## Facts

- An applicant sought a design patent for the ornamental design of a “Combined Tweezer and Spotlight,” an illuminable tweezer.
- The PTO examiner rejected the design application as obvious under 35 U.S.C. § 103.
- The primary prior art was a 1955 design patent (Johnson) for an illuminable tweezer with a highly similar overall form.
- The principal visible difference between the claimed design and Johnson was the fluting on a cylindrical sleeve near the spotlight end; other differences (e.g., slight pincer variations) were minor.
- The PTO Board of Appeals affirmed the examiner’s § 103 rejection; the applicant appealed to the Court of Customs and Patent Appeals.

## Issues

1. Whether the claimed ornamental design for an illuminable tweezer would have been obvious under 35 U.S.C. § 103 in view of the prior art, particularly the Johnson design.

## Decision

- The court affirmed the Board’s decision sustaining the § 103 rejection.
- The court found the claimed design closely resembled the Johnson design in overall form, with only minor ornamental differences.
- The court held it unnecessary to rely on the PTO’s secondary references because the primary reference was sufficient to support obviousness.

## Legal Principles

- Design patent obviousness under 35 U.S.C. § 103 turns on the overall visual appearance of the design as a whole, not isolated details.
- In design cases, the § 103 “ordinary skill” inquiry is not treated as an inquiry into what a professional designer would do; the analysis focuses on the overall appearance as perceived by an ordinary observer (or “ordinary intelligent man”) in light of prior designs.
- Minor ornamental variations (such as surface fluting) that do not materially change the overall appearance relative to a highly similar prior design can render a claimed design obvious.
- The PTO may cite secondary references to support a § 103 rejection, but a sufficiently close primary reference may alone sustain the rejection.

## Conclusion

Because the claimed illuminable-tweezer design was substantially the same in overall appearance as a prior illuminable-tweezer design and differed only in minor ornamental features, the court held the design obvious under § 103 and affirmed the PTO’s rejection.


In re Nalbandian, 661 F.2d 1214 (C.C.P.A. 1981)