any longitudinal boundaries. That is to say, viewing FIGURE 1 in the horizontal position there are no upper and lower boundary lines to the layout shown. FIGURE 2 is similar to FIGURE 1 but bears legends explaining the purpose of the various indicia illustrated on FIGURE 1. In their brief appellants state that the covering is intended to be applied to a roadway, parking lot or other portions of the earth's surface as a guide for a person undergoing driving tests.

The appealed claim stands rejected on the ground that it is not drawn to proper subject matter because the drawing does not show

an article of manufacture.

The stated position of the Examiner is that the drawing does not disclose a "covering" because no lines of demarcation are present along the edges to indicate an actual cover. The Examiner points out that a patentable design is inseparable from the object and cannot exist alone merely as a scheme of ornamentation. It is the express opinion of the Examiner that an article of manufacture as contemplated by the statute has not been shown and that instead, appellants are in effect claiming a "layout scheme under the guise of an article of manufacture." The Examiner states that the disclosure of the alleged design is indefinite and aggregative. The Examiner considers the disclosure indefinite in that there are no limiting margins and the portion omitted in the cut-away sections may be either plain or marked like the areas shown. It is the view of the Examiner that the disclosure is aggregative in that it shows the use of movable traffic markers and flags which are not considered by the Examiner to be integral portions of the track. In summary, the Examiner states that appellants are asking for a design patent on an idea for an automobile test track layout and that such layout is the result of functional rather than ornamental considerations and is not an article of manufacture embodying a unitary ornamental design.

Appellants cite numerous design patents and contend that their claimed design is in the same category as the cited designs. Appellants contend that their design is an article of manufacture which may be in the form of a covering of paper, canvas, plastic, etc., to

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be unfolded or unrolled on the earth's surface for use as a test track. Appellants also state that their design may be the size of a sheet of writing paper for instruction use, or in the form of a roll or made up of numerous panels to be assembled at the place where the driving test is made.

In Ex parte Salsbury, 491 O.G. 714, 1938 C.D. 6, it was stated that a design patent should disclose the configuration and complete appearance of the article in which the design is embodied, so fully, clearly and with such certainty as to enable those skilled in the art to make the article without being forced to resort to conjecture. [1] We followed this rule in Ex parte Sweeney et al., 748 O.G. 879, 1959 C.D. 91, in which we held that in our opinion the clear intent of the design law and the established practice in carrying out that law is to require the design disclosure to depict the configuration and complete appearance on an article of manufacture in which the design is embodied. [2] The complete appearance of an article of manufacture includes the bounds of the configuration of the article. In the present case these bounds are rendered indeterminate by reason of the lines indicating cut-away portions, and also by reason of the omission from the drawing of any indication of horizontal limiting margins. [3] We accordingly agree with the Examiner that the drawing does not show an article of manufacture. In our opinion the drawing depicts no more than a proposed layout of streets and traffic intersections on a draftman's drawing board.

[4] We do not adopt the Examiner's view that the disclosure is aggregative. The Examiner's position is based on the assumption that the flags and markers shown in the drawing are movable but even if this assumption is correct the design claim would cover the article with the flags and markers positioned in the precise manner actually shown on the drawing.

Even if the drawing were found to properly disclose an article of manufacture we would agree with the expressed opinion of the Examiner that the design involves functional rather than ornamental features which would bring it within the scope of 35 U.S.C. 171. We have noted the several design patents submitted with appellants' brief. The Examiner has analyzed the disclosure of each of these patents in his answer. We agree with his conclusion that these patents represent articles having configurations limited by definite bounds and that such patents provide no precedent for allowing the present claim. [5] Moreover, in connection with these patents and others cited by number in appellants' brief, it may be stated that proceedings leading to the grant of a patent on another unrelated application cannot be determinative of the present issues.

Appellants state that the fact that the claimed design is a twodimensional covering for a flat surface does not detract from its