Mohageg, Mike et al.

Patent Trials and Appeals Board

Sep 20, 2019

29522397 - (D) (P.T.A.B. Sep. 20, 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.
29/522,397 03/30/2015 Mike Mohageg 88325-913831(157000US) 1040
51206 7590 09/20/2019
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HOLBROW, KATHERINE A
ART UNIT PAPER NUMBER
2923
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIKE MOHAGEG, TIMOTHY DUNN,
and DAVID KAMHOLZ
____________________

Appeal 2019-001776
Application 29/522,397
Technology Center 2900
____________________

Before JOHN C. KERINS, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mike Mohageg et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting the single design claim pending in
this appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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BACKGROUND
Appellants’ invention relates to a display screen with a graphical user
interface. The claim on appeal is “the ornamental design for the DISPLAY
SCREEN OR PORTION THEREOF WITH GRAPHICAL USER
INTERFACE.”
REJECTIONS
The claim stands rejected under 35 U.S.C. § 103 as unpatentable over
YOUTUBE, Facebook Side Menu Demo, https://www.youtube.com/
watch?v=WFBjaw1V_EM (“Almog”), WIKIMEDIA COMMONS,
https://commons.wikimedia.org/wiki/File:Oracle_logo.svg (“the Oracle
logo”), and USPTO, http://tmsearch.uspto.gov/bin/
showfield?f=doc&state=4801:ih4j0u.3.1 (“Oracle Trademark 3192864”).
Final Act. 2.
OPINION
The Examiner finds that Almog has design characteristics that are
basically the same as the claimed design “showing a first view with a three-
bar icon in the upper left corner and text at the bottom of the design,” which
the Examiner appears to compare with Appellants’ Figures 1 and 3, and “a
second view with a horizontal line at right, a three-bar icon in the upper right
corner, and text at the bottom of the design,” which the Examiner appears to
compare with Appellants’ Figures 2 and 4–8. Final Act. 2. The Examiner
provides the following Almog screen shots for comparison with Appellants’
Figures 1 and 3:
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Id. at 3.
The Examiner finds that the claimed design differs from Almog “in
that the text at the bottom is centered and in some embodiments this text is
surrounded by a common geometric shape outline.” Id. at 3. The Examiner
finds, however, that “Wikimedia Commons Oracle Corporation [(i.e., the
Oracle logo)] logo teaches the use of the trademark shown in the claimed
design” and “trademark 3192864 [(i.e., Oracle Trademark 3192864)] teaches
the Oracle trademark within a common geometric shape outline.” Id. at 4.
The Examiner concludes that it would have been obvious to modify Almog’s
design “by replacing the text with the Oracle trademark and outlining it with
a common geometric shape as taught by the Oracle Corporation Logo and
the Oracle Trademark.” Id. The Examiner further concludes that “[t]he
difference of shifting to the right and centering a single word of text is not
significant enough to warrant a patent for the overall appearance of the
claimed design over the prior art.” Id. at 5 (citing In re Lapworth, 451 F.2d
1094 (CCPA 1971); In re Lamb, 286 F.2d 610 (CCPA 1961)). According to
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the Examiner, “modification of the primary reference in light of the
secondary reference is proper because the applied references are so related
that the appearance of features shown in one would suggest the application
of those features to the others.” Id.
Appellants argue that Almog “illustrates the logo at the top of the
sliding screen as opposed to at the bottom of the springboard screen, as
shown in Appellant[s’] claimed design.” Appeal Br. 5 (emphasis omitted).
The “sliding” window/screen and “springboard” page/screen are identified
below in Appellants’ annotated version of their Figure 2.

Id. at 4.
Appellants further argue that Almog’s Facebook logo is provided at a
top portion of the sliding window, rather than at a bottom portion of the
springboard page as claimed. Id. at 5. Appellants continue that “even if
Almog was modified to replace its ‘Facebook’ logo with the Oracle Logo
and Oracle Trademark 3192864, . . . the combination will result in the
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[Oracle] logo [being] displayed at the top of the sliding screen as opposed to
at the bottom of the springboard screen, as claimed.” Id. (emphasis
omitted). Appellants contend that “the positioning of the logo (both in terms
of whether it is displayed on top or at the bottom of the display, and whether
it is displayed on the springboard or sliding screen) is essential as it affects
the general design of the user interface.” Id.
The Examiner responds that the claimed design shows a single word
of text at the bottom of Figure 2, and “Almog also shows a single word of
text at the bottom of the second view” as shown above. Ans. 7. According
to the Examiner, Almog has design characteristics that are “basically the
same as the claimed design,” because Almog’s single word of text is
“comparable with the logo in the claimed design since the logo is comprised
of a single word of text in a similar position.” Id. at 8 (citing In re Rosen,
673 F.2d 388, 390 (CCPA 1982)).
According to the Examiner, the designation of sliding and springboard
screens, and their functioning, “is not supported in the original disclosure,
which consists of a very broad claim with two views showing a start point
and end point,” and “nothing in between these two views is claimed,” such
that “there is no evidence from the claim that the second image could not be
reached in any number of ways including by scrolling down.” Ans. 8. The
Examiner contends that, “[i]n examining changeable computer-generated
icons, ‘the images are understood as viewed sequentially, no ornamental
aspects are attributed to the process or period in which one image changes
into another.’” Id. at 9–10 (citing MPEP § 1504.01(a), subsection IV). “[I]t
is the opinion of the [E]xaminer that the two designs present a patentably
indistinct visual appearance from the claim,” and “[t]he difference of
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shifting the interface to the right and centering a single word of text is not
significant enough to warrant a patent for the overall appearance of the
claimed design over the prior art.” Id. at 10.
Appellants have the better argument. A design must be compared
with something in existence, i.e., a prior art reference having design
characteristics that are basically the same as the claimed design. See Rosen,
673 F.2d at 391. In considering whether the Examiner has established prima
facie obviousness, we first consider whether Almog is a proper Rosen
reference, i.e., whether it has design characteristics that are basically the
same as the claimed design. Relevant to this inquiry, Figure 4 of the
claimed design is reproduced below on the left, with a corresponding
Examiner-provided screen shot of Almog on the right.

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Appellants’ design shown in Figure 4 has four basic claimed elements
(1) an outer rectangular border, (2) a vertical line extending along the right
side of the rectangular border, along substantially the entire vertical distance
of the rectangular border, (3) three horizontally-extending rectangles at a top
right corner of the rectangular border, between the border wall and the
vertical line, and (4) lettering comprising the Oracle trademark at a bottom
of the rectangular border, substantially centered between a left wall of the
rectangular border and the vertical line. The above screen shot of Almog
includes each of the first three basic claimed elements enumerated above,
but not the fourth, which is consistent with the Examiner’s findings (Final
Act. 2–3). While the Almog screen shot includes some text, none of
Almog’s text has a similar position, font, size, or overall appearance as the
claimed design. We, therefore, determine that Almog’s text does not
establish the same overall visual appearance of its screen shot and Figure 4
of the claimed design. We disagree with the Examiner’s assertion that “[t]he
difference of shifting the interface to the right and centering a single word of
text is not significant enough to warrant a patent for the overall appearance
of the claimed design over the prior art” (Ans. 10). The position, font, size,
and overall appearance of the Oracle logo, and its effect on the overall
appearance of the claimed design are significant, particularly given Almog’s
largest font appearing at a top of its screen. We are not persuaded that the
Examiner has established that Almog is a proper Rosen reference. Lacking a
proper Rosen reference, prima facie obviousness has not been established.
For this reason, we do not sustain the pending obviousness rejection.

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DECISION
We REVERSE the rejection of the claim under 35 U.S.C. § 103.

REVERSED