Paul W. Adam

Patent Trials and Appeals BoardMar 20, 2020

29525529 - (D) (P.T.A.B. Mar. 20, 2020)

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. 29/525,529 04/30/2015 Paul W. Adam 24069-080 6719 89205 7590 03/20/2020 David H. Chervitz 458 Whitestone Farm Drive Chesterfield, MO 63017 EXAMINER DOAN, ANHDAO ART UNIT PAPER NUMBER 2914 MAIL DATE DELIVERY MODE 03/20/2020 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 ____________ Ex parte PAUL W. ADAM ____________ Appeal 2019-002406 Application 29/525,529 Technology Center 2900 ____________ Before JOHN C. KERINS, GRACE KARAFFA OBERMANN, and JILL D. HILL, 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 to reject the sole claim in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies himself, Paul W. Adam, as the real party in interest. Appeal Br. 3. Appeal 2019-002406 Application 29/525,529 2 INVENTION Appellant’s claimed invention is to an ornamental design for a landscape edging system. Spec. 3. Figures 1, 8, 15, and 22 of Appellant’s drawings, as filed on January 13, 2017, are reproduced below: Figure 1 at the top left above is a perspective view of a first modulary block type that is part of the system, Figure 8 at the top right is a perspective view of a second modular block type that is part of the system, Figure 15 at the Appeal 2019-002406 Application 29/525,529 3 bottom left above is a perspective view of a third modular block type that is part of the system, and Figure 22 at the bottom right above is a perspective view of a block of the second modular block type and of a partial block of the first modular block type, with the two blocks set in a pattern. REJECTIONS2 The Examiner rejects the sole claim of the application: (i) under 35 U.S.C. § 112(a) and (b) as failing to comply with the enablement requirement and as being indefinite; and (ii) under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. ANALYSIS Section 112(a)/(b)--Enablement and Indefiniteness Two different bases for rejection under these statutory sections are presented in the Final Action. The first involves identification of numerous drawing inconsistencies deemed to be “so great that the overall appearance of the design in unclear and, as such, the scope cannot be determined.” Final Act. 5. The second involves the fact that the claimed invention is recited as a “landscape edging system,” and that there is no single view presented that depicts all three modular blocks as a set or system, and no indication as to 2 An issue as to whether Appellant may properly claim priority to U.S. application Serial Number 13/136,275, filed July 27, 2011 is joined between Appellant and the Examiner. See, e.g., Final Act. 2–4; Appeal Br. 4–5. Because there is no rejection involving prior art on appeal, we need not, and do not, reach this specific issue. Appeal 2019-002406 Application 29/525,529 4 how the three types of modular blocks of the system relate to each other. Final Act. 9–10. Drawing Inconsistencies The Examiner identifies a number of drawing inconsistencies involving where various surfaces among the drawings of the individual types of modular blocks are postioned relative to other surfaces or components, and that certain surfaces in some drawings indicate beveled surfaces, with the same surfaces in other drawings indicating rounded surfaces. Final Act. 5–8; Ans. 3–7. The Examiner notes that, although an attempt was made to identify all inconsistencies (Ans. 9), “[o]ther problems may be present which the examiner has not noted but which the applicant must resolve. The onus is on the applicant to set forth a clear and consistent disclosure.” Final Act. 8. The Examiner further determines that the drawing inconsistencies are such that the design is not disclosed with sufficient exactness such that only one clear interpretation of the design can be ascertained, and that one skilled in the art cannot, therefore, make and use the design without resort to conjecture. Ans. 9–10. Appellant mainly argues that the Examiner “has not pointed out how the inconsistencies are so great that the overall appearance of the design is unclear.” Appeal Br. 6. As to the Examiner’s position that portions of Figure 6 are inconsistent with similar portions of Figure 7, Appellant asserts that the inconsistency does not exist, in that, “[i]f the bottom of the block has different design elements than the top, Appellant should be allowed to claim such.” Id. The issue, however, is whether those drawing figures, in conjunction with the other views, would alert a person of ordinary skill in the art that the shape changes at some point, or gradually, along a surface, Appeal 2019-002406 Application 29/525,529 5 extending from the top to the bottom, and the collective drawings do not illustrate or define such a shape change. Appellant also misapprehends that the rejection is mainly about the scale of the drawings, in addressing inconsistencies between elements illustrated in Figures 4 and 6. Appeal Br. 7. A first inconsistency noted involves the different positioning of a groove from one of the figures to the other. It is not possible to determine what positioning is intended to be claimed, and this positioning clearly impacts the overall appearance of the modular block. The other inconsistency between Figures 4 and 6, appearing at page 5 of the Final Action, is that the portion of the block having a lower height profile is shown in Figure 4 to be of a width much shorter than the width of the same feature in Figure 6. This is not an issue of scale, in that the portion of the block having the higher height profile is of the same width in both figures. Again, it is not possible to determine, without speculation, which is correct, and thus what the overall appearance will be. Appellant further does not contest the Examiner’s findings with respect to these and other inconsistencies identified by the Examiner. Appeal Br., passim; Reply Br., passim. The rejection of the sole design claim as not being enabled, and as being indefinite, due to the numerous drawing inconsistencies, is sustained. Lack of Single View of System We do not sustain the rejection on this basis. Although the Examiner is correct that there is no view of all three types of modular blocks together as a set or system, Figure 22 illustrates what is readily apparent from the various views of the individual blocks: that they are fitted together in a tongue-and-groove manner so as to abut one another. That there are three Appeal 2019-002406 Application 29/525,529 6 different shapes of modular blocks, one that is linear, and two that are differently curved, simply means that, in a given finished form, the “system” may form borders that have different overall contours, yet the blocks making up the system are limited to the three types depicted. Section 112(a)--Written Description The Examiner finds that “[a]ll the corners of the blocks in the original drawings have rounded edges,” whereas the drawings filed as replacement drawings on January 13, 2017, illustrate at least some of those rounded edges instead as beveled surfaces. Final Act. 8. Appellant argues that U.S. Application Serial Number 13/136,275, from which this application claims priority, discloses that the edges of the modular blocks may be beveled, thereby evidencing to persons of ordinary skill in the art that Appellant had possession at that time of the later claimed subject matter, i.e., beveled edges. Appeal Br. 9. Appellant maintains that there was no need to specifically state, at the time the present application was filed, that the present application incorporated by reference the entirety of the priority application, in view of the making of the claim to priority, and the identification of the priority application in the application papers. Appellant misunderstands the application of the written description requirement as it affects the present application. The Examiner correctly compares the drawings as currently pending against the drawings as filed in the present application in order to determine if written descriptive support for the current design was present in the as-filed drawings. It matters not that the putative priority application might have provided written descriptive support for the current design having beveled edges--that design was not Appeal 2019-002406 Application 29/525,529 7 made evident in the drawings as filed in the present application. Appellant has not argued that the appearance of the blocks having rounded corners in any way evidences that Appellant was in possession of blocks having beveled corners. As our reviewing court has explained, a recitation of priority is not part of the “written description of the invention” described in § 112. Instead, a priority claim appears in its own separate section of the specification and provides information distinct from sections describing “the invention.” 37 C.F.R. § 1.77(b). The words of a priority claim are thus separate from the materials necessary to satisfy § 112. Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309 (Fed. Cir. 2108). Had Appellant, in addition to claiming priority back to the filing date of the putative priority application, also included a statement at the time of filing that that application was incorporated by reference in its entirety, any and all disclosure therein would have been regarded as being included in the present application. As it is, only those drawings originally filed, together with the Specification and Claim, are of significance in dermining whether Appellant had possession, as of the filing date of this application, the design of the modular block as now illustrated in the drawings currently pending in the application. The rejection of the claim as failing to meet the written description requirement of 35 U.S.C. § 112(a) is sustained. CONCLUSION In summary: Appeal 2019-002406 Application 29/525,529 8 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112(a),(b) Nonenablement, Indefiniteness 1 1 112(a) Written Description 1 Overall Outcome 1 Appeal 2019-002406 Application 29/525,529 9 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED