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Court “Sees Through” PTO’s Rejection of Design Patent for Transparent Optical Disk

April 18, 2001

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Last Month at the Federal Circuit - May 2001

Judges: Schall (author), Friedman, and Gajarsa

In In re Haruna, No. 00-1283 (Fed. Cir. Apr. 18, 2001), the Federal Circuit reversed a decision of the Board that had affirmed an Examiner’s rejection of a design patent application as being unpatentable under 35 U.S.C. § 103.

The sole claim of Design Application No. 29/058,031 (“the ‘031 application”) filed by Tsutomu Haruna and Sado Kita (collectively “Haruna”) is directed to an ornamental design for a prerecorded optical disk. The design differs from conventional disks in that the metallized region of the disk stops well short of the outer rim, and the disk has a relatively wide transparent region adjacent the outer rim. The Examiner rejected the ‘031 application as being obvious in view of a utility patent issued to Benne et al.(“Benne”), which describes a disk having at least three zones, where the central zone is metallized and contains information, and the outer zone may or may not be metallized and does not contain information.

The Federal Circuit ruled that Benne’s teachings that the outer zone of its disks may not be metallized does not suggest the claimed invention, because it does not suggest that that portion will be transparent, even though during preparation of the Benne disk, that portion of the disk is transparent. The invention, the Court observed, is not directed to a substrate for a disk, but to the final product, i.e., a prerecorded optical disk. Thus, the Court ruled, Benne does not render the claimed design obvious.