In re Carletti
328 F.2d 1020 (1964)
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Rule of Law:
A design is not patentable as an 'ornamental design' under 35 U.S.C. § 171 if its configuration is dictated solely by functional considerations, even if the resulting design is aesthetically pleasing.
Facts:
- Appellants, technologists employed by the U.S. Army, created a design for a rubber gasket.
- The gasket was developed as part of a research program to create a component for a closure assembly on 55-gallon gasoline drums.
- The design resulted from a development program where numerous gasket designs were subjected to severe testing under various service conditions, including tropical and arctic environments.
- The final gasket design features a plurality of concentric annular ribs and a recessed groove.
- The design was standardized in a military procurement specification (MIL-P-40068), which contained detailed engineering drawings specifying the exact position, dimensions, and tolerances of the ribs and grooves.
Procedural Posture:
- Appellants filed a design patent application (serial No. 56,122) for a 'GASKET' with the U.S. Patent Office.
- A Patent Office examiner rejected the application's claim, finding the design unpatentable over the prior art and dictated by functional requirements.
- Appellants appealed the examiner's decision to the Patent Office Board of Appeals.
- The Patent Office Board of Appeals affirmed the examiner's rejection.
- Appellants appealed the Board's decision to the Court of Customs and Patent Appeals.
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Issue:
Is a design for a gasket, whose features like concentric ribs and grooves are dictated by functional requirements for sealing, patentable as an 'ornamental design'?
Opinions:
Majority - Rich, Judge
No. A design whose configuration is the result of functional considerations only is not patentable as an ornamental design because it was not created for the purpose of ornamenting. The court found that the concentric ribs and grooves on the appellants' gasket were dictated by the functional requirements of creating an effective seal for a gasoline drum, not by aesthetic or ornamental concerns. Evidence for this conclusion included the military specification with its detailed engineering drawings and the severe functional testing the gasket underwent during development. Citing In re Garbo, the court reiterated that for a design embodying functional features to be patentable, it 'must have an unobvious appearance, distinct from that dictated solely by functional considerations.' The court concluded that the gasket's appearance was dictated by function, much like the appearance of a piece of rope or a hex-nut, and therefore was not an 'ornamental design' within the meaning of the patent statute.
Concurring - Worley, Chief Judge
No. The design is unpatentable, but the rejection should be affirmed based on the prior art references alone. The concurring opinion argues that the Somerville spud washer and the Mixer washer references are more than sufficient to render the appellants' gasket design obvious to one of ordinary skill in the art under 35 U.S.C. § 103. The concurrence characterizes the appeal as a futile 'campaign' by the U.S. Army to patent a design that belongs in the public domain, and finds the rejection by the Patent Office clearly correct on the basis of obviousness, without needing to reach the functionality argument favored by the majority.
Analysis:
This decision solidifies the functionality doctrine in design patent law, establishing a clear boundary between protectable ornamental designs and unprotectable functional configurations. It clarifies that merely creating an aesthetically pleasing arrangement of functional elements is insufficient for patentability; the design's appearance must be distinct from what function alone would dictate. This case serves as a key precedent for examiners and courts to reject design patents where the features are primarily utilitarian, preventing applicants from using design patents to secure a monopoly over functional innovations without meeting the stricter requirements of a utility patent.
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