# In re Nalbandian > Court of Customs and Patent Appeals · October 15, 1981 · 661 F.2d 1214 URL: https://www.frixlaw.com/law-library/cases/8914121 ## Case - **Full name:** In re A. Eugene NALBANDIAN - **Court:** Court of Customs and Patent Appeals - **Decided:** October 15, 1981 - **Citations:** 661 F.2d 1214; 211 U.S.P.Q. (BNA) 782; 1981 CCPA LEXIS 170 - **Precedential status:** Published - **Opinion:** Concurrence by Rich - **Judges:** Baldwin, Markey, Miller, Nies, Rich - **Cited by:** 41 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8914121 ## How later opinions describe it (automated extraction) - finding tweezer design obvious in light of prior art reference that contained vertical rather than horizontal fluting and straight rather than curved .pincers - finding tweezer design obvious in light of prior art references that contained vertical rather than horizontal fluting and straight rather than curved pincers - discussing Case: 22-1253 Document: 45 Page: 14 Filed: 01/20/2023 14 LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC the “ordinary observer” and “ordinary designer” tests ## Opinion text RICH, Judge, concurring. A majority of my colleagues choose to swing the court into alignment with the three circuits which have affirmatively rejected the reasoning of our fifteen-year old In re Láveme opinion which, until now, this court has always unanimously accepted without question. Láveme thus being dead, I deem it appropriate, as the father of the so-called “ordinary observer” test (as applied to 35 U.S.C. § 103 ), to say a few kind words over the corpse. From the passages quoted from my opinion by the majority, it will be seen that what was written in 1966 was a response to the examiner’s reliance on what would be produced by “the expected skill of a competent designer,” perhaps an imaginary person of somewhat greater skill than the imaginary “ordinary designer” now enthroned by the majority. I was interested in retaining within the ambit of the patent system the made-for-hire products of “competent designers” so businessmen or corporations would find it economically advantageous to employ them, thus carrying out the objective of 35 U.S.C. § 171 , to promote the ornamental design of articles of manufacture. The majority is not now talking of “competent designers” but of “ordinary designers” from which it follows that there may be extraordinary designers who will produce unobvious designs which ordinary designers will not routinely produce. It is probably true, as the majority says, that all this is just semantics and courts will, with phraseology of their own choosing, continue to find designs patentable or unpatentable according to their judicial “hunches.” The real problem, however, is not whether the § 103 fictitious “person” is an ordinary observer or an ordinary designer but with the necessity under Title 35 of finding unobviousness in a design. The problem long antedates 1952 and its Patent Act and existed from the beginning, the pre-1952 test being the presence of “invention” in a design. The problem was well known to the drafters of the 1952 Act (of which I was one) and it was also known that many prior legislative efforts had been made to solve it. 1 When work on revision of the patent statutes began in 1950, a deliberate decision *1219 was made not to attempt any solution of the “controversial design problem” but simply to retain the substance of the existing design patent statute and attack the design problem at a later date, after the new Title 35 had been enacted. Thus it was that the patentability of designs came to be subject to the new § 103 which was written with an eye to the kinds of inventions encompassed by § 101 with no thought at all of how it might affect designs. Therefore, the design protection problem was in no way made better; perhaps it was made worse. The intention of the drafters of the 1952 Patent Act to tackle the design protection problem was carried out, by both the private and public sectors, commencing in 1954, by a new “Coordinating Committee” of which I was chairman, and by 1957 new legislation was introduced in the 85th Congress, 1st Session in the form of Willis Bill H.R. 8873. In the 86th Congress, 1st Session, S. 2075 was introduced by Senators O’Mahoney, Wiley, and Hart, being the same bill in substance. From that time on, the legislative effort was continuous until the bill became Title III of the Copyright Revision Bills, later became Title II, and finally was jettisoned to facilitate passage of the main bill, the Act of October 19, 1976, Pub.L. No. 94-553, now 17 U.S.C. § 101 et seq. (1977). Congressmen said they would deal with designs later. The point of this review is to call attention to the resulting presently pending legislation, H.R. 20, 97th Congress, 1st Session, introduced January 5, 1981, by Mr. Rails-back, a bill “To amend the copyright law, title 17 of the United States Code, to provide for protection of ornamental designs of useful articles.” The present case and its companion, In re Spreter, 661 F.2d 1220 (Oust. & Pat.App.), concurrently decided, are but the latest examples of the need for a law tailored to the problems of designers, of their employers and clients in the business world, and of the government agencies now concerned. The now-pending legislation is substantially the same bill introduced in 1957, after the refining process of 24 years of legislative consideration. It is time to pass it and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. Commissioner of Patents and Trademarks Gerald Mossinghoff in his maiden speech to the ABA Patent, Trademark and Copyright Law Section in New Orleans on August 8, 1981, said, * * * we are again urging enactment of an inexpensive and effective form of registration protection for designs and, specifically, we are supporting H.R. 20 introduced by Congressman Railsback last January * * * largely because the concept of unobviousness is not well suited to ornamental designs. We believe a registration system, such as that contemplated in H.R. 20, would serve industry better at lower cost. [My emphasis.] The bar would do well to devote its energies to backing this effort of the PTO rather than pursuing appeals such as these which may sometimes result in patents to “extraordinary” designers whose patents, as the Commissioner also pointed out, may then suffer a 70% mortality rate in theicourts at the hands of judges reviewing the § 103 unobviousness of the designs. I have one further comment on the majority opinion, which says that a “determination of the level of ordinary skill in the art” is “required under Graham v. John Deere Co.” It is not the Supreme Court that requires such a determination, but the statutory patent law which the Court was simply applying. The statute makes that requirement of the courts, all of them, from the highest on down. The Supreme Court said as much. 383 U.S. at 19, 86 S.Ct. at 694. . Records I made in the mid 50’s show that, beginning in 1914, some 45 bills were introduced in the House and Senate directed to some improved form of protection for designs. Many of these bills were, of course, duplicates, substantially the same bill being introduced in each house or reintroduced in successive years. Those interested in the history can examine Barbara A. Ringer’s 70-page Bibliography on Design Protection published for Copyright Office use June 1, 1955, and an enlarged 160-page version or “supplement” compiled by W. Strauss, Varmer, Caruthers, and Berger on June 1, 1959, bearing the same title. Fabulous amounts of time and effort have been poured into solving the design protection problem with, to date, no legislative solution. See also Kelsey M. Mott’s two-installment article The Standard of Ornamentality in the United States Design Patent Law, 48 ABA J. 548, 643 (June, July 1962). --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8914121. Public record. Not legal advice.