¶ 15.08 Lack of Ornamentality (Article Visible in End Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be "created for the purpose of ornamenting" the article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).
The following evidence establishes a prima facie case of a lack of ornamentality: [1]
Evidence that demonstrates the design is ornamental may be submitted from the applicant in the form of an affidavit or declaration under 37 CFR 1.132:
(a) stating the ornamental considerations which entered into the design of the article; and
(b) identifying what aspects of the design meet those considerations.
An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Examiner Note:
In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.