In re Carlson (901422128)

Read for 3/21/11

Reading Notes

• Decided in CAFC in 1992
• Carlson appeals decision of PTO Board affirming examiners rejection of his patent
  • CAFC affirms
• Must determine if a previous invention protected in Germany constitutes an invention patented in a foreign country
• Carlson filed 11/19/84
  • Design of a dial compartment bottle
• The German thing is a design registration issued by the government
  • Submit a drawing, picture, etc. to secure registration after which a list of registered designs are published
  • List contained in Federal Gazette
• In this case the Gesch embraced three bottle designs - one pertinent
• A Revlon article illustrates the bottle cap used by Carlson
  • Demonstrates its existence in prior art
• Carlson argued the Gesch should not be prior art
  • Examiner disagrees and said it would have been obvious under 103 but 102 is irrelevant because it was less than one year
• Previous case determined Gesch counted as a bar under 102
  • Rights and privileges need not be coextensive with U.S. law as long as they are substantial and exclusive
• Court previously refused to find a distinction between 102a and 102d
  • Already settled that a Gesch qualifies under 102d
  • Different situations in a and d do not necessitate different credentials of qualification
• Carlson argues it only counts if the prior art is disclosed in a readily-accessible fashion
  • Only requirement is that it is "available" to the public
• Unfortunate that it is such a burden but this burden is imposed by law on the person of ordinary skill in the art
  • Applicant is assumed to know all the prior art
• Symmetrical image would have been obvious as asymmetry is used only for aesthetic effect

Prior Art

• 102 helps to determine the use of prior art
  • Potential bar created by a patent in a foreign country gives rise to use of such a foreign patent as a prior art reference
• Section 172 uses six months as the time bar for design patents
• 102a is for foreign patents issued by another and 102d is for foreign patents issued by the same inventor
• In re Cho determined that the prior art must have suggested the overall appearance of the design and not just components in order to be appropriate