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'Jf 15.10 Offensive Subject Matter
The disclosure, and therefore the claim in this application, is
rejected as being offensive and thereforeimproper subject matter
for design patent protection under 35 U.S.c. 171.. Sucl1subject
matter does not meet thestatutory requirements of 35 U.S.c. 171.
Moreover,since 37 CFR 1.3 proscribesthe presentationof papers
which. are lacking in decorum. and courtesy, and this includes
depictions of caricatures in the, disclosure, drawings, and/or a
claim which mightreasonably be considered offensive, such subject
matter as presented herein is deemedto be clearlycontrary to
37CFR 1.3. See MPEP § 608.
1504.02 Novelty
35 U.S. C. 102. Conditions for patentability; novelty and
loss ofright to patent.
A person shall be entitledto a patentunless -:-
(a) the invention was knownor used by others in this country,
or patented or described 'in a printed publication·m this or a
foreign country, before the inventionthereof by the-applicant for
patent,or
(b) the invention was patentedor describedin a printedpublication
in this or a foreign country or in public use or on sale in
this country, more thanone yearpriorto the date of the application
for patentin the United States, or
(c) 'he has abandoned the invention, or
(d) the invention was first parented or caused to be patented;
or was the subject of-an inventor's certificate, by the applicantor
his legal representatives or assigns-In a-foreign countrypriorto the
date of the applicationfor patentin this country on an application
for patent or inventor's certificate filed more than twelve months
before the filing of the applicationin the United States, or
(e) the invention was describedin-
(1) an application for patent, published under section
122(b), by another filed in the United States before the invention
by the applicantfor patent,except thatan international application
filed under the treaty defined in section 351(a) shall have the
effect under this subsection of a national application published
undersection 122(b) only if the international applicationdesignating
the United Stateswas publishedunderArticle 21(2)(a) of such
treatyin the English language;or
(2) a patent granted on an application for patent by
another filed in the United States before the invention by the
applicantfor patent,except thata patentshall not be deemed filed
in the United States for the purposes of this subsection based on
the filing of an international application filed under the treaty
defined in section 351(a); or
(f) he did not himself invent the subject mattersought to be
patented, or
(g)(1)during-the course of an interference conducted under
section 135 or section 291, another inventor involved therein
establishes, to the extent permittedin section 104, thatbefore such
person's invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or (2)
before such person's invention thereof, the invention was made in
this country by another inventor who had not abandoned, suppressed,
or concealed it. In determining priority of invention
DESIGN PATENTS 1504.02
under this subsection, 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 andlast to reduce to practice,from a time priorto conception
by the other.
35 U.S.c. 172. Right ofpriority.
The right of priority provided for by subsections (a) through
(d) of section 119 of this title and thetime specified in section
102(d) shall be six months in the case of designs. The rightof 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). In design patent applications, the
factual inquiry in determining anticipation over. a
prior art reference is the same as in utility patent
applications. That is, the reference "must be identical
in all material respects." Hupp v. Siroflex ofAmerica
Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir.
1997).
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.!. 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.
m. 1986).
1500-19 August2001