[Philippine Patent Office Decision No. 45 (PAT). July 29, 1987.

RE: APPEAL TO THE DIRECTOR OF PATENTS FROM THE

DECISION OF THE PATENT EXAMINER, SY PIO LATO ,
applicant, appellant.

EX PARTE CASE NO. 212

Appln. Serial No. D-5220
Filed: November 13, 1983
Applicant: Sy Pio Lato
For: WALL DECOR

DECISION

This is an Ex-Parte Appeal from the Patent Examiner's final rejection of

Design Patent Application Serial No. D-5220 for a "WALL DECOR" filed on
November 13, 1983 by Sy Pio Lato (hereinafter called Applicant-Appellant) of
415 MacArthur Highway, Valenzuela, Bulacan, Philippines.
As what can be fairly deduced from Paper No. 7 (issued on October 12,
1984) which contained the mentioned Patent Examiner's final rejection for
purposes of appeal pursuant to Rules 256 to 258 of the Revised Rules of
Practice in Patent Cases, the wall decor subject of the application was
rejected because it is substantially similar in appearance to that already
patented under the cited reference (Letters Patent No. D-3155 of Luis D. Go)
and because it is just produced through ordinary skill. In other words, the
rejection was based on lack of novelty and lack of inventiveness.
In assailing the preceding grounds of rejection, Applicant-Appellant
reiterated in his Appeal Brief his response in Paper No. 6 which states in
substance that although the present design of a wall decor and the cited
reference have identical general appearance, contour or outline, the former
has a surface design, a floral design, which is absent in the latter. He also
argued that the specific surface design was never shown in the cited
reference except by reference in dotted lines which is too broad and never
resemble that of the present application, that the showing in dotted lines
merely present immaterial parts of the design, and that in the case of
spoons, forks, plates and the like, where the articles have the same outline
or general appearance but of different surface design, patents have been
granted.
To counter the preceding arguments of Applicant-Appellant, the Patent
Examiner concerned made in his Brief a short description and comparison of
the subject design and the cited reference. Thus:
"The characteristics feature of this design for a wall decor
resides in a glass covered planar decorated body bound by a
 generally heart-shaped frame having a suspender at the top portion,
said heart-shaped frame has an arcuate cross-section. Also, the
reference shows a printed floral surface design on its planar body in
dotted lines.
Both the cited reference and present application are identical in
the general contour of the frame and differs only with applicant's
provision of a printed floral design on its planar body."
The Patent Examiner likewise insisted that his rejection on the ground
of lack of novelty is proper. For appropriate stress, the pertinent portion of
his Brief is quoted hereunder, to wit:
"A close scrutiny of Go's patent would clearly indicate that the
provision of a floral surface ornamentation is suggested as shown in
dotted lines and is similar to that of the present application. Though
surface ornamentation was shown in dotted lines, it is held that
surface ornamentation is present in Go's patent. Go's patent has
disclosed the complete thing which he has produced and has merely
made a distinction in the drawing between the essential features and
other parts of his design. All applicants for design patents are
permitted to state in the specification what constitute the essential
features of the design and there appears to be no good reason why
they should not be permitted to make the same distinction in the
drawings. It is therefore held that applicant's illustration is sufficient.
In ex parte Adams., 83 O.G. 1994; 1898 C.C. 109, it was held that the
parts of the design shown in dotted lines constitute part of the design
and that this fact should be recognized in the specification."
Moreover, the Patent Examiner elucidated on the lack of inventiveness
of Appellant-Applicant's wall decor design. He pointed out that since a
surface ornamentation is suggested in Go's patent as shown in dotted lines,
the adoption of the surface design or ornamentation (floral design) by
Appellant-Applicant does not involve the exercise of the inventive faculty for
it is within the skill of an ordinary designer. In support thereof, be quoted
some related pronouncements made in foreign jurisprudence, to wit:
"Mere differences in appearance between what applicant
discloses as his design and what is shown by prior art does not suffice
in itself to satisfy the requirements of law relating to design patents,
the differences must be substantial and not superficial; and the
inventive concept must be present in applicant's drawing." (In re
Zenon, 40 CCPA 1051; 205 F2d 317; 96 USPQ 223)
"There is nothing novel about a butterfly with folded wings or
wings in any condition or position. It does not involve invention
therefore to paste a drawing or painting of the natural wings of such
an insect upon a pendant. To hold otherwise would permit those who
select a different design for a pendant such as for instance a shell, a
flower, or a bird, to obtain a patent for in each instance." (In re
Denton, et al. v. Fulda, 225 F. 537)
"To be valid, a design patent must be the product of invention
and must reveal a greater skill that possessed by the ordinary
designer, it will not suffice that the design is novel, ornamental and
pleasing in appearance." (International Silver Co. v. Pomerantz, 27 F.
 69; 123 USPQ 108)
With respect to the argument of Applicant-Appellant that patents were
granted in cases involving spoons, forks and the like, having the same
outline or general appearance but of different surface designs, the Patent
Examiner made a counter argument that while spoons, forks, plates and the
like have universally accepted shapes, a wall decor like the one in question
has different varieties of shapes, configuration or outline, from which the
Appellant-Applicant can choose.
Presented with the preceding arguments, the Office has to refer to the
applicable provisions of the Patent Law (Republic Act No. 165) in order to
determine the propriety of the Patent Examiner's action.
Note must be taken at this point of the requirements prescribed by the
Patent Law before a design can be patented. Section 55 of this law provides:
"SECTION 55. Design patents and patents for utility models.
— (a) Any new, original and ornamental design for an article of
manufactured and (b) any new model of implements or tools or of any
model of implements or tools or of any industrial product, or of part of
the same, which does not possess the quality of invention, but which
is of practical utility by reason of its form, configuration, construction
or composition, may be protected by the author thereof, the former
by a patent for a design and the latter by a patent for a utility model,
in the same manner and subject to the same provisions and
requirements as relate to patents for inventions in so far as they are
applicable, except as otherwise herein provided.
The standard of novelty established by section nine hereof for
inventions shall apply to ornamental designs.
xxx xxx xxx
Section 9 of the same law states:
"SECTION 9. Invention not considered new or patentable. —
An invention shall not be considered new or capable of being
patented if it was known or used by others in the Philippines before
the invention thereof by the inventor named in an application for
patent for the invention, or if it was patented or described in any
printed publication in the Philippines or any foreign country more
than one year before the application for a patent therefor; or if it is
the subject matter of a validly issued patent in the Philippines granted
on an application filed before the filing of the application for patent
therefor."
From the quoted provisions of law, it is apparent that in order for a
design to be entitled to a patent it must satisfy three (3) essential requisites,
namely, novelty, originally and ornamentally. These requisites are explicitly
described in Rules 122 and 123 of the Revised Rules of Practice in Patent
Cases. Thus:
"122. Requisites for patentability of industrial designs. —
According to the law, in order to be entitled to a patent, an industrial
design must be new, original and ornamental, and it must be for an
article of manufacture, (Republic Act No. 165, section 55, as
 amended by Republic Act No. 864, section 1).
123. Requisites for patentability explained. — The object of
the statute is to encourage the decorative arts and a design which
merely pleases the eye is a proper subject for a design patent . . ..
That is to say, a patentable design must not only be new and original,
but ornamental as well. Ornamentation implies beauty, the giving of a
pleasing appearance. Patentable designs must, however, meet
certain tests applicable to mechanical patents, and it is held (Knapp
vs. Will & Baumer Co., 273 F. 380) that the subject matter must be
novel and must clearly indicate an exercise of the inventive faculties.
Both are essential and necessary.' (Keene & Bessant, Inc. vs. Eaglelet
Metal Spinning Co., 54 F. (2d) 131.)"
Considering all the foregoing provisions of law and rules in conjunction
with the able discussions made by the Patent Examiner concerned, the
Office cannot perceive any legal obstacle to affirm the final rejection of
Design Patent Application Serial No. D-5220. As a matter of fact, the Office
finds the rejection proper and well founded. It is worthwhile to mention that
an independent review of pertinent foreign jurisprudence has led this Office
to some forceful and authoritative doctrines which reinforce the findings and
action of the Patent Examiner. They are the following:
"Fact that design is new and ornamental is not enough to create
patentability; creative artistry must be found to fulfill the requirement
for exercise of inventive faculty in design patents (R-Way Furniture
Co., Inc. vs. Duo-Ced Corp. [DC 111], 216 F. Supp. 714: 35 USPQ
113)." [Emphasis supplied]
"Design patent must be product of invention: it will not suffice
merely to show that design is novel, ornamental or pleasing in
appearance; it must also reveal greater skill than that exercised by
ordinary designer who is chargeable with knowledge of prior art
(International Silver Co. vs. Julie Pomerantz Inc. [CA 2], 271 F[2] 69;
123 USPQ 108)." [Emphasis supplied]
"To be valid, a design patent must disclose a design that is
new, original and ornamental; being new and pleasing enough to
catch the trade is insufficient; it must represent an exercise of the
inventive faculty, and requires exceptional talent beyond skill of
ordinary designs chargeable with knowledge of prior art; in addition
to being new and inventive, design must also be ornamental, the
product of aesthetic skill, and must embody an artistic conception; it
must be motivated by ornamental or decorative inventiveness
because a design dictated solely by mechanical or functional
requirements is not patentable (Blisscraft of Hollywood vs. United
Plastic Co. [DC-NY], 189 F Supp. 333, 127 USPQ 452)." [Emphasis
supplied]
WHEREFORE, in view of all the foregoing premises, the Patent
Examiner's FINAL REJECTION of the subject Design Patent Application Serial
No. D-5520 filed by Sy Pio Lato is, as it is hereby, AFFIRMED. cdtai

Let the records of this application be remanded to the Mechanical and

Electrical Division for appropriate action in accordance herewith.
SO ORDERED.

(SGD.) CESAR C. SANDIEGO

Director