35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper – weights, etc. does not, in my opinion, evince the slightest exercise of invention….” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose,… does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features…of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).