DECISION OF THE COMMISSIONER
NONSTATUTORY NOVELTY: Solely Aesthetic Appeal in Effect.
The product is known except for its surface design as having "more
numerous and deeper cuts" which have been machine produced as
opposed to hand hewn. Such a difference in ornamental effect,
in which novelty lies solely in its decorative appeal as opposed
to a shape which subserved some functional purpose, and which is
within the province of the artisan, is not proper subject matter
for a patent.
FINAL ACTION: Affirmed
IN THE MATTER OF a request for a review by the
Commissioner of Patents of the Examiner's Final Action
under Section 46 of the Patent Rules.
AND
IN THE MATTER OF a patent application serial
number 044,282 filed February 28, 1969 for an invention
entitled:
TEXTURED PANELS
Agent for Applicant
Messrs. Kirby, Shapiro,
Curphey & Eades,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 22,1971 on application 044,282. This application was
filed in the name of Donal F. Luebs et al and refers to
"Textured Panels".
In the prosecution terminated by the Final Action the
examiner refused the claims and the application in that the
subject matter is directed to an old product. In this action
the examiner stated:
The claims define a panel having a surface fashioned
to simulate a hand hewn product, and which is nearly
indistinguishable from old, conventionally produced
panels. The dimensional limitations of cuts defined
in the claims do not introduce any patentable difference
since they fall within the range that may be produced
by hand using an adze or axe. The claims, therefore,
define nothing but an old product i.e. a hand hewn
panel and are not allowable. The applicant's argument,
that the added limitation stating merely that the
panel is made by means of automatic machinery, renders
the claim patentable, is not acceptable since it
was held that: --"It is essential to the validity of
a claim that the thing claimed should have novelty"
and to suggest that the process lends novelty to the
product is "an aritificial attribution". Further
applicant's arguments that, because of the mechanised
method of manufacture, his panels possess various
desirable features not found in hand hewn panels are
irrelevant, as follows below.
It is pointed out that the object of applicant's
invention has been set forth as simulating the
random rough hewn cuts of a hand-hewn panel. Applicant
pointed out that the prior patents of record being
directed to machine processes gave too much monotonous
regularity. Then in the most recent response applicant
has pointed to the limitation that the surface is
"automatically fashioned by rotary cutters" and
implies that standardizing the product lends patent-
ability thereto. The arguments are therefore incon-
sistent and it is held as stated above that neither
the simulation of rough hand work nor the standardiz-
ation of cuts lends patentability to the product.
The applicant in his response dated August 24, 1971 stated:
The claims now in the application are for a "textured
distressed panel" and not to a picture of a hand hewn
board. It is true that the automatic machinery is
adjusted to manufacture multi-ply i.e.,three-ply
five-p1y, etc. panels that have the artistic semblance
of a solid lumber hand hewn plank, but the external
semblance is the only similarity; if such similarity
actually exists. The manufactured panels are bonded
three-ply cross-grained, stronger, and also thinner
than a solid, but weaker hand hewn board that
ordinarily might be used in its place. There is no
similarity between the two products except the
appearance at a distance. As pointed out in the
last amendment of May 18, the panels have a surface
devoid of splinters and excessive rough spots. The
panels are easier to clean and will not snag clothing
or other fabrics. The cuts in applicants' device
are much more numerous, and much deeper, Also, cut
in cuts can't exist in hand hewn planks.
The Examiner has rejected all the claims simply
because the product looks like something else. This
is believed to be a false reason for rejection. The
article, including the three-ply construction and
the surface cuts, is new and deserves patent protection.
After reviewing the ground for rejection set forth by the
examiner as well as the arguments set forth by the applicant,
I am satisfied that the rejection is well founded .
Claim 1 of the application defines a textured finish
consisting of a plurality of overlapping "valleys" formed on the
surface of a plywood panel by means of removing portions of that
surface. This however produces, in accordance with the disclosure
(page 1,lines 1-13 and page 3, lines 24-28), an effect simulating
the adze marks on a hand-hewn panel which is obviously not new.
The fact that this finish is produced on a plywood panel, rather
than a single thickness panel, is not considered to render the
claims patentably distinct. It is obvious from the teachings of
the cited United States Patent 3,234,978 that plywood panels have
been textured by cutting away portions of the surface of the
topmost ply. Furthermore, substitution of plywood for solid wood
does not produce any unexpected result as far as the surface finish
is concerned. The applicant acknowledges this in the disclosure
by stating on page 1,lines 19-22, that his method of texturing
applies "to any fibrous products particularly of wood such as
plywood, lumber or hardboard".
In claim 2 the restriction, ".... include ridges and
hollows to simulate an irregular cutting edge", is meaningless.
In claim 3 the restriction, "... said ridges ... parallel to
the grain in the face bonded ply and at right angles to the
underlying ply", is only a reference to the standard property of
plywood. The limitations in claims 4-7 add nothing more than
obvious features and dimensional limitations.
The references to, "a three-ply construction" and adjacent
plies bonded at right angles to each other whereby high strength
will be imparted to said panel", may be regarded only as a
definition of the well-known features of a standard plywood panel
and therefore patentably insignificant. Also, the reference to,
"the cuts in the panel are much more numerous and deeper", is
purely a matter of choice.
I am satisfied that it is within the province of the artisan
in this field to produce any decorative or ornamental design on
a panel without giving rise to the dignity of invention. Articles
where the novelty lies solely in the use of design,pattern,
ornament or aesthetic appeal are not considered patentable. This
does not, however rule out the fact that articles of special
shape may be patentable where the shape subserves some functional
purpose.
Applicant has produced a panel different only in the sense
of its decorative effect or appeal. Therefore, I find that there
is no novelty that might result apart from any aesthetic appeal
or effect; thus, the claimed subject matter lacks invention.
I recommend that the decision of the examiner, to refuse
the application for lack of novelty, be upheld.
R.E.Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse the grant of a patent. The applicant has six months in
which to appeal this decision in accordance with Section 44 of
the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 13th day of October, 1971.