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COLOR AS A STRUCTURAL
ELEMENT TO CLAIMS
I have twice received
an office action quoting that color
is not a structural element
distinguishing a claim. The
justification for the rejection has
been In re Seid 161 F.2d 229,
73 USPQ 431 (CCPA 1947) and cited in
MPEP 2144.04. In re Seid is
cited for the proposition that
“matters relating to ornamentation
only which have no mechanical
function cannot be relied upon to
patentably distinguish the claimed
invention from the prior art.”
In re Seid
pertains to an ornamental bottle and
not to color.
In the instant case,
the examiner has objected to certain
claims stating “claiming a color is
not adding a structural limitation
to the above claims.”
Contrary to the
examiner’s assertion, color has been
found to be a distinguishing element
in a claim. See Sorensen v.
International Trade Commission,
427 F.3d 1375, 1379 (Fed. Cir. 2005)
stating in its relevant part:
“This reference
suggests again that the first and
second injection could use plastic
with the same molecular structure.
In that case, the ‘different
characteristics’ limitation would
require some difference other than
molecular structure, such as color.”
“In sum, the claim
language and the specification show
that color differences would suffice
to satisfy the broad ‘different
characteristics’ limitation.”
(emphasis added)
In the instant
application, the applicant is
asserting that color is not merely
ornamental but serves a structural
purpose. This has been
the decision of the Court of Appeals
for the Federal Circuit. Claiming
color would be adding a structural
limitation to the claims.
September 7, 2006
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