## Facts

- Applicants sought a design patent for a gasket used to seal gasoline drums.
- The claimed design included a radially extending flange, a cylindrical portion around the opening, and concentric annular ribs and grooves, including an innermost rib slightly higher than the others creating a deeper surrounding groove.
- The examiner rejected the single design claim under 35 U.S.C. § 103 based on two references and also found the distinguishing features functionally dictated rather than ornamental.
- One reference depicted a flanged washer in a commercial catalog without ribs or grooves and with different proportions and appearance from the claimed gasket.
- The other reference described a pipe coupling using a flat lead washer that could become corrugated only after assembly and use, rather than disclosing a separate washer article with ribs or grooves.
- The Board of Appeals affirmed, characterizing the ribs and groove as added for functional purposes (better sealing and mold-related benefits).

## Issues

1. Whether the claimed gasket design would have been obvious under 35 U.S.C. § 103 in view of the cited references.
2. Whether the claimed design was unpatentable because its distinctive features were dictated by functional requirements rather than ornamental appearance.

## Decision

- The court reversed the Board of Appeals.
- The court held the cited references, alone or combined, did not suggest applicants’ overall design appearance, including the specific rib-and-groove configuration.
- The court rejected the view that the design was barred from protection merely because the distinguishing features had functional purposes.

## Legal Principles

- Design-patent obviousness turns on whether the prior art suggests substantially the same overall visual appearance of the claimed design.
- A reference that does not disclose the relevant design features as a separate article (or does not create a similar visual impression) is insufficient to support a § 103 rejection.
- Functional advantages do not, by themselves, disqualify a design from patent protection; the proper inquiry remains whether the claimed design presents an ornamental appearance not suggested by the prior art.

## Conclusion

The court concluded that the prior art did not suggest the claimed gasket’s overall ornamental appearance and that functional motivations for certain features did not alone negate design patent subject matter, so the rejection was reversed.


In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964)