D517789 et al.

Patent Trials and Appeals Board

Sep 10, 2019

95002100 - (D) (P.T.A.B. Sep. 10, 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.
95/002,100 08/24/2012 D517789 2200929.00228 US1 2333
23483 7590 09/10/2019
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
EXAMINER
PRATT, DEANNA L
ART UNIT PAPER NUMBER
2911
MAIL DATE DELIVERY MODE
09/10/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

U.S.A. DAWGS, INC.
Requester, Respondent

v.

Patent of CROCS, INC.
Patent Owner, Appellant
____________________

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Technology Center 2900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and RAE LYNN P. GUEST,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002)
from a Final Rejection of the claim of the ’789 Patent. We have jurisdiction
under 35 U.S.C. §§ 134 and 315 (2002).

1 Issued March 28, 2006 to Scott Seamans (“the ’789 Patent”).
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We are informed that the ’789 Patent, and related Patent US 6,993,858
B2,2 were involved in proceeding In the Matter of Certain Foam Footwear,
USITC Inv. No. 337-TA-567 (USITC), the decisions of the U.S.
International Trade Commission having been appealed to the Court of
Appeals for the Federal Circuit, which rendered its decision in Crocs, Inc. v.
Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010). Appeal Brief (“App.
Br.”) 1–2. We are also informed that the ’789 Patent and the ’858 Patent are
being asserted in Crocs, Inc. v. Effervescent, Inc. et al., Civ. No. 1:06-cv-
00605-PAB-KMT (D. Colo.). App. Br. 1–2.
An oral hearing with the Patent Owner’s representative was held
before the Patent Trial and Appeal Board on August 26, 2019. A transcript
of the hearing will be entered into the electronic record in due course.
In addition to the Appeal Brief, the Patent Owner also relies on a
Rebuttal Brief (hereinafter “Reb. Br.”), declarations of Mr. Whatley, Mr.
Seamans, Mr. Evard, Mr. Hall, Mr. Prats, and Mr. Butler, and various
exhibits submitted therewith, in support of its appeal. The Requester relies
on its Respondent Brief (“Resp. Br.”) and declarations of Mr. Tonkel and
Mr. Butler, and various exhibits submitted therewith, in support of the
Examiner’s findings and rejection.
We REVERSE.

THE ’789 PATENT
The ’789 Patent is entitled “FOOTWEAR,” and claims an
“ornamental design for footwear, as shown and described” in its seven

2 Issued to Scott Seamans on February 7, 2006 (“the ’858 Patent”).
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figures. ’789 Patent, Claim; Figs. 1–7. Figure 1 of the ’789 is reproduced
below.

Figure 1 of the ’789 Patent reproduced above shows a front
perspective view of the claimed ornamental design for footwear.
The ’789 Patent issued from Application No. 29/206,427, filed May
28, 3004, and has the following related U.S. application data:
Continuation-in-part of application No. 10/803,569, filed on
Mar. 17. 2004, which is a continuation-in-part of application
No. 10/602,416, filed on Jun. 23, 2003, and a continuation-in-
part of application No. 10/603,126, filed on Jun. 23, 2003.
’789 Patent, Related U.S. Application Data.
Application No. 10/803,569 issued as US 7,146,751 B2 on December
12, 2006, application No. 10/602,416 was abandoned, and application No.
10/603,126 (“the ’126 Application”) issued as the ’858 Patent.

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ISSUES
The following issues have been raised in the present appeal:
1. Whether the Examiner erred in finding that the ’789 patent is
not entitled to the benefit of an earlier filing date of June 23, 2003.
2. Whether the Examiner erred in rejecting the claim of the ’789
Patent under 35 U.S.C. § 102, finding that “Figure 11” of Appendix
UX anticipates the claimed design.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. In addition to Figure 1 reproduced above, the ’789 Patent also
includes the following figures:
A. Figure 2

Figure 2 reproduced above shows a right side view of the claimed
ornamental design for footwear.

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B. Figure 3

Figure 3 reproduced above shows a left side view of the claimed
ornamental design for footwear.

C. Figure 4

Figure 4 reproduced above shows a front view of the claimed
ornamental design for footwear.

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D. Figure 5

Figure 5 reproduced above shows a rear view of the claimed
ornamental design for footwear.

E. Figure 6

Figure 6 shows a top view of the claimed ornamental design for
footwear.

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F. Figure 7

Figure 7 shows a bottom view of the claimed ornamental design for
footwear.

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2. “Figure 11” of Examiner’s Appendix UX is reproduced below:

Figure 11 reproduced above shows four photographs of footwear.
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PRINCIPLES OF LAW
The sole test for anticipation in design patents is the “ordinary
observer test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
1233, 1239 (Fed. Cir. 2009). According to this test, two designs are
substantially the same if, “in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, . . . the resemblance is such as to
deceive such an observer, inducing him to purchase one supposing it to be
the other.” Id. (quoting Gorham Mfg. Co. v. White, 81 US 511, 528 (1871)).
In that regard, a prior art reference may anticipate a claimed design if it “is
‘identical in all material respects’ to the claimed invention.” High Point
Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 638 (Fed. Cir. 2015)
(quoting Door–Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed.
Cir. 2001); Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir.
1997) (“The publication must show the same subject matter as that of the
patent, and must be identical in all material respects.”)). “In other words, the
two designs must be substantially the same.” High Point Design, 621 F.
App’x at 638.

ANALYSIS
Preliminarily, we note that only those arguments timely made in the
briefs of record in this appeal have been considered. Other arguments not
made or those not properly presented to the Board have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). In addition,
while we have fully considered all of the evidence of record, including the
declarations, we cite to the briefs of the parties in the analysis below, the
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briefs citing to specific portions of the evidence in support of the facts and
contentions set forth therein. We also address the issues in an order different
than the order presented by the involved parties.

Issue 2
The Examiner finds that the claim of the ’789 Patent is anticipated by
“Figure 11” of Appendix UX.3 Right of Appeal Notice 4.4 The Examiner
explains that Figure 11 is a compilation of “[t]he shoe shown in several
images throughout Citation U.” RAN 4. The Examiner finds that the shoe
of Figure 11 “has an overall appearance that is substantially the same as the
claimed design of the ’789 patent.” RAN 4. In particular, the Examiner
states that
the Examiner has presented a prima facie case that shoe shown
in Fig. 11 of Appendix UX is substantially similar as the shoe
of the ‘789 patent when viewed through the eyes of the ordinary
observer armed with knowledge of the prior art. The only
differences between the shoe shown in Fig. 11 of Appendix UX
and the shoe design of the ’789 patent reside in the number of
views provided.
RAN 9.
The Patent Owner disagrees and argues that “Figure 11 does not
anticipate the ’789 Patent’s design” (App. Br. 30) because a shoe is

3 The record interchangeably refers to Figure 11 of Citation U and Appendix
UX. It is our understanding that there is only one Figure 11, which is
reproduced above.
4 Mailed August 9, 2017 (“RAN”). The Examiner’s Answer mailed
November 28, 2018, incorporates by reference, the RAN. Ans. 1. Thus, we
cite to the RAN herein.
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asymmetrical, and Figure 11 shows only outside and top views (App. Br.
32). Specifically, the Patent Owner argues
Missing from OA Figure 11 is any depiction of a bottom view,
front view, back view, insole view, or full top view. Yet
Figures 3-7 of the ’789 Patent provide just such views, meaning
that [] Figure 11 does not provide a comparable view for over
half of the figures of the claimed design in the 789 Patent.
App. Br. 33.
We generally agree with the Patent Owner. As the Patent Owner
points out, “a shoe is not a symmetrical object, and any number of design
flourishes could exist in the portions of the shoes not depicted in . . . Figure
11.” App. Br. 34. In particular, Figure 11 lacks views of the shoe showing:
the inner side to allow comparison with the ornamental design shown in
Figure 3 of the ’789 Patent; the front to allow comparison with the
ornamental design shown in Figure 4 of the ’789 Patent; the rear to allow
comparison with the ornamental design shown in Figure 5 of the ’789
Patent; and the bottom to allow comparison with the ornamental design
shown in Figure 7 of the ’789 Patent. FF 1A–1F and 2. Although the
photographs of Figure 11 do appear to adequately show a top of the shoe
when the photographs are considered in combination, this does not address
the noted deficiencies with respect to other views. Int’l Seaway Trading,
589 F.3d at 1235 (“the district court erred in failing to compare the insoles of
the patents-in-suit with the prior art from the perspective of the ordinary
observer.”).
The Examiner states that “the ornamental aspects of the designs at
issue” have been properly considered, and finds that “when comparing the
visible portions of the shoe shown in the images of . . . Fig. 11 . . . to the
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corresponding portions of the shoe of the ’789 patent, the designs are
identical.” RAN 11. However, the record lacks evidentiary support for the
finding of anticipation because, at minimum, Figure 11 fails to show the
inner side of the shoe, and fails to show the inner side portion of the front,
the rear, and the bottom of the shoe. FF 2. Accordingly, it is not possible
from the photographs of Figure 11 to determine whether shoe design of
Figure 11 is substantially the same as the shoe design claimed in the ’789
Patent.
The Requester argues that Figure 11 shows a top view and a partial
side view, so “Appellant’s bizarre hypothetical designs . . . are impossible.”
Resp. Br. 20–21 (referring to hypothetical figures appearing in App. Br. 35).
However, the alleged “top view” of Figure 11 shows only a portion of the
upper and the strap, and does not show the entire upper with the side wall or
the heel portion, to thereby establish the ornamental design of the inner side
of the shoe, including the design of the sidewall ventilator holes on the inner
side wall. FF 2.
The Examiner further finds that
Because the field of related prior art was not crowded with
many designs that look like the claimed design, despite the fact
that the images of Citation U shown in Fig. 11 of Appendix UX
do not fully disclose every surface or angle of the entire shoe,
an ordinary observer armed with the knowledge that there were
no similar designs in existence, would recognize the shoe
shown in Fig. 11 of Appendix UX and the shoe design of the
’789 patent to be one and the same.
RAN 9–10.
However, this line of reasoning appears to draw too much upon non-
documentary evidence, and imputes substantive knowledge of ornamental
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aspects of the shoe of Figure 11 to “an ordinary observer” without
evidentiary support. While we do not find that “every surface or angle of the
entire shoe” must be shown in a prior art reference, the missing views of
Figure 11 establish a sufficient gap in the evidence as to the shown design to
preclude a finding of anticipation.
The Examiner also finds that the Patent Owner’s
continued reminder that they are not denying that they were
selling a shoe that was within the scope of the design of the
’789 patent adds to the preponderance of evidence (i.e., that it is
more likely than not) that the shoe shown in the images of
Citation U compiled in Fig. 11 of Appendix UX anticipates the
claimed design of the ’789 patent.
RAN 10; see also Resp. Br. 20 (“At no point in this proceeding did
Appellant point to any difference between the prior art and the claimed
design . . . . Of course, Appellant could not possibly do so because, as the
Examiner recognized, Appellant was selling the shoe at the time.”); Resp.
Br. 4 (“Appellant does not, and cannot dispute that the shoe it sold is the
same one depicted in Citation U.”).
However, inter partes reexamination must be based on “prior art cited
under the provisions of section 301.” 35 U.S.C. § 311(a) (pre-AIA).
Section 301 states that “prior art” consists of “patents or printed
publications.” 35 U.S.C. § 301(a). Accordingly, such issues of prior sales
activity are not appropriately raised in this proceeding.
Therefore, in view of the above considerations, we agree with the
Patent Owner that “[t]here is simply not enough information” to support a
finding of anticipation by Figure 11. App. Br. 35.
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The parties also disagree as to whether Figure 11 is a publically-
available printed publication. See RAN 9; App. Br. 29–30; Resp. Br. 18–19;
Reb. Br. 9–11. However, this additional issue is moot and we decline to
address it because, as we find above, even if Figure 11 was a publically-
available printed publication, it fails to anticipate the claim of the ’789
Patent.

Issue 1
In rejecting the claim of the ’789 Patent as anticipated by Figure 11,
the Examiner finds that
The effective filing date of the ’789 patent is determined to be
May 28, 2004. The ’789 patent is not entitled to the benefit of
the earlier filing dates of prior-filed applications 10/602,416
and 10/603,126 because the design of the ’789 patent was not
described in the prior-filed applications.
RAN 4.
In denying benefit to the earlier date, the Examiner finds that “[t]he
design of the ’789 patent exhibits at least five clear differences in
appearance compared to the shoe design disclosed in the earlier ’416 and
’126 applications” as follows: the rising toe; the sidewall ventilator holes;
the edge of the upper; the shape of the strap at the rivet connection point;
and the shape of the outer heel area. RAN 5.
The parties disagree as to the level of one of ordinary skill in the art,
whether these five differences are merely a result of perspective and
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rendering/formalizing of the drawings,5 and whether one of ordinary skill
would have found the inventor had possession of the design of the ’789
Patent in light of such differences. RAN 5; App. Br. 8, 10–15, 17–22, 27;
Resp. Br. 4–5, 10–16; Reb. Br. 3, 7, 8.
This earlier filing date issue affects whether Figure 11 of Appendix
UX is available, date-wise, as prior art to the design claimed in the ‘789
patent. We need not reach these issues because, even if the ’789 Patent is
not entitled to its claim to priority based on patent application No.
10/603,126, thus making Figure 11 of Appendix UX available as prior art,
Figure 11 does not anticipate the claim of the ’789 Patent as discussed above
relative to Issue 1.

CONCLUSION
The Examiner’s rejection of the claim of the ’789 Patent as
anticipated by “Figure 11” of Appendix UX is REVERSED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the

5 We observe that patent application No. 10/603,126, to which the subject
’789 Patent claims benefit, issued as the ’858 Patent. The formalized
drawings of the ’858 Patent includes the same five differences as compared
to the drawings of the subject ’789 Patent.
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United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

REVERSED