Apple Inc.

Patent Trials and Appeals Board

Nov 1, 2021

2021002349 (P.T.A.B. Nov. 1, 2021)

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.
29/583,590 11/07/2016 Freddy ANZURES 2607.0100070(P5548USC16) 3512
63975 7590 11/01/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
TUNG, MELANIE H
ART UNIT PAPER NUMBER
2917
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
Apple-eOA@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDDY ANZURES, STEPHEN O. LEMAY,
and MARCEL VAN OS
____________

Appeal 2021-002349
Application 29/583,590
Technology Center 2900
____________

Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting the pending design patent claim in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§§ 6(b), 134(a), and 171(b). An oral hearing was conducted on October 25,
2021, with Tracy-Gene G. Durkin, Esq., appearing on behalf of Appellant.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies APPLE INC., as the real party in
interest. Appeal Br. 3.
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Application 29/583,590

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CLAIMED SUBJECT MATTER
The present application is directed to “[t]he ornamental design for a
display screen or portion thereof with graphical user interface as shown and
described.” Spec. 3 (as amended on March 17, 2017). The claimed design
is shown in a single figure, reproduced here:

The Figure above is a front view of a display screen or portion thereof. The
Specification advises that, “[t]he dot-dash broken lines in the Figure show a
display screen or portion thereof, and form no part of the claimed design.
The dashed broken lines in the Figure show portions of the graphical user
interface that form no part of the claimed design.” Spec. ¶ 433 (as amended
on March 17, 2017).

Appeal 2021-002349
Application 29/583,590

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THE REJECTION
The Examiner rejects the claim under 35 U.S.C. § 103 as being
unpatentable over Harvey (US D541,295 S, issued Apr. 24, 2007) in view of
Howes (US D523,077 S, issued June 13, 2006) and Neue Helvetica
(https://www.linotype.com/1264148/neue-helvetica-75-bold -outline-
product.html, accessed by the Examiner on Oct. 6, 2018).
OPINION
The Examiner finds that Harvey has design characteristics that are
basically the same as the claimed design. Final Act. 2. The Examiner
describes these characteristics as “a graphical user interface with
proportionally larger numbers above smaller letters, an outline font on the
top row, and thinner and more condensed letters on the bottom row. The
bottom row is indented under the top row. The numbers and text are
centered within a rectangle, and are placed approximately the same distance
from the top edge.” Id. at 2–3. The Examiner identifies differences between
the claimed design and Harvey, noting that Harvey “does not show the top
outline font repeated on the bottom row, the specific font features of the ‘1’
that has no serif on the bottom end and a more curved serif on the top end,
nor the same numbers and text as the claimed design.” Id. at 3.
Appellant argues that the Examiner construes its claim too broadly
and too conceptually, and “has over-simplified Appellant’s design to two
basic elements – numbers/letters and a rectangle,” in erroneously concluding
that the two designs are basically the same. Appeal Br. 15. Appellant
reproduces the portion of Harvey relied on by the Examiner in a side-by-side
relationship to the claimed design, as follows:
Appeal 2021-002349
Application 29/583,590

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Id. Depicted above, on the left, is the portion of the Figure of Harvey relied
on by the Examiner as a primary, or Rosen,2 reference, and, on the right, is
the claimed design, both being front views of display screens having icons or
graphical user interfaces appearing thereon.
Appellant maintains that “[t]he Examiner’s discernment of the overall
visual impression of Appellant’s design . . . fails to account for a graphical
user interface with visually significant numerals and text centered in the top
fourth of the design, and with an equally prominent length or area of space
below it.” Reply Br. 5. In contrast, according to Appellant, “[i]n Harvey, a
large number . . . and a smaller text element . . . consume almost the entirety
of the square, they are not top justified,” and “there is no visually prominent
area below Harvey’s numbers and text.” Id. at 9. We agree with Appellant
both that the Examiner does not adequately and correctly discern the visual
impression created by the claimed design as a whole, and that, although
possibly conceptually similar to Harvey, the overall visual impression of

2 In re Rosen, 673 F.2d 388 (CCPA 1982).
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Application 29/583,590

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Harvey and the claimed design are not basically the same. See Durling v.
Spectrum Furniture Co., 101 F.3d 101, 103 (Fed. Cir. 1996).
The Examiner’s attempt to reconcile, in particular, the difference in
appearance between the Harvey square outline and the claimed rectangular
outline, highlights that adequate consideration is not afforded to the overall
appearance of the claimed design, nor to the actual appearance of Harvey.
The Examiner takes the position that “[t]he specific amount of space
between the text and numbers in relation to an outer surrounding rectangle is
considered a minor difference because a review of the tens of thousands of
design patents for display screens with graphical user interfaces or icons,
shows most contain an outer rectangle,” and “[t]he Howes et al. secondary
reference shows a larger space between text and the bottom edge of the
surrounding rectangle.” Ans. 16. Neither Howes, nor the purported tens of
thousands of other design patents, however, are germane to determining
whether the “something in existence,” i.e., the portion of the Harvey design
relied on by the Examiner, has an overall visual impression that is basically
the same as the claimed design. See Rosen, 673 F.2d at 391 (“there must be
a reference, a something in existence, the design characteristics of which are
basically the same as the claimed design in order to support a holding of
obviousness” ).
In view of the foregoing, we determine that the Examiner has not
established Harvey to be a proper primary, or Rosen, reference as the
starting point for the obviousness rejection. Accordingly, the rejection is not
sustained.
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Application 29/583,590

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DECISION SUMMARY
In summary, we reverse the Examiner’s decision to reject Appellant’s
design claim, as set forth in this table:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1 103 Harvey, Howes, Neue
Helvetica
1

REVERSED