Ahren Bonnema et al.

Patent Trials and Appeals BoardSep 26, 2019

29497580 - (D) (P.T.A.B. Sep. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 29/497,580 07/25/2014 Ahren BONNEMA 513469/0243053 1001 23838 7590 09/26/2019 Hunton Andrews Kurth LLP/HAK 2200 Pennsylvania Avenue NW Washington, DC 20037 EXAMINER BENNETT-HATTAN, ELIZA Z ART UNIT PAPER NUMBER 2915 NOTIFICATION DATE DELIVERY MODE 09/26/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): uspto@kenyon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AHREN BONNEMA and COLLEEN MARIE HANLEN ____________ Appeal 2018-006442 Application 29/497,580 Technology Center 2900 ____________ Before RAE LYNN P. GUEST, GRACE KARAFFA OBERMANN, and MITCHELL G. WEATHERLY, Administrative Patent Judges. OBERMANN, Administrative Patent Judge DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s Final Action rejecting the sole claim in Appellant’s design patent application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The real party-in-interest is JanSport Apparel Corporation. App. Br. 2. Appeal 2018-006442 Application 29/497,580 2 THE CLAIMED DESIGN Appellant claims an ornamental design for an accessory pouch. Orig. Spec. 3.2 Seven (7) figures depict various views of the accessory pouch and define the scope of the claimed design. Amended Spec., Figs. 1–7 (replacement sheets). The Examiner in the Final Action focuses on Figures 1 and 4, reproduced below: 2 We refer to the Original Specification filed July 25, 2014, as “Orig. Spec.” and the Amended Specification filed April 7, 2016, as “Amended Spec.” The Examiner identifies July 25, 2014, as the effective filing date of Appellant’s application. Final Action 2. Appeal 2018-006442 Application 29/497,580 3 Amended Spec. Figs. 1, 4 (replacement sheets); Final Action 2. Figures 1 and 4, respectively, are a top-right perspective view and a left side view of the claimed accessory pouch. We observe that “broken lines shown in all views of the accessory pouch” are for illustrative purposes only and form no part of the claimed design. Orig. Spec. 3. Appeal 2018-006442 Application 29/497,580 4 THE REJECTION The Examiner rejects the design claim under 35 U.S.C. § 102(a)(2) as anticipated by Wilson (U.S. Patent No. 3,143,424), a utility patent that, according to the Examiner, discloses a design that was publicly available by August 4, 1964, well before the critical date. Final Action 2. Appellant does not dispute the prior art status of Wilson’s disclosure. App. Br. 2–6. ANALYSIS Wilson concerns a method for making a fried sandwich. Wilson, 1:1– 15, Fig. 2. In the Examiner’s view, “[t]he shape and appearance of” Wilson’s sandwich, shown during an intermediate stage of formation, “is identical in all material respects to that of the claimed design” for an accessory pouch. Final Action 3. Significantly, in making that finding, the Examiner compares a top view of Wilson’s fried sandwich (Wilson Fig. 2) to top and side views of the claimed accessory pouch (Appellant’s Figs. 1 and 4). Id. at 2. Although the Examiner cites a side view of the claimed design, which reveals an accessory pouch having a long, thin profile, the Final Action does not explain how or why the intermediate fried sandwich as disclosed in Wilson meets that perspective of the claimed design. See Final Action 2–4 (nowhere discussing a side view of Wilson’s fried sandwich or otherwise explaining how or why the intermediate fried sandwich depicted in Wilson discloses the side view of the claimed design as depicted in Figure 4 of the Amended Specification). We agree with Appellant that this lack of analysis represents reversible error. Appeal 2018-006442 Application 29/497,580 5 Specifically, the Examiner relies on the following comparison of Figure 2 from Wilson (on the left) and Figures 1 and 4 of the claimed design (on the right): Final Action 2 (arrow added by the Examiner). The above illustration is a side-by-side comparision of Wilson’s Figure 2 (illustrating a top plan view of a fried sandwich in an intermediate stage of formation) and Figure 1 from the Amended Specification (illustrating a top-right perspective view of an accessory pouch) positioned above Figure 4 from the Amended Specification (illustrating a left side view of the claimed design). Although the Examiner reproduces Appellant’s Figure 4 (on the bottom right in the above side-by-side comparison), the Examiner does not explain why Wilson’s fried sandwich as disclosed meets the scope of the Appeal 2018-006442 Application 29/497,580 6 claimed design as reflected in Figure 4. That failure undercuts the Examiner’s finding that Wilson’s fried sandwich “is identicial in all material respects to” the accessory pouch “of the claimed design.” Ans. 4; Final Action 3. All of the figures included in the Amended Specification bear upon the correct construction and scope of the claimed design. See Amended Spec, Figs 1–7 (including, for example, Figure 4, illustrating a left side view of an accessory pouch characterized by a long, thin profile); Reply 2–5 (discussing the Examiner’s failure to take account adequately of the side view perspective of the claimed design). The Examiner states, without citing any objective support, that “[t]he scope of the Wilson reference is also a thin folded material.” Ans. 4. Wilson, in fact, does not disclose “a thin folded material” having an “appearance” that is “identical in all material respects to that of the claimed design.” Ans. 4. On the contrary, even a cursory comparison of Figure 4 from the Amended Specification to Figure 4 from Wilson reveals significant differences between the two designs. We reproduce those views below with Wilson’s Figure 4 rotated counterclockwise by ninty degrees in the comparison: Appeal 2018-006442 Application 29/497,580 7 See Reply 3–4 (reproducing Figure 4 from the Amended Specification and Wilson’s Figure 4). The above illustration is a side-by-side comparison of a left side view of the claimed design for an accessory pouch and a cross- sectional view of Wilson’s fried sandwich along a line 4–4 of the final folded sandwich product of Figure 3 of Wilson. We note that Figure 4 is not a side view of the sandwich of Wilson in the intermediate stage of Figure 2. The only side view presented in Wilson is of the final sandwich product in Figures 5–8, which illustrate methods of preparing and storing the sandwich product. Wilson 1:49–54, Figs. 5–8. We agree with Appellant that the Examiner fails to take account of the entirety of the claimed design, including the side view of the accessory pouch illustrated in Figure 4 of the Amended Specification. Reply 2–5. As Appellant observes, “Wilson’s sandwich is no such thin folded material.” Reply 3–4 (reproducing for comparison Appellant’s Figure 4 and Wilson’s Figure 4); see Final Action 2 (reproducing Wilson’s Figure 2 only, in a side- by-side comparison to Appellant’s Figures 1 and Figure 4). Appellant also Appeal 2018-006442 Application 29/497,580 8 correctly observes that, unlike the long, thin profile illustrated in Figure 4 from the Amended Specification, “Wilson’s sandwich is roughly half as thick as it is long.” Reply 3. The claimed design, when viewed from the side, has a “length and width . . . at least an order of magnitude greater than its thickness.” Id. at 2 (reproducing Figures 4–7 of the claimed design); 4 (reproducing Wilson’s Figure 4). In sum, the Examiner does not adequately demonstrate that Wilson’s intermediate sandwich describes the aspect of the claimed design shown in Figure 4 of the application at issue. Accordingly, we determine that the Examiner misconstrues the scope of the claimed design in determining that “[t]he scope of the Wilson reference is also a thin folded material.” Ans. 4. The Examiner has not shown that Wilson’s design is “identicial in all material respects to that of the claimed design.” Id.; see Final Action 3 (same). Accordingly, we cannot sustain the Examiner’s finding that Wilson’s fried sandwich describes, with anticipatory specificity, the side view perspective of the claimed design as depicted, for example, in Figure 4 from the Amended Specification. The decision of the Examiner rejecting the design claim under 35 U.S.C. § 102(a)(2) is reversed. CONCLUSION Claims Rejected Basis Affirmed Reversed Design Claim § 102(a)(2) over Wilson Design Claim Overall Outcome Design Claim Appeal 2018-006442 Application 29/497,580 9 REVERSED