Chapter   1500  Design Patents
---SECTION---1501 Statutes and Rules Applicable

The right to a patent for a design stems from:

35 U.S.C. 171 Patents for designs. 

Whoever invents any new, original and ornamental design for an article
of manufacture may obtain a patent therefor, subject to the conditions
and requirements of this title.

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

37 CFR 1.151 Rules applicable. 

The rules relating to applications for patents for other inventions or
discoveries are also applicable to applications for patents for designs
except as otherwise provided.

37 CFR 1.152-1.155, which relate only to design patents, are reproduced
in the sections of this chapter.

It is noted that design patent applications are not included in the
Patent Cooperation Treaty (PCT), and the procedures followed for PCT
international applications are not to be followed for design patent
applications.

The practices set forth in other chapters of this Manual of Patent
Examining Procedure (MPEP) are to be followed in examining applications
for design patents, except as particularly pointed out in the chapter.

---SECTION---1502 Definition of a Design

In a design patent application, the subject matter which is claimed is
the design embodied in or applied to an article of manufacture (or
portion thereof) and not the article itself. Ex parte Cady, 1916 C.D.
62, 232 O.G. 621 (Comm'r Pat. 1916).  "[35 U.S.C.] 171 refers, not to
the design of an article, but to the design for an article, and is
inclusive of ornamental designs of all kinds including surface
ornamentation as well as configuration of goods." In re Zahn, 617 F.2d
261, 204 USPQ 988 (CCPA 1980).

The design for an article consists of the visual characteristics
embodied in or applied to an article.

Since a design is manifested in appearance, the subject matter of a
design patent application may relate to the configuration or shape of an
article, to the surface ornamentation applied to an article, or to the
combination of configuration and surface ornamentation.

Design is inseparable from the article to which it is applied and cannot
exist alone merely as a scheme of surface ornamentation. It must be a
definite, preconceived thing, capable of reproduction and not merely the
chance result of a method.

15.42 Visual Characteristics

The design for an object consists of the visual characteristics or
aspect displayed by the object.  It is the appearance presented by the
object which creates an impression through the eye upon the mind of the
observer.

15.43 Subject Matter of Design Patent

Since a design is manifested in appearance, the subject matter of a
Design Patent may relate to the configuration or shape of an article, to
the surface ornamentation on an article, or to both.

---SECTION---1502.01 Distinction Between Design and Utility Patents

In general terms, a "utility patent" protects the way an article is used
and works (35 U.S.C. 101), while a "design patent" protects the way an
article looks (35 U.S.C. 171). The ornamental appearance of an article
includes its shape/configuration or surface ornamentation upon the
article, or both. Both design and utility patents may be obtained on an
article if invention resides both in its utility and ornamental
appearance.

While utility and design patents afford legally separate protection, the
utility and ornamentality of an article are not easily separable.
Invention is a blend of function and ornamental design. Articles of
manufacture may possess both functional and ornamental characteristics.

Some of the more common differences between design and utility patents
are summarized below:

(A) The term of a utility patent on an application filed on or after
June 8, 1995 is 20 years measured from the U.S. filing date; or if the
application contains a specific reference to an earlier application
under  35 U.S.C. 120, 121, or 365(c), 20 years from the earliest
effective U.S. filing date, while the term of a design patent is 14
years measured from the date of grant (see  35 U.S.C. 173).

(B) Maintenance fees are required for utility patents (see  37 CFR
1.20), while no maintenance fees are required for design patents.

(C) Design patent applications may include only a single claim, while
utility patent applications can have multiple claims.

(D) Restriction between plural, distinct inventions is discretionary on
the part of the examiner in utility patent applications (see MPEP
Section  803), while it is mandatory in design patent applications (see
MPEP Section  1504.05).

(E) An international application naming various countries may be filed
for utility patents under the Patent Cooperation Treaty (PCT), while no
such provision exists for design patents.

(F) Foreign priority under  35 U.S.C. 119(a)-(d) can be obtained for the
filing of utility patent applications up to 1 year after the first
filing in any country subscribing to the Paris Convention, while this
period is only 6 months for design patent applications (See  35 U.S.C.
172).

Other distinctions between design and utility patent practice are
detailed in this chapter. Unless otherwise provided, the rules for
applications for utility patents are equally applicable to applications
for patents for designs (35 U.S.C. 171 and  37 CFR 1.151).

---SECTION---1503 Elements of a Design Patent Application

A design patent application has essentially the elements required of an
application for a utility patent filed under  35 U.S.C. 101 (see Chapter
600).  The arrangement of the specification is as specified in  37 CFR
1.154.

A claim in a specific form is a necessary element of a design patent
application.  See MPEP Section  1503.03.

A drawing is an essential element of a design patent application. See
MPEP Section  1503.02 for requirements for drawings.

---SECTION---1503.01 Specification

37 CFR 1.153 Title, description and claim, oath or declaration.

(a)	The title of the design must designate the particular article. No
description, other than a reference to the drawing, is ordinarily
required. The claim shall be in formal terms to the ornamental design
for the article (specifying name) as shown, or as shown and described. 
More than one claim is neither required nor permitted.

(b)	The oath or declaration required of the applicant must comply with
Section  1.63.

37 CFR 1.154 Arrangement of application elements.

(a) The elements of the design application, if applicable, should appear
in the following order:

(1) Design Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Preamble, stating name of the applicant, title of the design, and a
brief description of the nature and intended use of the article in which
the design is embodied.

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or development.

(6) Description of the figure or figures of the drawing.

(7) Feature Description.

(8) A single claim.

(9) Drawings or photographs.

(10) Executed oath or declaration (See Section  1.153(b)).

(b) [Reserved]

15.05 Design Patent Specification Arrangement

The following order or arrangement should be observed in framing a
design patent specification:

(1) Preamble, stating name of the applicant, title of the design, and a
brief description of the nature and intended use of the article in which
the design is embodied.

(2) Cross-reference to related applications.

(3) Statement regarding federally sponsored research or development.

(4) Description of the figure or figures of the drawing.

(5) Feature Description, if any.

(6) A single claim.

(7) Drawings or photographs.

I. PREAMBLE AND TITLE

The preamble, if included, should state the name of the applicant, the
title of the design, and a brief description of the nature and intended
use of the article in which the design is embodied (37 CFR 1.154).

The title of the design identifies the article in which the design is
embodied by the name generally known and used by the public. A title
descriptive of the actual article aids the examiner in developing a
complete field of search of the prior art and further aids in the proper
assignment of new applications to the appropriate class, subclass, and
patent examiner, and the proper classification of the patent upon
allowance of the application. It also helps the public in understanding
the nature and use of the article embodying the design after the patent
has been published. For example, a broad title such as "Adapter Ring"
provides little clue as to the nature and intended use of the article
embodying the design. However, if the scope of a design is to be claimed
broadly as defined by the title, to enable the examiner to do a proper
and complete search, the description of the nature and intended use of
the design may be incorporated into the preamble.  Absent an amendment
requesting deletion of the description, it would be printed on any
patent that would issue.

Since  37 CFR 1.153 requires that the title must designate the
particular article, and since the claim must be in formal terms to the
"ornamental design for the article (specifying name) as shown, or as
shown and described," it follows that the language of the title and
claim must correspond. When the language of the title and claim do not
correspond, the title should be objected to under  37 CFR 1.153 as not
corresponding to the language of the claim.

However, it is emphasized that, under the second paragraph of  35 U.S.C.
112, the claim defines "the subject matter which the applicant regards
as his invention" (emphasis added); that is, the ornamental design to be
embodied in or applied to an article. Thus, the examiner should afford
the applicant substantial latitude in the language of the title/claim.
The examiner should only require amendment of the title/claim if the
language is clearly misdescriptive, inaccurate, or unclear (i.e., the
language would result in a rejection of the claim under  35 U.S.C. 112,
second paragraph; see MPEP Section  1504.04, paragraph II).

Amendments to the title, whether directed to the article in which the
design is embodied or its environment, must have antecedent basis in the
original disclosure. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. &
Inter. 1992).  Amendments to the title which would introduce new matter
into the disclosure are not permitted and should be objected to under 
35 U.S.C. 132.

Any amendment to the language of the title should also be made at each
occurrence thereof throughout the application, except in the oath or
declaration.  If the title of the article is not present in the original
figure descriptions, it is not necessary to incorporate the title into
the descriptions as part of any amendment to the language of the title.

15.05.01 Title of Design Invention

The title of a design being claimed must correspond to the name of the
article in which the design is embodied or applied as shown in solid
lines in the drawing(s).  See MPEP Section  1503.01.

15.59 Amend Title

For   [1], the title [2] amended throughout the application, original
oath or declaration excepted, to read: [3]

Examiner Note:

1. In bracket 1, insert reason.

2. In bracket 2, insert --should be-- or --has been--.

II. DESCRIPTION

Any description of the design in the specification, other than a brief
description of the drawing, is generally not necessary since as a rule
the illustration in the drawing views is its own best description.
However, while not required, such a description is not prohibited and
may be incorporated, at applicant's option, into the specification or
may be provided in a separate paper.

15.46 Special Description Not Normally Needed

Any description of the design in the specification, other than a brief
description of the drawing, is generally not necessary, since as a
general rule, the illustration in the drawing views is its own best
description.

In addition to the figure descriptions, the following types of
statements are permissible in the specification:

(A) Description of the appearance of portions of the claimed design
which are not illustrated in the drawing disclosure.

(B) Statement indicating that any broken line illustration of
environmental structure in the drawing is not part of the design sought
to be patented.

(C) Description denoting the nature and environmental use of the claimed
design, if not included in the preamble pursuant to  37 CFR 1.154 and
MPEP Section  1503.01, paragraph I.

It is the policy of the Office to attempt to resolve questions about the
nature and intended use of the claimed design prior to examination by
making an inquiry at the time of initial docketing of the application.
This will enable the application to be properly classified and docketed
to the appropriate examiner and to be searched when the application
comes up for examination in its normal course without the need for a
rejection under  35 U.S.C. 112 prior to a search of the prior art. 
Explanation of the nature and intended use of the article may be added
to the specification provided it does not constitute new matter.  It may
alternately, at applicant's option, be submitted in a separate paper
without amendment of the specification.

15.56 Requirement for Information

A preliminary review of this application indicates that the designation
of the article in which the claimed design is embodied or applied is so
broad, that it will be difficult for the examiner to make a proper
examination of the claim as required by  37 CFR 1.104.

Applicant is requested to provide a sufficient explanation of the
designated article regarding its nature and intended use so that the
most appropriate docket assignment and pertinent search can be made. 
This information should be submitted in the form of remarks only, and
should not be inserted in the specification.

Additional information regarding analogous fields of search, pertinent
prior art, advertising brochures, and the filing of copending utility
applications would also prove helpful, and should be included in the   
reply.  Attention is also directed to  37 CFR 1.56 and the procedure in
MPEP Section  609 as authorized by  37 CFR 1.97, 1.98 and 1.99.

Failure to respond prior to a first Office action on the merits may
result in a rejection under  35 U.S.C. 112 in the first Office action if
the examiner is unable to make a proper examination.

The new case status of this application for the purpose of issuance of a
first Office action on the merits in filing date order, will continue
under the provisions of MPEP Section  708.

(D) A "characteristic features" statement describing a particular
feature of the design that is considered by applicant to be a feature of
novelty or nonobviousness over the prior art (37 CFR 1.71(c)).

This type of statement may not serve as a basis for determining
patentability by an examiner. In determining the patentability of a
design, it is the overall appearance of the claimed design which must be
taken into consideration. In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA
1982); In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). 
Furthermore, the inclusion of such a statement in the specification is
at the option of applicant and will not be suggested by the examiner.

15.47 Characteristic Feature Statement

A "characteristic features" statement describing a particular feature of
novelty or unobviousness in the claimed design may be permissible in the
specification.  Such a statement should be in terms such as "The
characteristic feature of the design resides in   [1]," or if combined
with one of the Figure descriptions, in terms such as "the
characteristic feature of which resides in   [2]."  While consideration
of the claim goes to the total or overall appearance, the use of a
"characteristic feature" statement may serve later to limit the claim 
(McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y.
1980)).

Examiner Note:

In brackets 1 and 2, insert brief but accurate description of the
design.

15.47.01 Feature Statement Caution

The inclusion of a feature statement in the specification is noted.
However, the patentability of the claimed design is not based on the
specified feature but rather on a comparison of the overall appearance
of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ
427 (CCPA 1977).

The following types of statements are not permissible in the
specification:

(A) A disclaimer statement directed to any portion of the claimed design
that is shown in solid lines in the drawings is not permitted in the
specification of an issued design patent.  However, the disclaimer
statement may be included in the design application as originally filed
to provide antecedent basis for a future amendment.  See   Ex parte
Remington, 114 O.G. 761, 1905 C.D. 28 (Comm'r Pat. 1904); In re Blum,
374 F.2d 904, 153 USPQ 177 (CCPA 1967).

(B) Statements which describe or suggest modifications of the claimed
design which are not illustrated in the drawing disclosure are not
permitted in the specification of an issued design patent.  However,
such statements may be included in the design application as originally
filed to provide antecedent basis for a future amendment.

(C) Statements describing matters which are directed to function
unrelated to the design.

15.60 Amend All Figure Descriptions

For [1], the figure descriptions [2] amended to read: [3]

Examiner Note:

1. In bracket 1, insert reason.

2. In bracket 2, insert --should be-- or --have been-.

3. In bracket 3, insert amended text.

15.61 Amend Selected Figure Descriptions

For   [1], the description(s) of Fig(s). [2] [3] amended to read: [4]

Examiner Note:

1. In bracket 1, insert reason.

2. In bracket 2, insert selected Figure descriptions.

3. In bracket 3, insert --should be-- or --have been-.

4. In bracket 4, insert amended text.

---SECTION---1503.02 Drawing

37 CFR 1.152 Design drawings.

(a) The design must be represented by a drawing that complies with the
requirements of Section  1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design.

(1) Appropriate and adequate surface shading should be used to show the
character or contour of the surfaces represented.  Solid black surface
shading is not permitted except when used to represent the color black
as well as color contrast.  Broken lines may be used to show visible
environmental structure, but may not be used to show hidden planes and
surfaces which cannot be seen through opaque materials.  Alternate
positions of a design component, illustrated by full and broken lines in
the same view are not permitted in a design drawing.

(2) Color photographs and color drawings are not permitted in design
applications in the absence of a grantable petition pursuant to Section 
1.84(a)(2). Photographs and ink drawings are not permitted to be
combined as formal drawings in one application.  Photographs submitted
in lieu of ink drawings in design patent applications must comply with
Section  1.84(b) and must not disclose environmental structure but must
be limited to the design for the article claimed.

(b) Any detail shown in the ink or color drawings or photographs (formal
or informal) deposited with the original application papers constitutes
an integral part of the disclosed and claimed design, except as
otherwise provided in this paragraph. This detail may include, but is
not limited to, color or contrast, graphic or written indicia, including
identifying indicia of a proprietary nature, surface ornamentation on an
article, or any combination thereof.

(1) When any detail shown in informal drawings or photographs does not
constitute an integral part of the disclosed and claimed design, a
specific disclaimer must appear in the original application papers
either in the specification or directly on the drawings or photographs.
This specific disclaimer in the original application papers will provide
antecedent basis for the omission of the disclaimed detail(s) in
later-filed drawings or photographs.

(2) When informal color drawings or photographs are deposited with the
original application papers without a disclaimer pursuant to paragraph
(b)(1) of this section, formal color drawings or photographs, or a black
and white drawing lined to represent color, will be required.

Every design patent application must include either a drawing or a
photograph of the claimed design. As the drawing or photograph
constitutes the entire visual disclosure of the claim, it is of utmost
importance that the drawing or photograph be clear and complete, and
that nothing regarding the design sought to be patented is left to
conjecture.

15.48 Necessity for Good Drawings

The necessity for good drawings in a design patent application cannot be
overemphasized.  As the drawing constitutes the whole disclosure of the
design, it is of utmost importance that it be so well executed both as
to clarity of showing and completeness, that nothing regarding the
design sought to be patented is left to conjecture.  An insufficient
drawing may be fatal to validity (35 U.S.C. 112, first paragraph).
Moreover, an insufficient drawing may have a negative effect with
respect to the effective filing date of a continuing application.

In addition to the criteria for utility applications set forth in  37
CFR 1.81-1.88, design drawings must also comply with  37 CFR 1.152 as
follows:

I. VIEWS

The drawings or photographs should contain a sufficient number of views
to disclose the complete appearance of the design claimed, including the
front, rear, top, bottom and sides.  Perspective views are suggested and
may be submitted to clearly show the appearance of three dimensional
designs.  If a perspective view is submitted, the surfaces shown would
normally not be required to be illustrated in other views if these
surfaces are clearly understood and fully disclosed in the perspective.

Views that are merely duplicative of other views of the design or that
are merely flat and include no ornamentality may be omitted from the
drawing if the specification makes this explicitly clear. See MPEP
Section  1503.01, paragraph II.  For example, if the left and right
sides of a design are identical or symmetrical, a view should be
provided of one side and a statement made in the drawing description
that the other side is identical/symmetrical.  If the design has a flat
bottom, a view of the bottom may be omitted if the specification
includes a statement that the bottom is flat and unornamented. The term
"unornamented" should not be used to describe visible surfaces which
include structure that is clearly not flat.    Philco Corp. v. Admiral
Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).

Sectional views presented solely for the purpose of showing the internal
construction or functional and mechanical features are unnecessary and
may lead to confusion as to the scope of the claimed design. Ex parte
Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm'r Pat. 1901); Ex parte Kohler,
1905 C.D. 192, 116 O.G. 1185 (Comm'r Pat. 1905). Such views should be
objected to under  35 U.S.C. 112, second paragraph, and should be
canceled.  However, where the exact contour or configuration of the
exterior surface of a claimed design is not apparent from the views of
the drawing, and no attempt is made to illustrate features of internal
construction, a sectional view may be included to clarify the shape of
said design.  Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm'r Pat.
1912).  When a sectional view is added during prosecution, the examiner
must determine whether there is antecedent basis in the original dis
closure for the material shown in hatching (37 CFR 1.84(h)(3) and MPEP
Section  608.02) in the sectional view.

II. SURFACE SHADING

The drawing should be appropriately and adequately surface shaded to
show clearly the character and contour of all surfaces of any
3-dimensional aspects of the design.  37 CFR 1.152(a)(1).  Surface
shading is also necessary to distinguish between any open and solid
areas of the article.

Lack of appropriate surface shading in the drawing as filed may render
the design nonenabling under  35 U.S.C. 112, first paragraph. 
Additionally, if the surface shape is not evident from the disclosure as
filed, the addition of surface shading after filing may comprise new
matter. Solid black surface shading is not permitted except when used to
represent the color black as well as color contrast.

15.49 Surface Shading Necessary

The drawing figures should be appropriately and adequately shaded to
show clearly the character and/or contour of all surfaces represented. 
See  37 CFR 1.152(a)(1).  This is of particular importance in the
showing of three (3) dimensional articles where it is necessary to
delineate plane, concave, convex, raised, and/or depressed surfaces of
the subject matter, and to distinguish between open and closed areas. 
Solid black surface shading is not permitted except when used to
represent the color black as well as color contrast.

III. BROKEN LINES

Structure that is not part of the claimed design but is considered
necessary to show the environment in which the design is associated may
be represented in the drawing by broken lines. This includes any portion
of an article in which the design is embodied or applied to that is not
considered part of the claimed design.  In re Zahn, 617 F.2d 261, 204
USPQ 988 (CCPA 1980).  A broken line showing is for illustrative
purposes only and forms no part of the claimed design or a specified
embodiment thereof.  A boundary line may be shown in broken lines if it
is not intended to form part of the claimed design.  Applicant may
choose to define the bounds of a claimed design with broken lines when
the boundary does not exist in reality in the article embodying the
design.  It would be understood that the claimed design extends to the
boundary but does not include the boundary.  Where no boundary line is
shown in a design application as originally filed, but it is clear from
the design specification that the boundary of the claimed design is a
straight broken line connecting the ends of existing full lines defining
the claimed design, applicant may amend the drawing(s) to add a straight
broken line connecting the ends of existing full lines defining the
claimed subject matter. Any broken line boundary other than a straight
broken line may constitute new matter prohibited by  35 U.S.C. 132 and 
37 CFR 1.121(a)(6). 

However, broken lines are not permitted for the purpose of indicating
that a portion of an article is of lesser importance in the design.  In
re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967).  Broken lines may not
be used to show hidden planes and surfaces which cannot be seen through
opaque materials. The use of broken lines indicates that the
environmental structure or the portion of the article depicted in broken
lines forms no part of the design, and is not to indicate the relative
importance of parts of a design.

In general, when broken lines are used, they should not intrude upon or
cross the showing of the claimed design and should not be of heavier
weight than the lines used in depicting the claimed design. Where a
broken line showing of environmental structure must necessarily cross or
intrude upon the representation of the claimed design and obscures a
clear understanding of the design, such an illustration should be
included as a separate figure in addition to the other figures which
fully disclose the subject matter of the design.

15.50 Design Claimed Shown in Full Lines

The ornamental design which is being claimed must be shown in solid
lines in the drawing.  Dotted lines for the purpose of indicating
unimportant or immaterial features of the design are not permitted. 
There are no portions of a claimed design which are immaterial or
unimportant.  See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and
In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

15.50.01 Use of Broken Lines in Drawing

Environmental structure may be illustrated by broken lines in the
drawing if clearly designated as environment in the specification. See 
37 CFR 1.152(a)(1) and MPEP Section  1503.02, paragraph (III).

15.50.02 Description of Broken Lines

The following statement must be used to describe the broken lines on the
drawing:

-- The broken line showing of [1] is for illustrative purposes only and
forms no part of the claimed design. --

The above statement [2] inserted in the specification preceding the
claim.

Examiner Note:

1. In bracket 1, insert name of structure.

2. In bracket 2, insert --must be-- or --has been--.

15.50.03 Objectionable Use of Broken Lines In Drawings

Dotted lines or broken lines used for environmental structure should not
cross or intrude upon the representation of the claimed design for which
design protection is sought.  Such dotted lines may obscure the claimed
design and render the disclosure indefinite (35 U.S.C. 112).

15.50.04 Proper Drawing Disclosure With Use of Broken Lines

Where broken lines showing environmental structure obscure the full line
disclosure of the claimed design, a separate figure showing the broken
lines must be included in the drawing in addition to the figures showing
only claimed subject matter.

15.50.05 Description of Broken Lines as Boundary of Design

The following statement must be used to describe the broken line
boundary of a design:

-- The broken line(s) which define the bounds of the claimed design form
no part thereof.--

IV. SURFACE INDICIA

The ornamental appearance of a design for an article includes its shape
and configuration as well as any indicia, lettering, or other
ornamentation applied to the article ("surface indicia"). Surface
indicia must be applied to an article of manufacture. Surface indicia,
per se (i.e., not applied to a specific article of manufacture), is not
proper subject matter for a design patent under  35 U.S.C. 171.  See
MPEP Section  1504.01.

Surface indicia shown in a design drawing or photo graph will normally
be considered as prima facie evidence that the inventor considered the
surface indicia shown in the drawing to be an integral part of the
claimed design. An amendment canceling the surface indicia or reducing
it to broken lines would be permitted if it is clear from the
application that applicant had possession of the basic design without
the surface indicia at the time of filing of the application. See In re
Daniels, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).

V. PHOTOGRAPHS AND COLOR DRAWINGS

Drawings are normally required to be submitted in black ink on white
paper,  37 CFR 1.84(a)(1). Color drawings are not permitted in design
applications in the absence of a grantable petition pursuant to  37 CFR
1.84(a)(2).  37 CFR 1.152 (a)(2).  Photographs are normally not
permitted in design patent applications.

However, the Office will accept black and white or color photographs in
design patent applications only after granting a petition filed under 
37 CFR 1.84(a)(2) (for color photographs) or  37 CFR 1.84(b)(1) (for
black and white photographs) requesting that photographs be accepted.
Petitions to accept photographs or color drawings will be considered by
the Supervisory Patent Examiner and will be granted if the requirements
of  37 CFR 1.84 (a) or (b) are complied with.  That is, the appropriate
fee set forth in  37 CFR 1.17(i) has been included and the three sets of
photographs or color drawings required under  37 CFR 1.84(b)(1)(ii) or 
37 CFR 1.84(a)(2)(ii) have been included. If other provisions of  37 CFR
1.84(b) for photographs have not been complied with (e.g., the
photographs are not on double weight photographic paper, are not
properly mounted, or details are not adequately reproducible), such lack
of compliance will not bar the grant of a petition to accept the
photographs but rather will form the basis of subsequent objection to
the quality of the photographic disclosure.  If the details, appearance
and shape of all the features and portions of the design are not clearly
disclosed in the photographs, this also will not be a bar to the grant
of a petition to accept the photographs, but would form the basis of a
rejection of the claim under  35 U.S.C. 112, first paragraph, as
nonenabling.

Photographs submitted on double weight photographic paper must have the
drawing figure number entered on the face of the photograph. Photographs
mounted on bristol board may have the figure number shown in black ink
on the bristol board proximate the corresponding photograph.

Photographs and ink drawings must not be combined in a formal submission
of the visual disclosure of the claimed design in one application. The
introduction of both photographs and ink drawings in a design
application would result in a high probability of inconsistencies
between corresponding elements on the ink drawings as compared with the
photographs.

When filing informal photographs or informal drawings with the original
application, a disclaimer included in the specification or on the
photographs themselves may be used to disclaim any surface
ornamentation, logos, written matter, etc. which form no part of the
claimed design.

Color photographs and color drawings may be submitted in design
applications if filed with a petition under  37 CFR 1.84(a)(2) as
required by  37 CFR 1.152(a)(2).  Color may also be shown in pen and ink
drawings by lining the surfaces of the design for color in accordance
with the symbols in MPEP Section  608.02.  Lining a surface for color
may interfere with a clear showing of the design as required by  35
U.S.C. 112, first paragraph, as surface shading cannot be used to define
the contours of the design.

If color photographs or color drawings are filed with the original
application, color will be considered an integral part of the disclosed
and claimed design. The omission of color in later filed formal
photographs or drawings would be permitted if it is clear from the
application that applicant had possession of the basic design without
the color at the time of filing of the application.  See In re Daniels,
46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Note also  37 CFR 1.152(a)(2),
which requires that the disclosure in formal photographs be limited to
the design for the article claimed. 

15.05.03 Drawing/Photograph Disclosure Objected To

The drawing/photograph disclosure is objected to   [1].

Examiner Note:

In bracket 1, insert statutory or regulatory basis for objection and an
explanation.

15.05.04 Photoprints for Proposed Drawing Corrections

Photoprint(s) showing the proposed corrections highlighted, preferably
in red ink, must be submitted for the examiner's approval.  Care should
be exercised to avoid introduction of new matter (35 U.S.C. 132;  37 CFR 
1.121).  In lieu of proposed corrections, formal drawings including any
corrections may be submitted.

15.05.05 Drawing Correction Required Prior to Appeal

Any appeal of the design claim must include the proposed correction of
the drawings approved by the examiner in accordance with Ex parte Bevan,
142 USPQ 284 (Bd. App. 1964), and must follow the procedure set forth in
the PTO-1474 attached to Paper No. [1].

Examiner Note:

This paragraph can be used in a FINAL rejection where an outstanding
requirement for a drawing correction has not been satisfied.

15.07 Avoidance of New Matter

When preparing new drawings in compliance with the requirement therefor,
care must be exercised to avoid introduction of anything which could be
construed to be new matter prohibited by  35 U.S.C. 132 and  37 CFR 
1.121.

15.45 Photographs As Informal Drawings

For filing date purposes, in those design patent applications containing
photographs for drawings contrary to the requirement for ink drawings,
the Office of Initial Patent Examination has been authorized to construe
the photographs as informal drawings rather than to hold the
applications incomplete as filed.  By so doing, the Patent and Trademark
Office can accept the applications without requiring applicants to file
petitions to obtain the original deposit date as the filing date. 
However,  37 CFR 1.84(b)(1) requires that if black and white photographs
are filed as formal drawings, a petition for acceptance of such, the fee
under  37 CFR 1.17(i), and three sets of the photographs must be filed.
Furthermore, under  37 CFR 1.152(a)(2), color photographs are not
permitted in design applications in the absence of a grantable petition
pursuant to  37 CFR 1.84(a)(2).  Before the photographs in this
application can be treated as formal drawings, applicant must submit
[1].

Examiner Note:

In bracket 1, insert --a petition--, --the fee--, and/or -- three full
sets of photographs--.

15.57 Non-Entered Drawings Returned

The non-entered drawing filed [1] will be returned to applicant(s) upon
proper request.  The request must be filed within a reasonable time. 
Otherwise, the drawing may be disposed of at the discretion of the
Commissioner (MPEP Section  608.02(y)).

---SECTION---1503.03 Design Claim

The requirements for utility claims specified in  37 CFR 1.75 do not
apply to design claims. Instead, the form and content of a design claim
is set forth in  37 CFR 1.153:

37 CFR 1.153 ... claim ...

(a) ... The claim shall be in formal terms to the ornamental design for
the article (specifying name) as shown or as shown and described. More
than one claim is neither required nor permitted.

                  +++    

A design patent application may only include a single claim. The single
claim should normally be in formal terms to "The ornamental design for
(the article which embodies the design or to which it is applied) as
shown." The description of the article in the claim should be consistent
in terminology with the title of the invention. See MPEP Section 
1503.01, paragraph I.

When there is a properly included special description of the design in
the specification (see MPEP Section  1503.01, paragraph II), or a proper
showing of modified forms of the design or other descriptive matter has
been included in the specification, the words "and described" should be
added to the claim following the term "shown"; i.e., the claim must read
"The ornamental design for (the article which embodies the design or to
which it is applied) as shown and described."

The claimed design is shown by solid lines in the drawing. It is not
permissible to show any portion of the claimed design in broken lines.
There are no portions of the claimed design which are immaterial or
unimportant, and elements shown in broken lines in the drawing are not
part of the claim.  See MPEP Section  1503.02, paragraph III, and   In
re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967).

15.62 Amend Claim "As Shown"

For proper form (37 CFR 1.153), the claim [1] amended to read: "  [2]
claim:  The ornamental design for [3] as shown."

15.63 Amend Claim "As Shown and Described"

For proper form (37 CFR 1.153), the claim   [1] amended to read: "  [2]
claim:  The ornamental design for [3] as shown and described."

15.64 Addition of "And Described" to Claim

Because of [1] -- and described -- [2] added to the claim after "shown."

---SECTION---1504 Examination

In design patent applications, ornamentality, novelty and unobviousness
are necessary prerequisites to the grant of a patent.  The inventive
novelty or unobviousness resides in the ornamental shape or
configuration of the article in which the design is embodied or to which
the surface ornamentation is applied.

Novelty and unobviousness of a design claim must generally be determined
by a search in the pertinent design classes. It is also mandatory that
the search be extended to the mechanical classes encompassing inventions
of the same general type. Catalogs and trade journals are also to be
consulted.

If the examiner determines that the claim of the design patent
application does not satisfy the statutory requirements, the examiner
will set forth in detail, and may additionally summarize, the basis for
all rejections in an Official action.  If an examiner determines that
the claim in a design application is patentable under all statutory
requirements, but formal matters still need to be addressed and
corrected prior to allowance, an Ex parte Quayle action will be sent to
applicant indicating allowability of the claim and identifying the
necessary corrections.

15.19.01 Summary Statement of Rejections

The claim stands rejected under   [1].

Examiner Note:

1. Use as summary statement of rejection(s) in Office action.

2. In bracket 1, insert appropriate basis for rejection, i.e., statutory
provisions, etc.

15.58 Claimed Design Is Patentable (Ex Parte Quayle Actions)

The claimed design is patentable over the references cited.

15.72 Quayle Action

This application is in condition for allowance except for the following
formal matters: [1].

Prosecution on the merits is closed in accordance with the practice
under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.

A shortened statutory period for reply to this action is set to expire
TWO MONTHS from the mailing date of this letter.

With respect to pro se design applications  , the examiner should notify
applicant in the next Office action that it may be desirable for
applicant to employ the services of a registered patent attorney or
agent to prosecute the application.  Applicant should also be notified
that the Patent and Trademark Office cannot aid in the selection of an
attorney or agent.

15.66 Employ Services of Patent Attorney or Agent (Design Application
Only)

As the value of a design patent is largely dependent upon the skillful
preparation of the drawings and specification, applicant might consider
it desirable to employ the services of a registered patent attorney or
agent.  The Patent and Trademark Office cannot aid in the selection of
an attorney or agent.

Applicant is advised of the availability of the publication "Attorneys
and Agents Registered to Practice Before the U.S. Patent and Trademark
Office."  This publication is for sale by the Superintendent of
Documents, U.S. Government Printing Office, Washington, D.C.  20402.

---SECTION---1504.01 Statutory Subject Matter for Designs

35 U.S.C. 171 Patents for designs.

Whoever invents any new, original, and ornamental design for an article
of manufacture may obtain a patent therefor, subject to the conditions
and requirements of this title.

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

The language "new, original and ornamental design for an article of
manufacture" set forth in  35 U.S.C. 171 has been interpreted by the
case law to include at least three kinds of designs:

(A) a design for an ornament, impression, print, or picture applied to
an article of manufacture (surface indicia);

(B) a design for the shape or configuration of an article of
manufacture; and

(C) a combination of the first two categories.

See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931); Ex parte
Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int. 1992).

A picture standing alone is not patentable under  35 U.S.C. 171. The
factor which distinguishes statutory design subject matter from mere
picture or ornamentation, per se (i.e., abstract design) is the
embodiment of the design in an article of manufacture. Consistent with 
35 U.S.C. 171, case law and PTO practice, the design must be shown
applied to an article of manufacture.

A claim to a picture, print, impression, etc. per se, that is not
embodied in an article of manufacture should be rejected under  35
U.S.C. 171 as directed to nonstatutory subject matter.

15.07.01 Statutory Basis, 35 U.S.C. 171

The following is a quotation of  35 U.S.C. 171:

Whoever invents any new, original, and ornamental design for an article
of manufacture may obtain a patent therefor, subject to the conditions
and requirements of this title.

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

15.09 35 U.S.C. 171 Rejection

The claim is rejected under  35 U.S.C. 171 as directed to nonstatutory
subject matter because [1].

Examiner Note:

A rejection on the grounds of nonstatutory subject matter includes the
more specific grounds of an abstract design not applied to an article of
manufacture, lack of ornamentality, simulation, contrary to public
policy, etc.  Identify the specific ground(s) not complied with and give
reasons why in bracket 1.

15.44 Design Inseparable From Article to Which Applied

Design is inseparable from the article to which it is applied, and
cannot exist alone merely as a scheme of ornamentation.  It must be a
definite preconceived thing, capable of reproduction, and not merely the
chance result of a method or of a combination of functional elements (35
U.S.C. 171;  35 U.S.C. 112, first and second paragraphs).  See
Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 127
USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).

Form Paragraphs 15.38 and 15.40.01 may be used in a second or subsequent
action, where appropriate (see MPEP Section  1504.02).

---SECTION---1504.01(a) Computer-Generated Icons

To be directed to statutory subject matter, design applications for
computer-generated icons must comply with the "article of manufacture"
requirement of  35 U.S.C. 171.

I. GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR
COMPUTER-GENERATED ICONS

The following guidelines have been developed to assist PTO personnel in
determining whether design patent applications for computer-generated
icons comply with the "article of manufacture" requirement of  35 U.S.C.
171.

A. General Principle Governing Compliance With the "Article of
Manufacture" Requirement

Computer-generated icons, such as full screen displays and individual
icons, are 2-dimensional images which alone are surface ornamentation.
See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int.
1992) (computer-generated icon alone is merely surface ornamentation).
The PTO considers designs for computer-generated icons embodied in
articles of manufacture to be statutory subject matter eligible for
design patent protection under  35 U.S.C. 171.  Thus, if an application
claims a computer-generated icon shown on a computer screen, monitor,
other display panel, or a portion thereof, the claim complies with the
"article of manufacture" requirement of  35 U.S.C. 171.  Since a
patentable design is inseparable from the object to which it is applied
and cannot exist alone merely as a scheme of surface ornamentation, a
computer-generated icon must be embodied in a computer screen, monitor,
other display panel, or portion thereof, to satisfy  35 U.S.C. 171. See
MPEP Section  1502.

"We do not see that the dependence of the existence of a design on
something outside itself is a reason for holding it is not a design `for
an article of manufacture.' " In re Hruby, 373 F.2d 997, 1001,  153 USPQ
61, 66 (CCPA 1967) (design of water fountain patentable design for an
article of manufacture).  The dependence of a computer-generated icon on
a central processing unit and computer program for its existence itself
is not a reason for holding that the design is not for an article of
manufacture.

B. Procedures for Evaluating Whether Design Patent Applications Drawn to
Computer-Generated Icons Comply With the "Article of Manufacture"
Requirement

PTO personnel shall adhere to the following procedures when reviewing
design patent applications drawn to computer-generated icons for
compliance with the "article of manufacture" requirement of  35 U.S.C.
171.

(A) Read the entire disclosure to determine what the applicant claims as
the design and to determine whether the design is embodied in an article
of manufacture.  37 CFR 1.71 and 1.152-1.154.

Since the claim must be in formal terms to the design "as shown, or as
shown and described," the drawing provides the best description of the
claim.  37 CFR 1.153.

(1) Review the drawing to determine whether a computer screen, monitor,
other display panel, or portion thereof, is shown.  37 CFR 1.152.

Although a computer-generated icon may be embodied in only a portion of
a computer screen, monitor, or other display panel, the drawing "must
contain a sufficient number of views to constitute a complete disclosure
of the appearance of the article."  37 CFR 1.152. In addition, the
drawing must comply with  37 CFR 1.84.

(2) Review the title to determine whether it clearly describes the
claimed subject matter.  37 CFR 1.153.

The following titles do not adequately describe a design for an article
of manufacture under  35 U.S.C. 171: "computer icon"; or "icon." On the
other hand, the following titles do adequately describe a design for an
article of manufacture under  35 U.S.C. 171: "computer screen with an
icon"; "display panel with a computer icon"; "portion of a computer
screen with an icon image"; "portion of a display panel with a computer
icon image"; or "portion of a monitor displayed with a computer icon
image."

(3) Review the specification to determine whether a characteristic
feature statement is present.  37 CFR 1.71. If a characteristic feature
statement is present, determine whether it describes the claimed subject
matter as a computer-generated icon embodied in a computer screen,
monitor, other display panel, or portion thereof. See McGrady v.
Aspenglas Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) (descriptive
statement in design patent application narrows claim scope).

(B) If the drawing does not depict a computer-generated icon embodied in
a computer screen, monitor, other display panel, or a portion thereof,
in either solid or broken lines, reject the claimed design under  35
U.S.C. 171 for failing to comply with the article of manufacture
requirement.

(1) If the disclosure as a whole does not suggest or describe the
claimed subject matter as a computer-generated icon embodied in a
computer screen, monitor, other display panel, or portion thereof,
indicate that:

(a) The claim is fatally defective under  35 U.S.C. 171; and

(b) Amendments to the written description, drawings and/or claim
attempting to overcome the rejection will ordinarily be entered,
however, any new matter will be required to be canceled from the written
description, drawings and/or claims. If new matter is added, the claim
should be rejected under  35 U.S.C. 112, first paragraph.

(2) If the disclosure as a whole suggests or describes the claimed
subject matter as a computer-generated icon embodied in a computer
screen, monitor, other display panel, or portion thereof, indicate that
the drawing may be amended to overcome the rejection under  35 U.S.C.
171. Suggest amendments which would bring the claim into compliance with 
35 U.S.C. 171.

(C) Indicate all objections to the disclosure for failure to comply with
the formal requirements of the Rules of Practice in Patent Cases.  37
CFR 1.71, 1.81-1.85, and 1.152-1.154. Suggest amendments which would
bring the disclosure into compliance with the formal requirements of the
Rules of Practice in Patent Cases.

(D) Upon reply by applicant:

(1) Enter any amendments; and

(2) Review all arguments and the entire record, including any
amendments, to determine whether the drawing, title, and specification
clearly disclose a computer-generated icon embodied in a computer
screen, monitor, other display panel, or portion thereof.

(E) If, by a preponderance of the evidence (see In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) ("After evidence or
argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.")), the applicant
has established that the computer-generated icon is embodied in a
computer screen, monitor, other display panel, or portion thereof,
withdraw the rejection under  35 U.S.C. 171.

II. EFFECT OF THE GUIDELINES ON PENDING DESIGN APPLICATIONS DRAWN TO
COMPUTER-GENERATED ICONS

PTO personnel shall follow the procedures set forth above when examining
design patent applications for computer-generated icons pending in the
PTO as of April 19, 1996.

III. TREATMENT OF TYPE FONTS

Traditionally, type fonts have been generated by solid blocks from which
each letter or symbol was produced. Consequently, the PTO has
historically granted design patents drawn to type fonts. PTO personnel
should not reject claims for type fonts under  35 U.S.C. 171 for failure
to comply with the "article of manufacture" requirement on the basis
that more modern methods of typesetting, including computer-generation,
do not require solid printing blocks.

---SECTION---1504.01(b) Design Comprising Multiple Parts Embodied in a
Single Article

While the claimed design must be embodied in a single article of
manufacture as required by  35 U.S.C. 171, it may encompass multiple
parts within the single article.  The multiple independent parts forming
the claimed design may be disclosed in the drawing with or without the
article being shown in broken lines.  In either case, the title must
clearly define the parts as a single entity, for example, set, pair,
combination, etc. If the article is not disclosed in broken lines in the
drawing, then the title must disclose the article in which the design is
embodied and the association of the claimed parts must be shown by a
bracket.

---SECTION---1504.01(c) Lack of Ornamentality

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.  HIDDEN IN USE

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 be considered prima facie
evidence of the lack of ornamentality of the claim. "Visibility during
an article's `normal use' is not a statutory requirement of Section 
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, 1202, 7 USPQ2d 1747, 1747 (N.D. Ill. 1988).  However, if
the examiner based on his/her knowledge of an art is aware 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).  However, a rejection as lacking ornamentality should be
made if there is additional persuasive evidence of functionality, for
example, a utility patent. Determination of whether a claimed design
lacks ornamentality under  35 U.S.C. 171 must be made on a case-by-case
basis as no design for an article can be considered in its entirety to
be either all ornamental or all lacking in ornamentality.

In order to establish that a design is lacking in ornamentality based on
the ultimate hidden end use of the article, the article must always be
hidden in its end use to provide prima facie evidence of lack of
ornamentality.  In Contico International, Inc. v. Rubbermaid Commercial
Products, Inc., 506 F. Supp. 1072, 1076, 210 USPQ 649, 653 (8th Cir.
1981), the court held that the normal use of a dolly which supported
refuse containers "entails frequent attachment to and detachment from
the `Brute' containers and, accordingly, that said dolly is not
concealed in normal use." Some types of articles which would be hidden
intermittently are lingerie, garment hangers, tent pegs, inner soles for
shoes, etc.

III. ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171

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."

Examples of proper evidentiary basis for a rejection under  35 U.S.C.
171 that a claim is lacking in ornamentality would be common knowledge
in the art, the appearance of the design itself, the specification of a
related utility patent, information provided in the specification, or
the fact that an article would be hidden during its ultimate end use. 
Where the evidence supporting the rejection is based on common knowledge
in the art or is "well-known" in the art, the examiner should take
official notice by providing a statement that it is well known.  See
MPEP Section  2144.03. 

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.

IV. REJECTIONS MADE UNDER 35 U.S.C. 171

Rejections under  35 U.S.C. 171 as lacking in 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 ultimate hidden end use which is itself
evidence that the design is primarily functional, In re Stevens, 173
F.2d 1015, 81 USPQ 362 (CCPA 1949), unless the design "is clearly
intended to be noticed during the process of sale." 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 as
lacking in 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).

15.08 Lack of Ornamentality (Article Visible in End Use)

The claim is rejected under  35 U.S.C. 171 as being directed to
non-statutory 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 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 over
applicant's signature in an attempt to overcome this rejection
explaining, specifically and in depth, which features or areas of the
claimed design were created with "thought of ornament."  This
information will enable the examiner to determine if the design as a
whole is ornamental as required by  35 U.S.C. 171.  See   In re
Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).

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 End Use)

The claim is rejected under  35 U.S.C. 171 as being directed to
non-statutory 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 ornamental design for an
article which is hidden during its end use cannot be considered to be a
"matter of concern".  See 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. Classic
Corp., 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 appearance of
the article was of commercial concern to prospective customers or an
affidavit/declaration from actual customers attesting to their concern
with the design of the article. Applicant must also establish that the
design as a whole was created for the "purpose of ornamenting" or with
"thought of ornament" during the period of visibility, and that the
design is "primarily ornamental."  This may be established by way of an
affidavit/declaration under  37 CFR 1.132 over applicant's signature
explaining, specifically and in depth, which areas of the claimed design
were created for primarily ornamental reasons.  This information will
enable the examiner to determine if the design as a whole is "primarily
ornamental or primarily functional."  See L. A. Gear v. Thom McAn Shoe
Co., 988 F.2d 1117,  25 USPQ2d 1913 (Fed. Cir. 1993); In re Carletti,
328 F.2d 1020, 140 USPQ 653 (CCPA 1964); and Ex parte Webb, 30 USPQ2d
1064 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

In bracket 1, insert source of evidence of article being hidden in use;
for example, knowledge of the art, a utility patent, a brochure, a
response to a letter of inquiry, etc.

V. EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER 35
U.S.C. 171

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 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).

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 of visibility and ornamentality must be met for a
rejection under  35 U.S.C. 171 based on the article being hidden during
its end use to be overcome.

---SECTION---1504.01(d) Simulation

35 U.S.C. 171 requires that a design to be patentable be "original." 
Clearly, a design which simulates an existing object or person is not
original as required by the statute. The Supreme Court in Gorham
Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a
design as "the thing invented or produced, for which a patent is given."
"The arbitrary chance selection of a form of a now well known and
celebrated building, to be applied to toys, inkstands, paper - weights,
etc. does not, in my opinion, evince the slightest exercise of
invention...."  Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm'r
Pat. 1876).  This logic was reinforced by the CCPA in   In re Smith, 25
USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that "to
take a natural form, in a natural pose, ... does not constitute
invention" when affirming the rejection of a claim to a baby doll.  This
premise was also applied in In re Smith, 25 USPQ 360, 362, 1935 C.D.
573, 575 (CCPA 1935), which held that a "baby doll simulating the
natural features...of a baby without embodying some grotesqueness or
departure from the natural form" is not patentable.

Therefore, a claim directed to a design for an article which simulates a
well known or naturally occurring object or person should be rejected
under  35 U.S.C. 171 as nonstatutory subject matter in that the claimed
design lacks originality.  It would also be appropriate, if the examiner
has prior art which anticipates or renders the claim obvious, to reject
the claim under either  35 U.S.C. 102 or 103(a) concurrently.  In re
Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

15.08.02 Simulation (Entire Article)

The claim is rejected under  35 U.S.C. 171 as being directed to
nonstatutory subject matter in that the design lacks originality.  The
design is merely simulating [1] which applicant himself did not invent. 
See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 1935); In re Smith, 25
USPQ 360, 1935 C.D. 573 (CCPA 1935); and Bennage v.   Phillippi, 1876
C.D. 135, 9 O.G. 1159.

Examiner Note:

In bracket 1, insert the name of the article or person being simulated,
e.g., the White House, Marilyn Monroe, an animal which is not stylized
or caricatured in any way, a rock or shell to be used as paperweight,
etc.

---SECTION---1504.01(e) Offensive Subject Matter

Design applications which disclose subject matter which could be deemed
offensive to any race, religion, sex, ethnic group, or nationality, such
as those which include caricatures or depictions, should be rejected as
nonstatutory subject matter under  35 U.S.C. 171. See also MPEP Section 
608.  Form Paragraph 15.10 should be used.

15.10 Offensive Subject Matter

The disclosure, and therefore the claim in this application, is rejected
as being offensive and therefore improper subject matter for design
patent protection under  35 U.S.C. 171.  Such subject matter does not
meet the statutory requirements of  35 U.S.C. 171.  Moreover, since  37
CFR 1.3 proscribes the presentation of papers which are lacking in
decorum and courtesy, and this includes depictions of caricatures in the
disclosure, drawings, and/or a claim which might reasonably be
considered offensive, such subject matter as presented herein is deemed
to be clearly contrary to  37 CFR 1.3. See MPEP Section  608.

---SECTION---1504.02 Novelty

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to
patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country,
more than one year prior to the date of the application for patent in
the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was
the subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing
of the application in the United States, or

(e) the invention was described in a patent granted on an application
for patent by another filed in the United States before the invention
thereof by the applicant for patent, or on an international application
by another who has fulfilled the requirements of paragraphs (1), (2),
and (4) of section 371(c) of this title before the invention thereof by
applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented,
or

(g) before the applicant's invention thereof the invention was made in
this country by another who had not abandoned, suppressed, or concealed
it. In determining priority of invention there shall be considered not
only the respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception
by the other.

35 U.S.C. 172 Right of priority.

The right of priority provided for by subsections (a) through (d) of
section 119 of this title and the time specified in section 102(d) shall
be six months in the case of designs. The right of priority provided for
by section 119(e) of this title shall not apply to designs.

The standard for determining novelty under  35 U.S.C. 102 was set forth
by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962). 
"The degree of difference [from the prior art] required to establish
novelty occurs when the average observer takes the new design for a
different, and not a modified, already-existing design."  300 F.2d at
943, 133 USPQ at 205 (quoting Shoemaker, Patents For Designs, page 76). 
This "average observer" has been described in In re Nalbandian, 661 F.2d
1214, 1215-16 n.2, 211 USPQ 782, 784 n.2 (CCPA 1981), as having a "less
discerning eye." Therefore, absolute identity of the reference and the
claimed design is not required to support a rejection for lack of
novelty under  35 U.S.C. 102, however, the reference must be virtually
identical to the claimed design.

The "average observer" test does not require that the claimed design and
the prior art be from analogous arts when evaluating novelty. In re
Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).  Insofar as the
"average observer" under  35 U.S.C. 102 is not charged with knowledge of
any art, the issue of analogousness of prior art need not be raised.
This distinguishes  35 U.S.C. 102 from  35 U.S.C. 103(a) which requires
determination of whether the claimed design would have been obvious to
"a person of ordinary skill in the art."

When a claim is rejected under  35 U.S.C. 102 as being unpatentable over
prior art, those features of the design which are functional and/or
hidden during end use may not be relied upon to support patentability.
In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress
Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a
claim under  35 U.S.C. 102, mere differences in functional
considerations do not negate a finding of anticipation when determining
design patentability. Black & Decker, Inc. v. Pittway Corp., 636 F.2d
1193, 231 USPQ 252 (N.D. Ill. 1986).

It is not necessary that prior art be cited or applied that shows
functional and/or hidden features to be old in the art as long as the
examiner has properly relied on evidence to support the prima facie lack
of ornamentality of these individual features.  If applicant wishes to
rely on functional or hidden features as a basis for patentability, the
same standard for establishing ornamentality under  35 U.S.C. 171 must
be applied before these features can be given any patentable weight. See
MPEP Section  1504.01(c).

In evaluating a statutory bar based on  35 U.S.C. 102(b), the
experimental use exception to a statutory bar for public use or sale
(see MPEP Section  2133.03(e)) does not usually apply for design
patents. See   In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir.
1988).  However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200,
31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that "experimentation
directed to functional features of a product also containing an
ornamental design may negate what otherwise would be considered a public
use within the meaning of section 102(b)."  See MPEP Section 
2133.03(e)(6).

Registration of a design abroad is considered to be equivalent to
patenting under  35 U.S.C. 119(a)- (d) and  35 U.S.C. 102(d), whether or
not the foreign grant is published. (See Ex parte Lancaster,  151 USPQ
713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966);
Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App.
1965);   Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd.
App. 1966). The basis of this practice is that if the foreign applicant
has received the protection offered in the foreign country, no matter
what the protection is called ("patent," "Design Registration," etc.),
if the United States application is timely filed, a claim for priority
will vest. If, on the other hand, the U.S. application is not timely
filed, a statutory bar arises under  35 U.S.C. 102(d) as modified by  35
U.S.C. 172.  In order for the filing to be timely for priority purposes
and to avoid possible statutory bars, the U.S. design patent application
must be made within 6 months of the foreign filing. See also MPEP
Section  1504.10.

The laws of each foreign country vary in one or more respects.

	The following table sets forth the dates on which design rights can be
enforced in a foreign country (INID Code (24)) and thus, are also
useable in a  35 U.S.C. 102(d) rejection as modified by  35 U.S.C. 172. 
It should be noted that in many countries the date of registration or
grant is the filing date.



   Country or Organization	Date(s) Which Can Also Be Used for  35 U.S.C.
102(d) Purposes1 (INID Code (24))	   Comment

AT-Austria	Protection starts on the date of publication of the design in
the official gazette	

AU-Australia	Date of registration or grant which is the filing date	

BG-Bulgaria	Date of registration or grant which is the filing date	

BX-Benelux  (Belgium, Luxembourg, and the Netherlands)	Date on which
corresponding application became complete and regular according to the
criteria set by the law	

CA-Canada	Date of registration or grant	

CH-Switzerland	Date of registration or grant which is the filing date	
Minimum requirements:  deposit application, object, and deposit fee

CL-Chile	Date of registration or grant	

CU-Cuba	Date of registration or grant which is the filing date	

CZ-Czech Republic	Date of registration or grant which is the filing date	

DE-Germany	Date of registration or grant	The industrial design right can
be enforced by a court from the date of registration although it is in
force earlier (as from the date of filing-as defined by law).

DK-Denmark	Date of registration or grant which is the filing date	

EG-Egypt	Date of registration or grant which is the filing date	

ES-Spain	Date of registration or grant 	

FI-Finland	Date of registration or grant which is the filing date	

FR-France	Date of registration or grant which is the filing date	

Continued on next page

GB-United Kingdom	Date of registration or grant which is the filing date	
Protection arises automatically under the Design Right provision when
the design is created.  Proof of the date of the design creation needs
to be kept in case the design right is challenged.  The protection
available to designs can be enforced in the courts following the date of
grant of the Certificate of Registration as of the date of registration
which stems from the date of first filing of the design in the UK or, if
a priority is claimed under the Convention, as another country. 

HU-Hungary	Date of registration or grant	With retroactive effect as from
the filing date

JP-Japan	Date of registration or grant	

KR-Republic of Korea	Date of registration or grant	

MA-Morocco	Date of registration or grant which is the filing date	

MC-Monaco	Date of registration or grant which is the filing date	Date of
prior disclosure declared on deposit

NO-Norway	Date of registration or grant which is the filing date	

OA-African Intellectual Property Organization (OAPI) (Benin, Burkina
Faso, Cameroon, Central African Republic, Chad, Congo, Cote d`Ivoire, 
Gabon, Guinea, Mali, Mauritania, Niger, Senegal, and Togo)	Date of
registration or grant which is the filing date	

PT-Portugal	Date of registration or grant	

RO-Romania	Date of registration or grant which is the filing date	

RU-Russian Federation	Date of registration or grant which is the filing
date	

SE-Sweden	Date of registration or grant	

TN-Tunisia	Date of registration or grant which is the filing date	

Continued on next page

TT-Trinidad and Tobago	Date of registration or grant which is the filing
date	

WO-World Intellectual Property Organization (WIPO)		Subject to Rule 14.2
of the Regulations (on defects), the International Bureau enters the
international deposit in the International Register on the date on which
it has in its possession the application together with the items
required. Reproductions, samples, or models pursuant to Rule 12, and the
prescribed fees.

 1Based on information taken from the "Survey of Filing Procedures and
Filing Requirements, as well as of Examination Methods and Publication
Procedures, Relating to Industrial Designs" as adopted by the PCIPI
Executive Coordination Committee of the World Intellectual Property
Organization (WIPO) at its fifteenth session on November 25, 1994.

Rejections under  35 U.S.C. 102(d) as modified by  35 U.S.C. 172 should
only be made when the examiner knows that the application for foreign
registration/patent has actually issued before the U. S. filing date
based on an application filed more than six (6) months prior to filing
the application in the United States.  If the grant of a
registration/patent based on the foreign application is not evident from
the record of the U. S. application or from information found within the
preceding charts, then the statement below should be included in the
first action on the merits of the application:

15.03.01 Foreign Filing More Than 6 Months Before U.S. Filing

Acknowledgment is made of the [1] application identified in the
declaration which was filed more than six months prior to the filing
date of the present application.  Applicant is reminded that if the [2]
application matured into a form of patent protection before the filing
date of the present application it would constitute a statutory bar to
the issuance of a design patent in the United States under  35 U.S.C.
102(d) in view of  35 U.S.C. 172.

Examiner Note:

In brackets 1 and 2, insert the name of country where application was
filed.

Form paragraphs for use in rejections under  35 U.S.C. 102 are set forth
below.

15.11 35 U.S.C. 102(a) Rejection

The claim is rejected under  35 U.S.C. 102(a) as being clearly
anticipated by   [1] because the invention was known or used by others
in this country, or patented or described in a printed publication in
this or a foreign country before the invention thereof by the applicant
for patent.

15.12 35 U.S.C. 102(b) Rejection

The claim is rejected under  35 U.S.C. 102(b) as being clearly
anticipated by   [1] because the invention was patented or described in
a printed publication in this or a foreign country, or in public use or
on sale in this country more than one (1) year prior to the application
for patent in the United States.

15.13 35 U.S.C. 102(c) Rejection

The claim is rejected under  35 U.S.C. 102(c) because the invention has
been abandoned.

15.14 35 U.S.C. 102(d)/172 Rejection

The claim is rejected under  35 U.S.C. 102(d), as modified by  35 U.S.C.
172, as being clearly anticipated by   [1] because the invention was
first patented or caused to be patented, or was the subject of an
inventor's certificate by the applicant, or his legal representatives or
assigns in a foreign country prior to the date of the application for
patent in this country, or on an application for patent or inventor's
certificate filed more than six (6) months before the filing of the
application in the United States.

15.15 35 U.S.C. 102(e) Rejection

The claim is rejected under  35 U.S.C. 102(e) as being clearly
anticipated by   [1] because the invention was described in a patent
granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent.

15.16 35 U.S.C. 102(f) Rejection

The claim is rejected under  35 U.S.C. 102(f) because applicant did not
himself invent the subject matter sought to be patented.

15.17 35 U.S.C. 102(g) Rejection

The claim is rejected under  35 U.S.C. 102(g) because, before the
applicant's invention thereof, the invention was made in this country by
another who had not abandoned, suppressed or concealed it.

15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications are
concerned solely with the ornamental appearance of an article of
manufacture.  The functional and/or structural features stressed by
applicant in the papers are of no concern in design cases, and are
neither permitted nor required.  Function and structure fall under the
realm of utility patent applications.

The following form paragraphs may be used in a second or subsequent
action, where appropriate.

15.38 Rejection Maintained

The arguments presented have been carefully considered, but are not
persuasive that the rejection of the claim under [1] should be
withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

15.40.01 Final Rejection Under Other Statutory Provisions

The claim is again and FINALLY REJECTED under   [1] as   [2].

Examiner Note:

1. In bracket 1, insert statutory basis.

2. In bracket 2, insert reasons for rejection.

---SECTION---1504.03 Nonobviousness

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented 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. Patentability
shall not be negatived by the manner in which the invention was made.

                  +++    

(c) Subject matter developed by another person, which qualifies as prior
art only under subsection (f) or (g) of section 102 of this title, shall
not preclude patentability under this section where the subject matter
and the claimed invention were, at the time the invention was made,
owned by the same person or subject to an obligation of assignment to
the same person.

A claimed design that meets the test of novelty must additionally be
evaluated for nonobviousness under 35 U.S.C 103(a).

I. GATHERING THE FACTS

The basic factual inquiries guiding the evaluation of obviousness, as
outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1,
148 USPQ 459 (1966), are applicable to the evaluation of design
patentability:

(A) Determining the scope and content of the prior art;

(B) Ascertaining the differences between the claimed invention and the
prior art;

(C) Resolving the level of ordinary skill in the art; and

(D) Evaluating any objective evidence of nonobviousness (i.e., so-called
"secondary considerations").

A. Scope of the Prior Art

The scope of the relevant prior art for purposes of evaluating
obviousness under  35 U.S.C. 103(a) extends to all "analogous arts."

While the determination of whether arts are analogous is basically the
same for both design and utility inventions (see MPEP Section  904.01(c)
and Section  2141.01(a)), In re Glavas, 230 F.2d 447, 450 109 USPQ 50,
52 (CCPA 1956) provides specific guidance for evaluating analogous arts
in the design context, which should be used to supplement the general
requirements for analogous art as follows:

The question in design cases is not whether the references sought to be
combined are in analogous arts in the mechanical sense, but whether they
are so related that the appearance of certain ornamental features in one
would suggest the application of those features to the other.

   Thus, if the problem is merely one of giving an attractive appearance
to a surface, it is immaterial whether the surface in question is that
of wall paper, an oven door,  or a piece of crockery. . . .

   On the other hand, when the proposed combination of references
involves material modifications of the basic form of one article in view
of another, the nature of the article involved is a definite factor in
determining whether the proposed change involves [patentable] invention.

Therefore, where the differences between the claimed design and the
prior art are limited to the application of ornamentation to the surface
of an article, any prior art reference which discloses substantially the
same surface ornamentation would be considered analogous art. Where the
differences are in the shape or form of the article, the nature of the
articles involved must also be considered.

B. Differences Between the Prior Art and the Claimed Design

In determining patentability under  35 U.S.C. 103(a), it is the overall
appearance of the design that must be considered.  In re Leslie, 547
F.2d 116, 192 USPQ 427 (CCPA 1977).  The mere fact that there are
differences between a design and the prior art is not alone sufficient
to justify patentability. In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA
1961).

All differences between the claimed design and the closest prior art
reference should be identified in any rejection of the design claim
under  35 U.S.C. 103(a). If any differences are considered de minimis or
inconsequential from a design viewpoint, the rejection should so state.

C. Level of Ordinary Skill in the Art

In order to be unpatentable,  35 U.S.C. 103(a) requires that an
invention must have been obvious to a person having "ordinary skill in
the art" to which the subject matter sought to be patented pertains. The
"level of ordinary skill in the art" from which obviousness of a design
claim must be evaluated under  35 U.S.C. 103(a) has been held by the
courts to be the perspective of the "designer of . . . articles of the
types presented." In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782,
784 (CCPA 1981);   In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA
1982).

D. Secondary Considerations

Secondary considerations, such as commercial success and copying of the
design by others, are relevant to the evaluation of obviousness of a
design claim. Evidence of nonobviousness may be present at the time a
prima facie case of obviousness is evaluated or it may be presented in
rebuttal of a prior obviousness rejection.

II. PRIMA FACIE OBVIOUSNESS

Once the factual inquiries mandated under Graham v. John Deere Co., 383
U. S. 1, 148 USPQ 459 (1966), have been made, the examiner must
determine whether they support a conclusion of prima facie obviousness.
To establish prima facie obviousness, all the claim limitations must be
taught or suggested by the prior art.

In determining prima facie obviousness, the proper standard is whether
the design would have been obvious to a designer of ordinary skill with
the claimed type of article.  In re Nalbandian, 661 F.2d 1214, 211 USPQ
782 (CCPA 1981).

As a whole, a design must be compared with something in existence, and
not something brought into existence by selecting and combining features
from prior art references. In re Jennings, 182 F.2d 207, 86 USPQ 68
(CCPA 1950).  The "  something in existence" referred to in Jennings has
been defined as "...a reference... the design characteristics of which
are basically the same as the claimed design...." In re Rosen, 673 F.2d
388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did
"...not give the same visual impression..." as the design claimed but
had a "...different overall appearance and aesthetic appeal...".) 
Hence, it is clear that "  design characteristics" means overall visual
appearance. This definition of "  design characteristics" is reinforced
in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206,
1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In
re Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re
Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977).  Specifically, in
the Yardley decision, it was stated that "[t]he basic consideration in
determining the patentability of designs over prior art is similarity of
appearance."  493 F.2d at 1392-93, 181 USPQ at 334.  Therefore, in order
to support a holding of obviousness, a basic reference must be more than
a design concept; it must have an appearance substantially the same as
the claimed design. In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed.
Cir. 1993).  Absent such a reference, no holding of obviousness under 
35 U.S.C. 103(a) can be made, whether based on a single reference alone
or in view of modifications suggested by secondary prior art.

A rejection under  35 U.S.C. 103(a) based on a single non-analogous
reference would not be proper. The reason is that under  35 U.S.C.
103(a), a designer of ordinary skill would not be charged with knowledge
of prior art that is not analogous to the claimed design.

Examiners are advised that differences between the claimed design and a
basic reference may be held to be minor in nature and unrelated to the
overall aesthetic appearance of the design with or without the support
of secondary references.  In re Nalbandian, 661 F.2d 1214, 211 USPQ 782
(CCPA 1981).  If such differences are shown by secondary references,
they should be applied so as to leave no doubt that those differences
would have been obvious to a designer of ordinary skill in the art. In
re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963). 

When a claim is rejected under  35 U.S.C. 103(a) as being unpatentable
over prior art, features of the design which are functional and/or
hidden during end use may not be relied upon to support patentability. 
"[A] design claim to be patentable must also be ornamental; and
functional features or forms cannot be relied upon to support its
patentability." Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I.
1958).  "It is well settled that patentability of a design cannot be
based on elements which are concealed in the normal use of the device to
which the design is applied." In re Cornwall, 230 F.2d 457, 459, 109
USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA
1961).  It is not necessary that prior art be relied upon in a rejection
under  35 U.S.C. 103(a) to show similar features to be functional and/or
hidden in the art.  However, examiners must provide evidence to support
the prima facie functionality of such features.  Furthermore, hidden
portions or functional features cannot be relied upon as a basis for
patentability.  If applicant wishes to rely on functional or hidden
features as a basis for patentability, then the same standard for
establishing ornamentality under  35 U.S.C. 171 must be applied before
these features can be given any patentable weight.  See MPEP Section 
1504.01(c).

A. Combining Prior Art References

A rejection under  35 U.S.C. 103(a) would be appropriate if a designer
of ordinary skill would have been motivated to modify a basic reference
by deleting features thereof or by interchanging with or adding features
from pertinent secondary references. In order for secondary references
to be considered, there must be some suggestion in the prior art to
modify the basic design with features from the secondary references. In
re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). 
The long standing test for properly combining references has been
"...whether they are so related that the appearance of certain
ornamental features in one would suggest the application of those
features to the other."  In re Glavas, 230 F.2d 447, 450, 109 USPQ 50,
52 (CCPA 1956).

The prohibition against destroying the function of the design is
inherent in the logic behind combining references to render a claimed
invention obvious under  35 U.S.C. 103(a).  If the proposed combination
of the references alters the primary reference in such a way that its
broad function can no longer be carried out, clearly the combination of
the prior art would not have been obvious to one of ordinary skill in
the art.  It is permissible to modify the primary reference to the
extent that the specific function of the article may be affected while
the broad function is not affected.  For example, a primary reference to
a cabinet design claimed as airtight could be modified to no longer be
airtight so long as its function as a cabinet would not be impaired.

1. Analogous Art

When a modification to a basic reference involves a change in
configuration, both the basic and secondary references must be from
analogous arts. In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). 
The reason for this is two fold.  First, a designer of ordinary skill is
only charged with knowledge of art related to that of the claimed
design.  Second, the ornamental features of the references must be
closely related in order for a designer of ordinary skill to have been
motivated to have modified one in view of the other.  Hence, when
modifying a basic reference, a designer of ordinary skill would have
looked at design features of other related references for precisely the
purpose of observing the ornamental characteristics they disclosed.

Analogous art can be more broadly interpreted when applied to a claim
that is directed to a design with a portion simulating a well known or
naturally occurring object. The simulative nature of that portion of the
design is prima facie evidence that art which simulates that portion
would be within the level of ordinary skill under  35 U.S.C. 103(a).

2. Non-analogous Art

When modifying the surface of a basic reference so as to provide it with
an attractive appearance, it is immaterial whether the secondary
reference is analogous art, since the modification does not involve a
change in configuration or structure and would not have destroyed the
characteristics (appearance and function) of the basic reference. In re
Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

III. REBUTTAL OF THE PRIMA FACIE CASE

Once a prima facie case of obviousness has been established, the burden
shifts to the applicant to rebut it, if possible, with objective
evidence of nonobviousness.  Examples of secondary considerations are
commercial success, expert testimony and copying of the design by
others.  Any objective evidence of nonobviousness or rebuttal evidence
submitted by applicant, including affidavits or declarations under  37
CFR 1.132, must be considered by examiners in determining patentability
under  35 U.S.C. 103(a).

When evidence of commercial success is submitted, examiners must
evaluate it to determine whether there is objective evidence of success,
and whether the success can be attributed to the ornamental design.  
Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed.
Cir. 1984)  ; In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). 
An affidavit or declaration under  37 CFR 1.132 has minimal evidentiary
value on the issue of commercial success if there is no nexus or
connection between the sales of the article in which the design is
embodied and the ornamental features of the design. Avia Group Int'l
Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). 

Submission of expert testimony must establish the professional
credentials of the person signing the affidavit or declaration, and
should not express an opinion on the ultimate legal issue of obviousness
since this conclusion is one of law, rather than opinion. Avia Group
Int'l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988);
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed.
Cir. 1985).

With regard to evidence submitted showing that competitors in the
marketplace are copying the design, more than the mere fact of copying
is necessary to make that action significant because copying may be
attributable to other factors such as lack of concern for patent
property or contempt for the patentee's ability to enforce the patent.
Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ
881 (Fed. Cir. 1985).

For additional information regarding the issue of objective evidence of
nonobviousness, attention is directed to MPEP Section  716 through
Section  716.06.

15.18 35 U.S.C. 103(a) Rejection (Single Reference)

The claim is rejected under  35 U.S.C. 103(a) as being unpatentable over
[1].  Although the invention is not identically disclosed or described
as set forth in  35 U.S.C. 102, if the differences between the subject
matter sought to be patented 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, the invention is not patentable.

15.70 Preface, 35 U.S.C. 103(a) Rejection

It would have been obvious to one of ordinary skill in the art at the
time the invention was made to   [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 1.

15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single Reference)

It is well settled that it is unobviousness in the overall appearance of
the claimed design, when compared with the prior art, rather than minute
details or small variations in design as appears to be the case here,
that constitutes the test of design patentability. See In re Frick, 275
F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128
USPQ 539 (CCPA 1961).

15.19 35 U.S.C. 103(a) Rejection (Multiple References)

The claim is rejected under  35 U.S.C. 103(a) as being unpatentable over  
[1] in view of [2].

Although the invention is not identically disclosed or described as set
forth in  35 U.S.C. 102, if the differences between the subject matter
sought to be patented 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 of ordinary skill in the art to which said subject matter
pertains, the invention is not patentable.

15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple References)

This modification of the basic reference in light of the secondary prior
art is proper because the applied references are so related that the
appearance of features shown in one would suggest the application of
those features to the other.  See In re Rosen, 673 F.2d 388, 213 USPQ
347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982),
and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).  Further, it is
noted that case law has held that one skilled in the art is charged with
knowledge of the related art; therefore, the combination of old
elements, herein, would have been well within the level of ordinary
skill.  See In re Antle, 444 F.2d 1168, 170 USPQ 285 (CCPA 1971) and In
re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications are
concerned solely with the ornamental appearance of an article of
manufacture.  The functional and/or structural features stressed by
applicant in the papers are of no concern in design cases, and are
neither permitted nor required.  Function and structure fall under the
realm of utility patent applications.

The following form paragraphs may be used in a second or subsequent
action where appropriate.

15.38 Rejection Maintained

The arguments presented have been carefully considered, but are not
persuasive that the rejection of the claim under [1] should be
withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

15.39 Obviousness Under 35 U.S.C. 103(a) Repeated

It remains the examiner's position that the   [1] design claimed is
obvious under  35 U.S.C. 103(a) over   [2].

Examiner Note:

In bracket 1, insert name of design.

15.39.01 35 U.S.C. 103(a) Rejection Repeated (Multiple References)

It remains the examiner's position that the claim is obvious under  35
U.S.C. 103(a) over   [1] in view of [2].

15.39.02 Final Rejection Under 35 U.S.C. 103(a) (Single Reference)

The claim is again and FINALLY REJECTED under  35 U.S.C. 103(a) over  
[1].

Examiner Note:

See paragraphs in MPEP Chapter 700, for "Action is Final" and "Advisory
after Final" paragraphs.

15.40 Final Rejection Under 35 U.S.C. 103(a) (Multiple References)

The claim is again and FINALLY REJECTED under  35 U.S.C. 103(a) as being
unpatentable over   [1] in view of   [2].

15.40.01 Final Rejection Under Other Statutory Provisions

The claim is again and FINALLY REJECTED under   [1] as   [2].

Examiner Note:

1. In bracket 1, insert statutory basis.

2. In bracket 2, insert reasons for rejection.

---SECTION---1504.04 Considerations Under 35 U.S.C. 112

35 U.S.C. 112 Specification.

The specification shall contain a written description of the invention,
and of the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best mode contemplated by
the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.

                  +++    

The drawing in a design application is incorporated into the claim by
use of the claim language "as shown."

Additionally, the drawing disclosure can be supplemented by narrative
description in the specification (see MPEP Section  1503.01, paragraph
II). This description is incorporated into the claim by use of the
language "as shown and described." See MPEP Section  1503.03.

I. 35 U.S.C. 112, FIRST PARAGRAPH

A. Enablement and Sufficiency of Disclosure

A defect in the drawing or the narrative description in the
specification that renders the design unclear, confusing, or incomplete
supports a rejection of the claim under  35 U.S.C. 112, first paragraph,
as being based on a nonenabling disclosure. An evaluation of the claim
to determine if it meets the enablement requirement of  35 U.S.C. 112,
first paragraph, cannot be based on the drawings alone but must include
consideration of the scope of the claim as identified by the title and
specification.  "[T]he adequacy of the disclosure must be determined by
reference to the scope asserted." Philco Corp. v. Admiral Corp., 199 F.
Supp. 797, 131 USPQ 413, 418 (D. Del. 1961).

15.20.01 Rejection, 35 U.S.C. 112, First Paragraph (Nonenabling)

The claim is rejected under  35 U.S.C. 112, first paragraph, as the
claimed invention is not described in such full, clear, concise and
exact terms as to enable any person skilled in the art to make and use
the same.

The claim is nonenabling because [1].

15.73 Drawing Corrections Required

Failure to submit proposed drawing corrections or additional drawing
views overcoming all of the deficiencies in the drawing disclosure set
forth above, or an explanation why proposed drawing corrections or
additional drawing views are not necessary will result in the rejection
of the claim under  35 U.S.C. 112, first paragraph, being made FINAL in
the next Office action.

Only those surfaces of the article that are visible at the point of sale
or during use should be disclosed to meet the requirement of  35 U.S.C.
112, first paragraph, for an enabling disclosure.  "The drawing should
illustrate the design as it will appear to purchasers and users, since
the appearance is the only thing that lends patentability to it under
the design law."  Ex parte Kohler, 1905 C.D. 192, 192, 116 O.G. 1185,
1185 (Comm'r Pat. 1905).  The lack of disclosure of those surfaces of
the article which are not claimed or which are hidden during sale or use
does not violate the enablement requirements of the first paragraph of 
35 U.S.C. 112 because the "patented ornamental design has no use other
than its visual appearance...." In re Harvey, 12 F.3d 1061, 1064, 29
USPQ2d 1206, 1208 (Fed. Cir. 1993).  Therefore, to make the "visual
appearance" of the design merely involves the reproduction of what is
shown in the drawings; it is not necessary that the functionality of the
article be reproduced as this is not claimed.  The function of a design
is "that its appearance adds attractiveness, and hence commercial value,
to the article embodying it."    Ex parte Cady, 1916 C.D. 57, 61, 232
O.G. 619, 621 (Comm'r Pat. 1916).

The undisclosed surfaces not seen during sale or use are not required to
be described in the specification even though the title of the design is
directed to the complete article because the design is embodied only in
those surfaces which are visible. Ex parte Salsbury, 38 USPQ 149, 1938
C.D. 6 (Comm'r Pat. 1938).  While it is not necessary to show in the
drawing those visible surfaces that are flat and unornamented, they
should be described in the specification by way of a special
description. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm'r Pat.
1938).  Such special description may not be used to describe visible
surfaces which include structure that is clearly not flat.  Philco Corp.
v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).  See
also MPEP Section  1503.02.

If the title (in the claim) defines an entire article but the drawing
fails to disclose surfaces which would be visible either during use or
on sale, applicant may include the following statement in the
specification in order to identify the scope of the claimed design: "The
(identify those surfaces not shown) form(s) no part of the claimed
design."

B. New Matter

New matter is subject matter which has no antecedent basis in the
original specification, drawings or claim (MPEP Section  608.04).  An
amendment to the claim must have antecedent basis in the original
disclosure.  35 U.S.C. 132;  37 CFR 1.121(a)(b).  Prior to final action,
all amendments will be entered in the applications and will be
considered by the examiner. Ex parte Hanback, 231 USPQ 739 (Bd. Pat.
App. & Inter. 1986). If new matter is added to the disclosure, the
disclosure should be objected to under  35 U.S.C. 112, first paragraph
as lacking support in the application as originally filed.  The claim
should be rejected under  35 U.S.C. 112, first paragraph, if
appropriate.

The scope of a design claim is defined by what is shown in full lines in
the application drawings. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed.
Cir. 1988).  The claim may be amended by broadening or narrowing its
scope within the bounds of the disclosure as originally filed.

An amendment which does alter the appearance of the amended claim by
changing its configuration alters the claimed design. A change in the
configuration of the claimed design is considered a departure from the
original disclosure and introduces prohibited new matter (37 CFR
1.121(a)(6)).  See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir.
1983).  An amendment which does alter the appearance of the amended
claim by removing its surface treatment may be permitted if it is clear
from the application that applicant had possession of the basic design
without the surface treatment at the time of filing of the application.
See In re Daniels, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).

Amendments to the title must have antecedent basis in the original
application to be permissible. Any amendment to the title which has no
antecedent basis in the original application should be objected to under 
35 U.S.C. 132 as introducing new matter into the disclosure.  See MPEP
Section  1503.01, paragraph I.

Examples of permissible amendments filed with the original application
include: (1) A preliminary amendment filed simultaneously with the
application papers, that is specifically identified in the original
oath/declaration as required by  37 CFR 1.63 and MPEP Section 
608.04(b); and (2) The inclusion of a disclaimer in the original
specification or on the drawings/photographs as filed. See  37 CFR
1.152(b)(1) and MPEP Section  1503.01 and Section  1503.02.

An example of a permissible amendment submitted after the filing of the
application would be an amendment that does not involve a departure from
the configuration of the original disclosure (37 CFR 1.121(a)(6)).

Examples of amendments which introduce new matter include: (1) An
amendment to the claim without antecedent basis in the original
disclosure which would change the configuration or surface appearance of
the original design by the deletion or reduction to broken lines of a
portion thereof; and (2) An amendment to the claim without antecedent
basis in the original disclosure which would change the configuration or
surface appearance of the original design by the addition of previously
undisclosed subject matter. In re Berkman, 642 F.2d 427, 209 USPQ 45
(CCPA 1981).

An amendment to the claim which has no antecedent basis in the
specification and drawings as originally filed introduces new matter
because that subject matter is not described in the application as
originally filed.  The claim should be rejected under  35 U.S.C. 112,
first paragraph.  An amendment to the disclosure which has no antecedent
basis in the original application should be objected to under 35 U.S.C.
132 and a requirement should be made to cancel the new matter.

15.20 Rejection, 35 U.S.C. 112, First Paragraph

The claim is rejected under  35 U.S.C. 112, first paragraph, as   [1].

Examiner Note:

Supply further explanation as appropriate.  New matter rejections should
be made under this section of the statute when the claims depend upon
the new matter.  See also form paragraph 15.51.

15.51 35 U.S.C. 112, First Paragraph Rejection (New Matter)

The proposed additional or amended illustration has been entered,
however such illustration introduces new matter (35 U.S.C. 132,  37 CFR 
1.121).  Due to the differences between the original and the new
drawings, applicant's disclosure fails to comply with the description
requirement of 35 U.S.C. 112, first paragraph.  Accordingly, the claim
is rejected in that the disclosure does not satisfy the description
requirement of  35 U.S.C. 112, first paragraph.  See In re Rasmussen,
650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

15.65 Amendment May Not Be Possible

The claim might be fatally defective; that is, it might not be possible
to   [1] without introducing new matter (35 U.S.C. 132,  37 CFR 1.121).

Examiner Note:

In bracket 1, identify portion of the claimed design which is
insufficiently disclosed.

II. 35 U.S.C. 112, SECOND PARAGRAPH

Defects in claim language give rise to a rejection of the claim under
the second paragraph of  35 U.S.C. 112. Typical examples include:

(A) Use of phrases in the claim such as "substantially as shown," "or
similar article," "or the like," or equivalent terminology. Ex parte
Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988); Ex parte Pappas,
23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

15.22.01 Rejection,  35 U.S.C. 112, 2nd Paragraph ("Substantially" in
Claim)

The claim is rejected under  35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.  The claim
is indefinite because of the use of the term "substantially" therein. 
Cancellation of said term will overcome the rejection.  See Ex parte
Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988), Ex parte Pappas,
23 USPQ2d 1636 (Bd. App. & Inter. 1992) and  37 CFR 1.153.

Examiner Note:

This rejection should be used where there is another rejection in the
Office action.  For issue with an examiner's amendment, see form
paragraph 15.69.

15.69 Remove Indefinite Language ("Substantially") by Examiner's
Amendment

The term "substantially" in the claim renders the claim indefinite under
35 U.S.C. 112, second paragraph, and  37 CFR 1.153.  See Ex parte
Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988) and Ex parte
Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).  The term
"substantially" has been cancelled from the claim by authorization of
[1] in a telephone interview on [2].

15.22.02 Rejection, 35 U.S.C. 112, 2nd Paragraph ("Or the Like" In
Claim)

The claim is rejected under  35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.  The claim
is indefinite because of the use of the phrase "  [1]" following the
title.  Cancellation of said phrase in the claim and each occurrence of
the title throughout the papers, except the oath or declaration, will
overcome the rejection.  See Ex parte Sussman, 8 USPQ2d 1443 (Bd. App. &
Inter. 1988), Ex parte Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992)
and  37 CFR 1.153.

Examiner Note:

1. This rejection should be used where there is another rejection in the
Office action.  For issue with an examiner's amendment, see form
paragraph 15.69.01.

2. In bracket 1, insert --or the like-- or --or similar article--.

15.69.01 Remove Indefinite Language ("Or The Like") by Examiner's
Amendment

The phrase [1] in the claim following the title renders the claim
indefinite.  By authorization of [2] in a telephone interview on [3],
the phrase has been cancelled from the claim and at each occurrence of
the title throughout the papers, except the oath or declaration (35
U.S.C. 112, second paragraph, and  37 CFR 1.153).  See Ex parte Sussman,
8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988) and Ex parte Pappas, 23
USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

Examiner Note:

In bracket 1, insert objectionable phrase, e.g., --or the like--, --or
similar article--, etc.

(B) The designation of the design as collectively shown in the drawing,
referenced in the title and described in the specification is such that
it cannot be determined what article of manufacture is being claimed. 
For example, a design claimed as a "widget" which does not identify a
known or recognizable article of manufacture.

15.22 Rejection,  35 U.S.C. 112, 2nd Paragraph

The claim is rejected under  35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which the applicant regards as the invention.

Examiner Note:

1. Use this paragraph when the claim language does not identify a known
article of manufacture in which the design is embodied or applied.

2. Add a full explanation of the rejection.

15.21.01 Rejection,  35 U.S.C. 112 (Second Paragraph) (Information
Requested)

The claim is rejected for failing to particularly point out and
distinctly claim the invention as required in  35 U.S.C. 112, second
paragraph.  The title of the article in which the design is embodied or
applied is too ambiguous and therefore indefinite for the examiner to
make a proper examination of the claim under  37 CFR 1.104.

Applicant is therefore required to provide a sufficient explanation of
the nature and intended use of the article in which the claimed design
is embodied or applied, so that a proper classification and reliable
search can be made. See  37 CFR 1.154(a)(3); MPEP 1503.01. Additional
information, if available, regarding analogous fields of search,
pertinent prior art, advertising brochures and the filing of copending
utility applications would also prove helpful.  If a utility application
has been filed, please furnish its application number.

This information should be submitted in the form of a separate paper,
and should not be inserted in the specification (37 CFR 1.56).  See also 
37 CFR 1.97, 1.98 and 1.99.

Examiner Note:

This rejection may be used when the applicant fails to respond to a
request for information and as otherwise deemed appropriate.

III. RELATIONSHIP BETWEEN THE REQUIREMENTS OF THE FIRST AND SECOND
PARAGRAPHS OF 35 U.S.C. 112

While the requirements of the first and second paragraphs of  35 U.S.C.
112 are separate and distinct, the relationship between these
requirements is not always easily distinguishable in design patent
practice due to the fact that the drawing disclosure (which is
equivalent to the written description requirement) is incorporated into
the claim by the use of the claim language "as shown."  This reference
to the drawing in the claim is the basis for a rejection under  35
U.S.C. 112, first paragraph, when an amendment to the drawing disclosure
of the design introduces new matter (35 U.S.C. 132). When the drawing
disclosure is not consistent with the scope of the subject matter
defined in the claim, that fact alone does not render the claim
indefinite or otherwise not in compliance with  35 U.S.C. 112, second
paragraph. Rather, the claim is based on an insufficient disclosure and
should be rejected under  35 U.S.C. 112, first paragraph.  However, a
rejection under  35 U.S.C. 112, first and second paragraphs, should be
made when the drawing disclosure and the claim disagree, conflict or are
inconsistent, other than in scope, and confusion exists as to whether
the claimed design is sufficiently disclosed in the enabling teachings
of the drawings. For instance, if the subject matter defined in the
claim is directed to a design embodied in a chair and the drawing only
discloses a design embodied in a table, the claim should be rejected
under  35 U.S.C. 112, first and second paragraphs, as being based on a
nonenabling disclosure and as being indefinite since it is not clear
what article of manufacture is being claimed.

15.21 Rejection, 35 U.S.C. 112, First And Second Paragraphs

The claim is rejected under  35 U.S.C. 112, first and second paragraphs,
as the claimed invention is not described in such full, clear, concise
and exact terms as to enable any person skilled in the art to make and
use the same, and/or for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.

Examiner Note:

1. This paragraph should not be used when it is appropriate to make one
or more separate rejections under the first and/or the second paragraph
of  35 U.S.C. 112.  In other words, separate rejections under either the
first or the second paragraph of  35 U.S.C. 112 are preferred.  This
paragraph should only be used when either the first or the second
paragraph of  35 U.S.C. 112 could be applicable, but due to some
question of interpretation, uncertainty exists as to whether the claimed
invention is sufficiently described in the enabling teachings of the
specification or the claim language is indefinite.

2. A full explanation should be provided with this rejection.

Where the design claim would otherwise be patentable but for the
presence of any rejection under  35 U.S.C. 112, first and/or second
paragraphs, Form Paragraph 15.58.01 should be used.

15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections)

The claimed design is patentable over the references cited. However, a
final determination of patentability will be made upon resolution of the
above rejection.

Form Paragraphs 15.38 and 15.40.01 may be used in a second or subsequent
action, where appropriate (see MPEP Section  1504.02).

---SECTION---1504.05 Restriction

General principles of utility restriction are set forth in Chapter 800
of the MPEP. These principles are also applicable to design restriction
practice with the exception of those differences set forth in this
section.

Unlike a utility patent application, which can contain plural claims
directed to plural inventions, a design patent application may only have
a single claim and thus must be limited to a single invention. 
Therefore, the examiner will require restriction in each design
application which contains more than one invention.

Restriction may be required under  35 U.S.C. 121 if subject matter in a
design patent application as disclosed in the drawing is either
independent or distinct and is able to support separate design patents.
If the embodiments are held to be patentably indistinct and can be
covered by a single claim, any rejection of one embodiment over prior
art will apply equally to all other embodiments. Ex parte Appeal No.
315-40, 152 USPQ 71 (Bd. App. 1965).

I. INDEPENDENT INVENTIONS

Design inventions are independent if there is no apparent relationship
between two or more disparate articles disclosed in the drawings; for
example, a pair of eyeglasses and a door handle; a bicycle and a camera;
an automobile and a bathtub. Also note examples in MPEP Section  806.04.
Restriction in such cases is clearly proper. This situation may be
rarely presented since design patent applications are seldom filed
containing disclosures of independent articles.

II. DISTINCT INVENTIONS

Design inventions are distinct if the overall appearance of two or more
embodiments of an article as disclosed in the drawings are different in
appearance or scope, for example, two embodiments of a brush, and their
appearances are patentable (novel and unobvious) over each other.
Restriction in such cases is also clearly proper. Distinct designs may
constitute either multiple embodiments of the same article or they may
be related as a combination and subcombination of the overall design. 
In determining the question of patentable distinctness under  35 U.S.C.
121 in a design patent application, a search of the prior art may be
necessary.

A. Multiple Embodiments - Difference in Appearance

It is permissible to illustrate more than one embodiment of a design
invention in a single application. However, such embodiments may be
presented only if they involve a single inventive concept and are not
patentably distinct from one another. See In re Rubinfield, 270 F.2d
391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct
over one another do not constitute a single inventive concept and thus
may not be included in the same design application.  In re Platner, 155
USPQ 222 (Comm'r Pat. 1967). The disclosure of plural embodiments does
not require or justify more than a single claim, which claim must be in
the formal terms stated in MPEP Section  1503.03. The specification
should make clear that multiple embodiments are disclosed and should
particularize the differences between the embodiments. If the disclosure
of any embodiment relies on the disclosure of another embodiment for
completeness to satisfy the requirements of  35 U.S.C. 112, first
paragraph, the differences between the embodiments must be identified in
the figure descriptions.  For example, the second embodiment of a
cabinet discloses a single view showing only the difference in the front
door of the cabinet of the first embodiment; the figure description
should state that this view "is a second embodiment of Figure 1, the
only difference being the configuration of the door."  This type of
statement in the description is understood to incorporate the disclosure
of the first embodiment to complete the disclosure of the second
embodiment.

The obviousness standard under  35 U.S.C. 103(a) must be applied in
determining whether multiple embodiments may be retained in a single
application.  That is, the differences between the embodiments must
either be de minimis and unrelated to their overall aesthetic appearance
or must be obvious to a designer of ordinary skill in view of the
analogous prior art in order to be retained in a single application.  If
the embodiments are not considered obvious under  35 U.S.C. 103(a),
restriction must be required.

15.27.02 Restriction Not Required (First Action - Non Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs.   [1]

Embodiment 2 - Figs.   [2]

Multiple embodiments of a single inventive concept may be included in
the same design application only if they are patentably indistinct.  See
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).  Embodiments
that are patentably distinct from one another do not constitute a single
inventive concept and thus may not be included in the same design
application.  See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).

The above identified embodiments are considered by the examiner to
present overall appearances that are not distinct from one another. 
Accordingly, they are deemed to comprise a single inventive concept and
are being retained and examined in the same application.  Any rejection
of one embodiment over prior art will apply equally to all other
embodiments.  See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App.
1965).  No argument asserting patentability based on the differences
between the embodiments will be considered once the embodiments have
been determined to comprise a single inventive concept.  Failure of
applicant to traverse this determination in   reply to this action will
be considered an admission of lack of patentable distinction between the
above identified embodiments.

15.27.03 Restriction Not Required (First Action Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs.   [1]

Embodiment 2 - Figs.   [2]

Multiple embodiments of a single inventive concept may be included in
the same design application only if they are patentably indistinct.  See
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).  Embodiments
that are patentably distinct from one another do not constitute a single
inventive concept and thus may not be included in the same design
application.  See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).

The above identified embodiments are considered by the examiner to
present overall appearances that are not distinct from one another. 
Accordingly, they are deemed to comprise a single inventive concept and
are being retained and examined in the same application.

15.27 Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs.   [1]

Embodiment 2 - Figs.   [2]

Multiple embodiments of a single inventive concept may be included in
the same design application only if they are patentably indistinct.  See
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).  Embodiments
that are patentably distinct from one another do not constitute a single
inventive concept and thus may not be included in the same design
application.  See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).  The
[3] create(s) patentably distinct designs.

The above embodiments divide into the following patentably distinct
groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

Restriction is required under  35 U.S.C. 121 to one of the above
identified patentably distinct groups of designs.

A reply to this requirement must include an election of a single group
for prosecution on the merits, even if this requirement is traversed. 
Any    reply that does not include election of a single group will be
held nonresponsive.  Applicant is also requested to direct cancelation
of all drawing figures and the corresponding descriptions which are
directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the
embodiments comprise a single inventive concept or are not patentably
distinct, applicant should present evidence or identify such evidence
now of record showing the embodiments to be obvious variations of one
another. If the embodiments are determined not to be patentably distinct
and are accordingly retained in the same application, any rejection of
one embodiment over prior art will apply equally to all other
embodiments.  See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App.
1965).  No argument asserting patentability based on the differences
between the embodiments will be considered once the embodiments have
been determined to comprise a single inventive concept.

A shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is
longer, from the mailing date of this letter is set for applicant to
elect a single embodiment for prosecution on the merits.

Examiner Note:

In bracket 3, insert an explanation of the difference(s) between the
designs.

15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Variations Within
Group)

This application discloses the following embodiments:

Embodiment 1 - Figs.   [1]

Embodiment 2 - Figs.   [2]

Multiple embodiments of a single inventive concept may be included in
the same design application only if they are patentably indistinct.  See
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).  Embodiments
that are patentably distinct from one another do not constitute a single
inventive concept and thus may not be included in the same design
application.  See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).

The above embodiments divide into the following patentably distinct
groups of designs:

Group I: Embodiment [3]

Group II: Embodiment [4]

The embodiments disclosed within each group do not present overall
appearances that are distinct from one another; i.e., they are
considered by the examiner to be obvious variations of one another
within the group.  These embodiments thus comprise a single inventive
concept and are grouped together.  However, the [5] patentably
distinguishes each group from the other(s).

Restriction is required under  35 U.S.C. 121 to one of the patentably
distinct groups of the designs.

A    reply to this requirement must include an election of a single
group for prosecution on the merits, even if this requirement is
traversed.  Any    reply that does not include election of a single
group will be held nonresponsive.  Applicant is also requested to direct
cancellation of all drawing figures and the corresponding descriptions
which are directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the
embodiments comprise a single inventive concept or are not patentably
distinct, applicant should present evidence or identify such evidence
now of record showing the embodiments to be obvious variations of one
another.  If the groups are determined not to be patentably distinct and
are accordingly retained in the same application, any rejection of one
group over prior art will apply equally to all other groups.  See Ex
parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965).  No argument
asserting patentability based on the differences between the groups will
be considered once the groups have been determined to comprise a single
inventive concept.

A shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is
longer, from the mailing date of this letter is set for applicant to
elect a single embodiment for prosecution on the merits.

Examiner Note:

In bracket 5, insert an explanation of the differences between the
groups.

15.28 Telephone Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs.   [1]

Embodiment 2 - Figs.   [2]

Multiple embodiments of a single inventive concept may be included in
the same design application only if they are patentably indistinct.  See
In re Rubinfield, 123 USPQ 210 (CCPA 1959).  Embodiments that are
patentably distinct from one another do not constitute a single
inventive concept and thus may not be included in the same design
application.  The [3] create(s) patentably distinct designs.  See In re
Platner, 155 USPQ 222 (Comm'r Pat. 1967).

The above disclosed embodiments divide into the following patentably
distinct groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

Restriction is required under  35 U.S.C. 121 to one of the patentably
distinct groups of designs.

During a telephone discussion with   [6] on [7], a provisional election
was made   [8] traverse to prosecute the invention of group [9]. 
Affirmation of this election should be made by applicant in replying to
this Office action.

Group [10] is withdrawn from further consideration by the examiner,  37
CFR  1.142(b), as being for a nonelected invention.

Examiner Note:

1. In bracket 3, insert an explanation of the differences between the
designs.

2. In bracket 8, insert --with-- or --without--.

15.31 Provisional Election Required (37 CFR 1.143)

Applicant is advised that the    reply to be complete must include a
provisional election of one of the enumerated designs, even though the
requirement may be traversed (37 CFR 1.143).

B. Combination/Subcombination - Difference in Scope

A design claim covers the entire design as a whole. It is not limited to
any part or portion of the design. However, a design claim may cover
embodiments of different scope directed to the same inventive concept
within a single application     if the designs are not patentably
distinct.  In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). 
The court held that the inventive concept of a design is not limited to
its embodiment in a single specific article and as long as the various
embodiments are not patentably distinct, they may be protected by a
single claim. Blumcraft of Pittsburgh v. Ladd, 144 USPQ 562 (D.D.C.
1965).  The determination that the design of the subcombination/element
is patentably indistinct from the combination means that the designs are
not patentable (novel and unobvious) over each other and may remain in
the same application.  If the embodiments are patentably distinct, the
designs are considered to be separate inventions which require separate
claims, and restriction to one or the other is necessary.  See In re
Kelly, 200 USPQ 560 (Comm'r Pat. 1978); Ex parte Sanford, 1914 C.D. 69,
204 O.G. 1346 (Comm'r Pat. 1914); Ex parte Heckman, 135 USPQ 229 (P.O.
Super. Exam. 1960).

15.29 Restriction Under 35 U.S.C. 121 (Segregable Parts or
Combination/Subcombination)

Restriction to one of the following inventions is required under  35
U.S.C. 121:

Group I - Figs.   [1] drawn to a   [2].

Group II - Figs.   [3] drawn to a [4].

[5]

Examiner Note:

In bracket 5, add groups as necessary.

The inventions as grouped are distinct from each other since under the
law a design patent covers only the invention disclosed as an entirety,
and does not extend to patentably distinct segregable parts; the only
way to protect such segregable parts is to apply for separate patents. 
See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm'r Pat. 1914); and
Blumcraft of Pittsburgh v.   Ladd, 144 USPQ 562 (D.D.C. 1965).  It is
further noted that patentably distinct combination/subcombination
subject matter must be supported by separate claims, whereas only a
single claim is permissible in a design patent application.  See In re
Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

[6]

Examiner Note:

In bracket 6, add comments, if necessary.

Because the inventions are distinct for the reason(s) given above, and
have acquired separate status in the art, restriction for examination
purposes as indicated is proper (35 U.S.C. 121).

Applicant is reminded that the reply to be complete must include a
provisional election of one of the enumerated inventions, even though
the requirement may be traversed (37 CFR 1.143).

In view of the above requirement, action on the merits is deferred
pending compliance with the requirement in accordance with Ex parte
Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).

Applicant is given ONE MONTH or thirty days, whichever is longer, from
the mailing date of this letter to make an election to avoid a question
of abandonment.

15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or
Combination/Subcombination)

Restriction to one of the following inventions is required under  35
U.S.C. 121:

Group I - Figs   [1] drawn to a   [2].

Group II - Figs.   [3] drawn to a   [4].

[5]

Examiner Note:

In bracket 5, add groups as necessary.

The inventions as grouped are distinct from each other since under the
law a design patent covers only the invention disclosed as an entirety,
and does not extend to patentably distinct segregable parts; the only
way to protect such segregable parts is to apply for separate patents. 
See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm'r Pat. 1914); and
Blumcraft of Pittsburgh v.   Ladd, 144 USPQ 562 (D.D.C. 1965).  It is
further noted that patentably distinct combination/subcombination
subject matter must be supported by separate claims, whereas only a
single claim is permissible in a design patent application.  See In re
Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

[6]

Examiner Note:

In bracket 6, insert additional comments, if necessary, and continue.

During a telephone discussion with   [7] on   [8], a provisional
election was made   [9] traverse to prosecute the invention of Group  
[10].  Affirmation of this election should be made by applicant in
responding to this Office action.

Group  [11] withdrawn from further consideration by the examiner,  37
CFR 1.142(b) as being for a nonelected invention.

15.34 Groups Withdrawn From Consideration After Traverse

Group  [1] withdrawn from further consideration by the examiner,  37 CFR
1.142(b), as being for a nonelected invention, the requirement having
been traversed in Paper No.   [2].

15.35 Cancel Nonelected Design (Traverse)

The restriction requirement maintained in this application is or has
been made final.  Applicant must cancel Group [1] directed to the
design(s) nonelected with traverse in Paper No.   [2], or take other
timely appropriate action (37 CFR 1.144). 

15.36 Groups Withdrawn From Consideration Without Traverse

Group   [1] withdrawn from further consideration by the examiner,  37
CFR 1.142(b), as being for the nonelected invention.  Election was made
without traverse in Paper No.   [2].

15.37 Cancellation of Nonelected Groups, No Traverse

In view of the fact that this application is in condition for allowance
except for the presence of Group   [1] directed to an invention or
inventions nonelected without traverse in Paper No.   [2], and without
the right to petition, such Group(s) have been canceled.

---SECTION---1504.06 Double Patenting

There are generally two types of double patenting rejections.  One is
the "same invention" type double patenting rejection based on  35 U.S.C.
171 which states in the singular that an inventor "may obtain a patent." 
The second is the "nonstatutory-type" double patenting rejection based
on a judicially created doctrine grounded in public policy and which is
primarily intended to prevent prolongation of the patent term by
prohibiting claims in a second patent not patentably distinguishing from
claims in a first patent.  Nonstatutory double patenting includes
rejections based on one-way determination of obviousness, and two-way
determination of obviousness.  Nonstatutory double patenting could
include a rejection which is not the usual "obviousness-type" double
patenting rejection.  This type of double patenting rejection is based
on the fundamental reason to prevent unjustified timewise extension of
the right to exclude granted by a patent no matter how the extension is
sought. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).

The charts in MPEP Section  804 outline the procedure for handling all
double patenting rejections.

Double patenting rejections are based on a comparison of the claims in a
patent and an application or between two applications; the disclosure of
the patent or application may be relied upon only to define the claim. 
35 U.S.C. 171 specifically states that "a patent" may be obtained if
certain conditions are met; this use of the singular makes it clear that
only one patent may issue for a design.

Determining if a double patenting rejection is appropriate involves the
answers to the following inquiries: Is the same design being claimed
twice?  If not, are the designs directed to the same inventive concept
with a change in scope or directed to obvious variations of the same
inventive concept?

Double patenting rejections are based on a comparison of claims.  While
there is a direct correlation between the drawings in a design
application and the claim, examiners must be aware that no such
correlation is necessary in a utility application or patent. Several
utility patents may issue with the identical drawing disclosure but with
claims directed to different inventions. So any consideration of
possible double patenting rejections between a utility application or
patent with a design application cannot be based on the utility drawing
disclosure alone.  Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F.
Supp. 98, 183 USPQ 87 (D. Del. 1974).  The examiner must be able to
recreate the design claimed from the utility claims without any reliance
whatsoever on the design drawings.

If a provisional double patenting rejection (of any type) is the only
rejection remaining in two conflicting applications, the examiner should
withdraw that rejection in one of the applications (e.g., the
application with the earlier filing date) and permit the application to
issue as a patent.  The examiner should maintain the provisional double
patenting rejection in the other application which rejection will be
converted into a double patenting rejection when the first application
issues as a patent.  If more than two applications conflict with each
other and one is allowed, the remaining applications should be cross
rejected against the others as well as the allowed application. For this
type of rejection to be appropriate, there must be either at least one
inventor in common, or a common assignee. If the claims in copending
design applications or a design patent and design applications have a
common assignee but different inventive entities, rejections under  35
U.S.C. 102(e), (f) and (g)/103(a) must be considered in addition to the
double patenting rejection.  See MPEP Section  804,  Section  2136, 
Section  2137 and Section  2138.

I. "SAME INVENTION" DOUBLE PATENTING REJECTIONS

A design - design statutory double patenting rejection based on  35
U.S.C. 171 prevents the issuance of a second patent for a design already
patented. For this type of double patenting rejection to be proper,
identical   designs with identical   scope must be twice claimed. In re
Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).  A design -
utility "same invention" double patenting rejection is based on judicial
doctrine as there is no statutory basis for this rejection because
neither  35 U.S.C. 101 nor  35 U.S.C. 171 can be applied against both
claims.   In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).  The
"same invention" type of double patenting rejection, whether statutory
or nonstatutory, cannot be overcome by a terminal disclaimer. In re
Swett, 145 F.2d 631, 172 USPQ 72 (CCPA 1971).

15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)

The claim is rejected under  35 U.S.C. 171 on the ground of double
patenting of the claim in United States Design Patent No. [1].

15.23.01 35 U.S.C. 171 Provisional Double Patenting Rejection
(Design-Design)

The claim is provisionally rejected under  35 U.S.C. 171 on the ground
of double patenting of the claim in copending Application No. [1].  This
is a provisional double patenting rejection since the conflicting claims
have not in fact been patented.

15.24.07 Double Patenting Rejection (Design-Utility)

The claim is rejected under the judicially created doctrine of double
patenting as being unpatentable over claim  [1] of United States Patent
No. [2].  See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).

15.24.08 Provisional Double Patenting Rejection (Design-Utility)

The claim is provisionally rejected under the judicially created
doctrine of double patenting as being unpatentable over claim  [1] of
copending Application No. [2].  See In re Thorington, 418 F.2d 528,163
USPQ 644 (CCPA 1969).

This is a provisional double patenting rejection because the claims have
not in fact been patented.

15.24.01 35 U.S.C. 102(e) Rejection (Common Inventor or Assignee)

The claim is provisionally rejected under  35 U.S.C. 102(e) as being
anticipated by copending Application No. [1] which has a common [2] with
the instant application.  Based upon the earlier effective U.S. filing
date of the copending application, it would constitute prior art under 
35 U.S.C. 102(e), if patented.  This provisional rejection under  35
U.S.C. 102(e) is based upon a presumption of future patenting of the
conflicting copending application.  This provisional rejection might be
overcome either by a showing under  37 CFR 1.132 that any unclaimed
invention disclosed in the copending application was derived from the
inventor of this application and thus not the invention "by another," or
by a showing of a date of invention of any unclaimed subject matter
prior to the effective U.S. filing date of the copending application
under  37 CFR 1.131.

Examiner Note:

1. In bracket 2, insert --inventor-- or --assignee--.

15.24.05 Identical Claim: Common Assignee

The claim is directed to the same invention as that of the claim of
commonly assigned copending Application No. [1].  The issue of priority
under  35 U.S.C. 102(g) and possibly  35 U.S.C. 102(f) of this single
invention must be resolved.  Since the Patent and Trademark Office
normally will not institute an interference between applications or a
patent and an application of common ownership (see MPEP Section  2302),
the assignee is required to state which entity is the prior inventor of
the conflicting subject matter.  A terminal disclaimer has no effect in
this situation since the basis for refusing more than one patent is
priority of invention under  35 U.S.C. 102(f) or (g) and not an
extension of monopoly.  Failure to comply with this requirement will
result in a holding of abandonment of this application.

II. NONSTATUTORY DOUBLE PATENTING REJECTIONS

A rejection based on nonstatutory double patenting is based on a
judicially created doctrine grounded in public policy so as to prevent
the unjustified or improper timewise extension of the right to exclude
granted by a patent.  In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
Cir. 1993). 

A nonstatutory double patenting rejection of the obviousness-type
applies to claims directed to the   same inventive concept with
different appearances which are obvious variations of each other.  The
claimed designs are different in appearance but are not patentably
distinct.  Nonstatutory categories of double patenting rejections which
are not the "same invention" type may be overcome by the submission of a
terminal disclaimer.

The obviousness-type double patenting rejection must be based on the
obviousness standard of  35 U.S.C. 103(a).  That is, differences between
the claimed designs must either be de minimis and unrelated to their
overall aesthetic appearance or must be obvious to a designer of
ordinary skill in the art related to the claimed design.  If the claims
are considered obvious under  35 U.S.C. 103(a), an obviousness-type
double patenting rejection must be made. While the earlier patent (if
less than a year older than the application) or application is not
technically "prior art", the principle involved is the same. In re
Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring
opinion of Judge Rich).

A nonstatutory double patenting rejection may apply to claims directed
to the same inventive concept with differing scope. The claimed designs
are different in scope but are patentably indistinct. In determining
whether to make this type of nonstatutory double patenting rejection,
the examiner should compare the reference claim with the application
claim.  A rejection is appropriate if:

(A) The designs are of differing scope but patentably indistinct and are
directed to the same inventive concept;

(B) Patent protection for the design, fully disclosed in and covered by
the claim of the reference, would be extended by the allowance of the
claim in the later filed application; and

(C) No terminal disclaimer has been filed.  

This type of nonstatutory double patenting rejection in designs will
occur between designs which may be characterized as a combination
(narrow claim) and a subcombination/element thereof (broad claim).  If
the designs are patentably indistinct and are directed to the same
inventive concept the examiner must determine whether the subject matter
of the narrower claim is fully disclosed in and covered by the broader
claim of the reference.  If the reference does not fully disclose the
narrower claim, then a double patenting rejection should not be made. 
The additional disclosure necessary to establish that the applicant was
in possession of the narrower claim at the time the broader claim was
filed may be in a title or special description as well as in a broken
line showing in the drawings.  If the broader claim of the reference
does not disclose the additional subject matter claimed in the narrower
claim, then applicant could not have claimed the narrower claim at the
time the application with the broader claim was filed and a rejection
under nonstatutory double patenting of the differing scope-type would be
inappropriate.

A nonstatutory double patenting rejection may be made between a patent
and an application or provisionally between applications.  Such
rejection over a patent should only be given if the patent issued less
than a year after the filing date of the application. If the patent is
more than a year older than the application, the patent is considered to
be "prior art" which may be applied in a rejection under  35 U.S.C.
102(b)/103(a).  The purpose of a terminal disclaimer is to obviate a
double patenting rejection by removing potential harm to the public by
issuing a second patent, not to remove a patent as prior art.  See MPEP
Section  804.

If the issue of double patenting is raised between a patent and a
continuing application, examiners are reminded that this ground of
rejection can only be made when the filing of the continuing application
is voluntary and not the direct, unmodified result of restriction
requirement under  35 U.S.C. 121.  See MPEP Section  804.01.

Examiners should particularly note that a design-design nonstatutory
double patenting rejection does not always have to be made in both of
the conflicting applications.  For the most part, these rejections will
be made in each of the conflicting applications; but, if the rejection
is only appropriate in one direction, it is proper to reject only one
application.  The criteria for determining whether a one way obviousness
determination is necessary or a two way obviousness determination is
necessary is set forth in MPEP Section  804.  However, in design-utility
situations, the majority opinion in Carman Industries, Inc. v. Wahl, 724
F.2d 932, 220 USPQ 481 (Fed. Cir. 1983), appears to indicate that a two
way obviousness determination is necessary for the rejection to be
proper.

15.24.06 Basis for Nonstatutory Double Patenting, "Heading Only"

The non-statutory double patenting rejection is based on a judicially
created doctrine grounded in public policy (a policy reflected in the
statute) so as to prevent the unjustified or improper timewise extension
of the "right to exclude" granted by a patent and to prevent possible
harassment by multiple assignees.  See In re Goodman, 11 F.3d 1046, 29
USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645
(Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and   In re
Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with  37 CFR 1.321(c)
may be used to overcome an actual or provisional rejection based on a
nonstatutory double patenting ground provided the conflicting
application or patent is shown to be commonly owned with this
application.  See  37 CFR 1.130(b).

Effective January 1, 1994, a registered attorney or agent of record may
sign a terminal disclaimer.  A terminal disclaimer signed by the
assignee must fully comply with  37 CFR 3.73(b).

Examiner Note:

This form paragraph must precede all nonstatutory double patenting
rejections as a heading, except "same invention" type.

15.24 Obviousness-type Double Patenting Rejection (Single Reference)

The claim is rejected under the judicially created doctrine of the
obviousness-type double patenting of the claim in United States Patent
No. [1]. Although the designs are not identical, they are not patentably
distinct from each other because   [2]. 

Examiner Note:

1. In bracket 1, insert prior U.S. Patent Number.

2. In bracket 2, an explanation is necessary.

3. This form paragraph must be preceded by form paragraph 15.24.06 and
followed by form paragraph 15.67.

15.24.03 Provisional Obviousness-Type Double Patenting Rejection (Single
Reference)

The claim is provisionally rejected under the judicially created
doctrine of the obviousness-type double patenting of the claim of
copending Application No.   [1]. Although the conflicting claims are not
identical, they are not patentably distinct from each other because  
[2].  This is a provisional obviousness-type double patenting rejection
because the conflicting claims have not in fact been patented.

Examiner Note:

1. In bracket 1, insert conflicting application number.

2. In bracket 2, an explanation is necessary.

3. This form paragraph must be preceded by form paragraph 15.24.06 and
followed by form paragraph 15.67.

15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single Reference)

It is well settled that it is unobviousness in the overall appearance of
the claimed design, when compared with the prior art, rather than minute
details or small variations in design as appears to be the case here,
that constitutes the test of design patentability. See In re Frick, 275
F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128
USPQ 539 (CCPA 1961).

15.24.02 35 U.S.C. 103(a) Rejection (Common Inventor or Assignee)

The claim is provisionally rejected under  35 U.S.C. 103(a) as being
obvious over copending Application No. [1] which has a common [2] with
the instant application.  Based upon the earlier effective U.S. filing
date of the copending application, it would constitute prior art under 
35 U.S.C. 102(e), if patented.  This provisional rejection under  35
U.S.C. 103(a) is based upon a presumption of future patenting of the
conflicting copending application.  This provisional rejection might be
overcome either by a showing under  37 CFR 1.132 that any unclaimed
invention disclosed in the copending application was derived from the
inventor of this application and thus not the invention "by another," or
by a showing of a date of invention of any unclaimed subject matter
prior to the effective U.S. filing date of the copending application
under  37 CFR 1.131.

Examiner Note:

1. In bracket 2, insert --inventor-- or --assignee--.

15.25 Obviousness-Type Double Patenting Rejection (Multiple References)

The claim is rejected under the judicially created doctrine of the
obviousness-type double patenting of the claim(s) in United States
Patent No.   [1] in view of   [2].  At the time applicant made the
invention, it would have been obvious to   [3] as demonstrated by [4].

Examiner Note:

1. In brackets 3 and 4, insert explanation of basis for rejection.

2. This form paragraph must be preceded by form paragraph 15.24.06 and
followed by form paragraph 15.68.

15.24.04 Provisional Obviousness-Type Double Patenting Rejection
(Multiple References)

The claim is provisionally rejected under the judicially created
doctrine of the obviousness-type double patenting of the claim of
copending Application No.   [1] in view of [2]. The claims are not
patentably distinct from each other because [3]. This is a provisional
obviousness-type double patenting rejection because the conflicting
claims have not in fact been patented.

Examiner Note:

1. In bracket 1, insert conflicting application number.

2. In bracket 2, insert secondary reference(s).

3. In bracket 3, insert an explanation.

4. This form paragraph must be preceded by form paragraph 15.24.06 and
followed by form paragraph 15.67.

15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple References)

This modification of the basic reference in light of the secondary prior
art is proper because the applied references are so related that the
appearance of features shown in one would suggest the application of
those features to the other.  See In re Rosen, 673 F.2d 388, 213 USPQ
347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982),
and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).  Further, it is
noted that case law has held that one skilled in the art is charged with
knowledge of the related art; therefore, the combination of old
elements, herein, would have been well within the level of ordinary
skill.  See In re Antle, 444 F.2d 1168, 170 USPQ 285 (CCPA 1971) and In
re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

15.24.09 Double Patenting - Nonstatutory, Differing Scope (Based Solely
on Improper Timewise Extension of Patent Rights) With A Patent

The claim is rejected under the judicially created doctrine of double
patenting over the claim of U.S. Patent No. [1] since the claim, if
allowed, would improperly extend the "right to exclude" already granted
in the patent.

The [2] in the instant application is fully disclosed in the patent and
the claims are not patentably distinct from each other.  See Blumcraft
of Pittsburgh v. Ladd, 144 USPQ 562 (D.D.C. 1965).

Furthermore, there is no apparent reason why applicant was prevented
from presenting an embodiment corresponding to that of the instant
application during prosecution of the application which matured into a
patent.  See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). 
See also MPEP Section  804.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 15.24.06.

2. Use this form paragraph only when the subject matter of the claim is
fully disclosed in an issued U.S. Patent which is commonly owned or
where there is common inventorship (one or more inventors in common) and
the claims are not patentably distinct.

3. In bracket 1, insert the number of the patent.

4. In bracket 2, identify the common subject matter.

15.24.10 Double Patenting - Nonstatutory, Differing Scope (Based Solely
on Improper Timewise Extension of Patent Rights) With Another
Application

The claim is provisionally rejected under the judicially created
doctrine of double patenting over the claim of copending Application No.
[1] since the claim if allowed, would improperly extend the "right to
exclude" granted in any patent that may issue on the copending
application.  This is a provisional double patenting rejection because
the claims have not in fact been patented.

The [2] in the instant application is fully disclosed in the copending
application and the claims are not patentably distinct from each other. 
See Blumcraft of Pittsburgh v. Ladd, 144 USPQ 562 (D.D.C. 1965).

Furthermore, there is no apparent reason why applicant would be
prevented from presenting an embodiment corresponding to that of the
instant application in the other copending application.  See In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).  See also MPEP
Section  804.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 15.24.06.

2. Use this form paragraph only when the subject matter of the claim is
fully disclosed in another copending application which is commonly owned
or where there is common inventorship (one or more inventors in common)
and the claims are not patentably distinct.

3. In bracket 1, insert the number of the conflicting application.

4. In bracket 2, identify the common subject matter.

Form Paragraphs 15.38 and 15.40.01 may be used in a second or subsequent
action, where appropriate (see MPEP Section  1504.02).

---SECTION---1504.10 Priority Under 35 U.S.C. 119 (a)-(d)

35 U.S.C. 172 Right of priority.

The right of priority provided for by subsections (a) through (d) of
section 119 of this title and the time specified in section 102(d) shall
be six months in the case of designs. The right of priority provided for
by section 119(e) of this title shall not apply to designs.

The provisions of  35 U.S.C. 119(a)-(d) apply to design patent
applications. However, in order to obtain the benefit of an earlier
foreign filing date, the United States application must be filed within
6 months of the earliest date on which any foreign application for the
same design was filed. Design applications may not make a claim for
priority of a provisional application under  37 CFR 1.78(a)(3).

15.01 Conditions Under 35 U.S.C. 119(a)-(d)

Applicant is advised of conditions as specified in  35 U.S.C.
119(a)-(d).  An application for a design patent for an invention filed
in this country by any person who has, or whose legal representatives
have previously filed an application for a design patent, or equivalent
protection for the same design in a foreign country which offers similar
privileges in the case of applications filed in the United States, or to
citizens of the United States, shall have the same effect as the same
application would have if filed in this country on the date on which the
application for patent for the same invention was first filed in such
foreign country, if the application in this country is filed within six
(6) months from the earliest date on which such foreign application was
filed.

15.03 Untimely Priority Papers Returned

Receipt is acknowledged of the filing on   [1] of a certified copy of
the   [2] application referred to in the oath or declaration.  A claim
for priority cannot be based on said application, since the United
States application was filed more than six (6) months thereafter (35
U.S.C. 172).  Accordingly, the papers are being returned.

The United States will recognize claims for the right of priority under 
35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or
multilateral treaties as the "Hague Agreement Concerning the
International Deposit of Industrial Designs" and the "Uniform Benelux
Act on Designs and Models." In filing a claim for priority of a foreign
application previously filed under such a treaty, certain information
must be supplied to the United States Patent and Trademark Office. In
addition to the application number and the date of filing of the foreign
application, the following information is required:

(A) the name of the treaty under which the application was filed,

(B) the name of at least one country other than the United States in
which the application has the effect of, or is equivalent to, a regular
national filing and

(C) the name and location of the national or inter-governmental
authority which received the application.

15.02 Right of Priority Under 35 U.S.C. 119(b)

No application for design patent shall be entitled to the right of
priority under  35 U.S.C. 119(b) unless a claim therefor and a certified
copy of the original foreign application, specification and drawings
upon which it is based are filed in the United States Patent and
Trademark Office before the issue fee is paid, or at such time during
the pendency of the application as required by the Commissioner not
earlier than six (6) months after the filing of the application in this
country.  Such certification shall be made by the Patent Office, or
other proper authority of the foreign country in which filed, and show
the date of the application and of the filing of the specification and
other papers.  The Commissioner may require a translation of the papers
filed if not in the English language, and such other information as
deemed necessary.

The notation requirement on design patent application file wrappers when
foreign priority is claimed is set forth in MPEP Section  202.03.

15.04 Priority Under Bilateral or Multilateral Treaties

The United States will recognize claims for the right of priority under 
35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or
multilateral treaties as the Hague Agreement Concerning the
International Deposit of Industrial Designs, and the Benelux Designs
Convention.  In filing a claim for priority of a foreign application
previously filed under such a treaty, certain information must be
supplied to the United States Patent and Trademark Office.  In addition
to the application number and the date of filing of the application, the
following information is requested:  (1) the name of the treaty under
which the application was filed; (2) the name of at least one country
other than the United States in which the application has the effect of,
or is equivalent to, a regular national filing; and (3) the name and
location of the national or international governmental authority which
received such application.

15.52 Examination of Priority Papers

While the U.S. Patent and Trademark Office does not normally examine the
priority papers to determine whether the applicant is in fact entitled
to the right of priority, in the case of a Design Patent application,
the priority papers will normally be inspected to determine that the
foreign application is in fact for the same invention as the application
in the United States (35 U.S.C. 119).  Inspection of the papers herein
indicates that the prior foreign application was not for the same
invention as claimed in this application.  Accordingly, the priority
claim is improper, and the papers are being returned.

Attention is also directed to the paragraphs dealing with the
requirements where an actual model was originally filed in Germany (MPEP
Section  201.14(b)).

See MPEP Chapter 200 and  37 CFR 1.55 for further discussion of the
practice and procedure under  35 U.S.C. 119(a)-(d).

---SECTION---1504.20 Benefit Under 35 U.S.C. 120

If applicant is entitled under  35 U.S.C. 120 to the benefit of an
earlier U.S. filing date, the statement that, "This is a division
[continuation] of design Application No.- - - -, filed - - -." should
appear in the first line of the specification.

Attention is directed to the requirements for "continuing" applications
set forth in MPEP Section  201.07,  Section  201.08, and Section 
201.11. Note further that where the first application is found to be
fatally defective under  35 U.S.C. 112 because of insufficient
disclosure to support an allowable claim, a second design patent
application filed as an alleged "continuation-in-part" of the first
application to supply the deficiency is not entitled to the benefit of
the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works,
177 F.2d 583, 83 USPQ 277 (F2d Cir. 1949) and cases cited therein. See
also In re Salmon,   705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983).

Unless the filing date of an earlier application is actually needed, for
example, in the case of an interference or to avoid an intervening
reference, there is no need for the examiner to make a determination in
a continuation-in-part application as to whether the requirement of  35
U.S.C. 120 is met. Note the holdings in In re Corba, 212 USPQ 825
(Comm'r Pat. 1981).

Applicants are entitled to claim the benefit of the filing date of
earlier applications for later claimed inventions under  35 U.S.C. 120
only when the earlier application discloses that invention in the manner
required by  35 U.S.C. 112, first paragraph. Thus, a claim including
limitations directed to the new matter added in a continuation-in-part
application is not entitled to the benefit of the filing date of the
parent application.  See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed.
Cir. 1995); In re Salmon, 705 F.2d   1579, 217 USPQ 981 (Fed. Cir.
1983).

15.74 Continuation-In-Part Caution

Reference to this application as a continuation-in-part under  35 U.S.C.
120 is acknowledged.  Applicant is advised that design case law holds
that any change in a previous design constitutes an entirely new design
that cannot rely upon the earlier one for priority.  See   In re Salmon,
705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983).  Therefore, an application
that involves a change in the design from a prior application, as in the
present case, cannot qualify as a CIP of the earlier application and is
not entitled to benefit of its filing date.  However, unless the filing
date of the earlier application is actually needed, such as to avoid
intervening prior art, the availability of the earlier filing date in
this CIP application will not be considered.  See   In re Corba, 212
USPQ 825 (Comm'r Pat. 1981).

Examiner Note:

The following form paragraph should be used in the first action on the
merits in any application which claims priority under  35 U.S.C. 120 as
a continuation-in-part.

Where a continuation-in-part application claims benefit under  35 U.S.C.
120 of the filing date of an earlier application, a determination as to
the propriety of this claim must be made if the earlier application
claims the benefit of a foreign application under  35 U.S.C. 119(a) -
(d).  To determine the status of the foreign application, the charts in
MPEP Section  1504.02 should be used.  If the conditions of  35 U.S.C.
120 are not met, then the claim for benefit of the earlier filing date
under  35 U.S.C. 120 as a continuation-in-part should be denied and the
claim for priority under  35 U.S.C. 119(a) - (d) should also be denied. 
If the foreign application for patent/registration has matured into a
form of patent protection and would anticipate or render the claim in
the alleged C-I-P application obvious, the design shown in the foreign
application papers would qualify as prior art under  35 U.S.C.
102(d)/172 and the claim should be rejected under  35 U.S.C. 102/103.

15.75 Preface to Rejection in Alleged C-I-P Based on 35 U.S.C.
102(d)/172

Reference to this application as a continuation-in-part under  35 U.S.C.
120 is acknowledged.  Applicant is advised that design case law holds
that any change in a previous design constitutes an entirely new design
that cannot rely upon the earlier one for priority.  See In re Salmon,
705 F.2d 1579, 217 USPQ 981(Fed. Cir. 1983).  Therefore, an application
that involves a change in the design from a prior application, as in the
present case, cannot qualify as a CIP of the earlier application and is
not entitled to benefit of its filing date.

The parent application claimed foreign priority under  35 U.S.C. 119(a)
- (d). Insofar as the foreign application has matured into a
patent/registration more than six months before the filing date of the
present application, it qualifies as prior art under  35 U.S.C.
102(d)/172.

Examiner Note:

This paragraph should be followed with a rejection under  35 U.S.C. 102
or 103(a) depending on the difference(s) between this claim and the
design shown in the priority papers.

Where the conditions of  35 U.S.C. 120 are met, a design application may
be considered a continuing application of an earlier utility
application. Conversely, this also applies to a utility application
relying on the benefit of the filing date of an earlier filed design
application.  See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir.
1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983).

In light of KangaROOS USA, Inc. v. Caldor Inc., 778 F.2d 1571,  228 USPQ
32 (Fed. Cir. 1985) and In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA
1981), the holdings in In re Campbell, 212 F.2d 606, 101 USPQ 406 (CCPA
1954) are no longer controlling.

Note also In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) where the
benefit of a design patent application filing date requested under  35
U.S.C. 120 was denied in the later filed utility application of the same
inventor. The Court of Customs and Patent Appeals took the position that
the design application did not satisfy  35 U.S.C. 112, first paragraph,
as required under  35 U.S.C. 120.

15.26 Identification of Prior Application(s) in Nonprovisional
Applications - Benefit of Priority Claimed

Applicant is reminded of the following requirement:

In a continuation or divisional application (other than a continued
prosecution application filed under  37 CFR 1.53(d)), the first line of
the specification should include a reference to the prior application(s)
from which benefit of priority is claimed.  See  37 CFR 1.78.  The
following format is suggested: "This is a continuation (or division) of
Application No.________, filed ________, now (abandoned, pending or U.S.
Patent No.________)."

---SECTION---1505 Allowance and Term of Design Patent

35 U.S.C. 173 Term of design patent.

Patents for designs shall be granted for the term of fourteen years from
the date of grant.

37 CFR 1.155 Issue of design patents.

If, on examination, it appears that the applicant is entitled to a
design patent under the law, a notice of allowance will be sent to the
applicant, or applicant's attorney or agent, calling for the payment of
the issue fee (Section  1.18(b)). If this issue fee is not paid within
three months of the date of the notice of allowance, the application
shall be regarded as abandoned.

---SECTION---1509 Reissue of a Design Patent

See MPEP Chapter 1400 for practice and procedure in reissue
applications.

For design reissue fee, see  37 CFR 1.16(h). For issue fee for issuing a
reissue design patent, see  37 CFR 1.18(b).

The term of a design patent may not be extended by reissue. Ex parte
Lawrence,  70 USPQ 326 (Comm'r Pat. 1946).

---SECTION---1510 Reexamination

See MPEP Chapter 2200 for practice and procedure for reexamination
applications.

---SECTION---1511 Protest

See MPEP Chapter 1900 for practice and procedure in protest.

---SECTION---1512 Relationship Between Design Patent, Copyright, and
Trademark

I. DESIGN PATENT/COPYRIGHT OVERLAP

There is an area of overlap between copyright and design patent statutes
where the author/inventor can secure both a copyright and a design
patent. Thus an ornamental design may be copyrighted as a work of art
and may also be subject matter of a design patent. The author/inventor
may not be required to elect between securing a copyright or a design
patent. See In re Yardley, 493 F.2d 1389, 181 USPQ 331. In Mazer v.
Stein, 347 U.S. 201, 100 USPQ 325 (1954), the Supreme Court noted the
election of protection doctrine but did not express any view on it since
a design patent had been secured in the case and the issue was not
before the Court.

See Form paragraph 15.55 which repeats this information.

II. INCLUSION OF COPYRIGHT NOTICE

It is the policy of the Patent and Trademark Office to permit the
inclusion of a copyright notice in a design patent application, and
thereby any patent issuing therefrom, under the following conditions.

(A) A copyright notice must be placed adjacent to the copyright material
and, therefore, may appear at any appropriate portion of the patent
application disclosure including the drawing. However, if appearing on
the drawing, the notice must be limited in print size from 1/8 inch to
1/4 inch and must be placed within the "sight" of the drawing
immediately below the figure representing the copyright material. If
placed on a drawing in conformance with these provisions, the notice
will not be objected to as extraneous matter under  37 CFR 1.84.

(B) The content of the copyright notice must be limited to only those
elements required by law. For example, "&copy; 1983 John Doe" would be
legally sufficient under  17 U.S.C. 401 and properly limited.

(C) Inclusion of a copyright notice will be permitted only if the
following waiver is included at the beginning (preferably as the first
paragraph) of the specification to be printed for the patent:

A portion of the disclosure of this patent document contains material to
which a claim for copyright is made. The copyright owner has no
objection to the facsimile reproduction by anyone of the patent document
or the patent disclosure, as it appears in the Patent and Trademark
Office patent file or records, but reserves all other copyright rights
whatsoever.

(D) Inclusion of a copyright notice after a Notice of Allowance has been
mailed will be permitted only if the criteria of  37 CFR 1.312 have been
satisfied.

Any departure from these conditions may result in a refusal to permit
the desired inclusion. If the waiver required under condition (C) above
does not include the specific language "(t)he copyright owner has no
objection to the facsimile reproduction by anyone of the patent document
or the patent disclosure, as it appears in the Patent and Trademark
Office patent file or records . . . ." the copyright notice will be
objected to as improper.

See Form paragraph 15.55 which repeats this information.

The files of design patents D-243,821, D-243,824, and D-243,920 show
examples of an earlier similar procedure.

III. DESIGN PATENT/TRADEMARK OVERLAP

A design patent and a trademark may be obtained on the same subject
matter. The CCPA, in In re Mogen David Wine Corp., 328 F.2d 925, 140
USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d
593, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and
essence of patent rights are separate and distinct from those pertaining
to trademarks, and that no right accruing from one is dependent or
conditioned by the right concomitant to the other.

See Form paragraph 15.55.01 which repeats this information.

IV. INCLUSION OF TRADEMARKS IN DESIGN PATENT APPLICATIONS

A. Specification

The use of trademarks in design patent application specifications is
permitted under limited circumstances. See MPEP Section  608.01(v). This
section assumes that the proposed use of a trademark is a legal use
under Federal trademarks law.

B. Title

It is improper to use a trademark alone or coupled with the word "type"
(e.g., Band-Aid type Bandage) in the title of a design.  Examiners must
object to the use of a trademark in the title of a design application
and require its deletion therefrom.

C. Drawings

When a trademark is used in the drawing disclosure of a design
application, the following statement must be included in the
specification after the figure descriptions: --The (identify trademark
material) forming part of the claimed design is a registered trademark
of (identify trademark owner).--

Any derogatory use of a trademark in a design application is prohibited
and will result in a rejection of the claim under  35 U.S.C. 171 as
being offensive and, therefore, improper subject matter for design
patent protection. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) and Coca-Cola
Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y.
1972).

---SECTION---1513 Miscellaneous

With respect to copies of references supplied to applicant in a design
patent application, see MPEP Section  707.05(a).

Effective May 8, 1985, the Statutory Invention Registration (SIR),  35
U.S.C. 157, and  37 CFR 1.293 - 1.297 replaced the former Defensive
Publication Program. The Statutory Invention Registration (SIR) Program
applies to utility, plant, and design applications.  See MPEP Chapter
1100.

