## Facts

- Richard Q. Yardley filed a design patent application for an ornamental watch-face design featuring a caricatured figure whose extended arms and hands function as the hour and minute hands.
- The application contained a single claim in standard form: “The ornamental design for a watch as shown and described.”
- The Patent Office examiner rejected the claim as obvious under 35 U.S.C. § 103 based on a single prior-art design patent to Breger (U.S. Design Patent D‑82,245), which also showed a watch dial with a caricatured figure whose arms were carried by the hour and minute hands.
- The examiner also rejected the claim on an “estoppel/election” theory after determining that three copyright registrations had been obtained for the same subject matter.
- The Patent Office Board of Appeals affirmed both rejections.
- Yardley appealed to the United States Court of Customs and Patent Appeals.

## Issues

1. Whether the claimed watch-face design was obvious under 35 U.S.C. § 103 in view of the Breger design patent.
2. Whether obtaining copyright registrations covering the same design estopped the applicant from receiving a design patent.

## Decision

- The court reversed the Board’s affirmance of the § 103 rejection.
- The court held that the record did not support a finding that the claimed design would have been obvious to an ordinary designer in light of Breger when the design is evaluated as a whole.
- The court reversed the estoppel rejection, holding that prior copyright registration does not bar design patent protection for the same subject matter.
- The case was returned to the Patent Office with both grounds of rejection removed.

## Legal Principles

- Design patent obviousness under 35 U.S.C. § 103 must be assessed based on the overall ornamental appearance and visual impression of the claimed design, not merely on shared concepts or isolated features.
- A prior copyright registration does not, by itself, create an “election” or estoppel that prevents an applicant from obtaining a design patent on the same design.
- Absent an express statutory bar, the Patent Office may not deny a design patent solely because the applicant previously sought or obtained copyright protection for overlapping subject matter.

## Conclusion

The court held that the applicant’s watch-face design was not shown to be obvious over the cited design patent when judged by overall appearance, and it rejected a nonstatutory estoppel theory that would have forced an election between copyright and design patent protection.


Application of Yardley, 493 F.2d 1389 (C.C.P.A. 1974)