Ex Parte Mitten et alDownload PDFBoard of Patent Appeals and InterferencesFeb 26, 200929196598 (B.P.A.I. Feb. 26, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT T. MITTEN and SCOTT A. FATH ____________ Appeal 2008-5613 Application 29/196,598 Technology Center 2900 ____________ Decided:1 February 27, 2009 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-5613 Application 29/196,598 2 STATEMENT OF THE CASE Robert T. Mitten, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of the sole claim in this design application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE.2 THE INVENTION According to the Appellants, the invention is directed to an ornamental design for a cigarette mini-pack with a hinged lid. (Br. 3.) According to the Appellants, “[t]he pack has a generally square cross section and is constructed to hold a foil wrapped bundle of ten cigarettes. Outwardly extending lid retaining projections are appropriately positioned to retain the hinge lid in its closed position by engaging the inner side walls of the lid.” (Br. 3.) The sole claim on appeal reads as follows: An ornamental design for a CIGARETTE MINI- PACK WITH HINGED LID as shown and described. 2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,” filed Sep. 13, 2007) and the Examiner’s Answer (“Answer,” mailed Dec. 10, 2007). Appeal 2008-5613 Application 29/196,598 3 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Gillam Davies Wu et al. US 2,998,910 US 4,216,898 US 5,314,062 Sep. 5, 1961 Aug. 12, 1980 May 24, 1994 The following rejection is before us for review: 1. The claim is rejected under 35 U.S.C. §103(a) as being unpatentable over Gillam, Davies, and Wu. ISSUE The Appellants’ major contention is that the Examiner used improper hindsight to include an interior foil, as shown in Wu, and two outwardly extending tabs, as shown in Davies, in the container of Gillam. The Appellants also note differences in the designs of the claimed design and the Gillam container. (Br. 3-4.) The Examiner contends that “the design characteristics of Gillam are basically the same as the claimed design” (Answer 5) and that “Davies and Wu … are so related that the appearance of features shown in one would suggest the application of those features to the other” (Br. 5). The issue before us is whether a designer of ordinary skill in the art who designs mini-packs at the time of the invention would have arrived at the claimed design given the Gillam container and in view of the Wu interior foil and the Davies outwardly extending tabs. Appeal 2008-5613 Application 29/196,598 4 PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). Section 103 applies to design patents in much the same manner as it applies to utility patents. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441 (Fed. Cir. 1984) (“35 U.S.C. § 103 (and all the case law interpreting that statute) applies with equal force to a determination of the obviousness of either a design or a utility patent.”). See also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). In design cases, the fictitious person identified in § 103 as “one of ordinary skill in the art” is a designer of ordinary capability who designs articles of the type presented in the application. In re Nalbandian, 661 F.2d 1214, 1216 (CCPA 1981). Appeal 2008-5613 Application 29/196,598 5 ANALYSIS The claimed design is directed to a cigarette mini-pack. As shown in Figure 1, the mini-pack is a container having a generally square cross section with a hinged lid. In its open position, the hinged lid reveals walls of the container, the front wall of which includes outwardly projecting tabs. A portion of the front wall is also cut-out. Also revealed is an interior foil covering the contents of the container. The Examiner’s position is that Gillam discloses the basic design claimed but for the tabs and the interior foil. Davies is cited to show the tabs and Wu the interior foil. According to the examiner, it would have been obvious to modify the Gillam container with the Davies tabs and the Wu interior foil and thereby arrive at the overall appearance of the claimed design. (Answer 3-4.) The Appellants argue that the Examiner is using hindsight. (Br. 3-4.) The Appellants agree that Davies shows the tabs and Wu shows the interior foil but argues there is no suggestion to add the Davies tabs and Wu interior foil to the Gillam container. (Br. 3-4.) The issue is whether a designer of ordinary capability who designs mini-packs would have been led to the claimed design given Gillam, Davies, and Wu. However, before we can reach that issue, we must determine whether Gillam is a “Rosen” reference, i.e., “a reference, a something in existence, the design characteristics of which are basically the same as the claimed design ....” In re Rosen, 673 F.2d 388, 391 (CCPA 1982). The Appellants contend that Gillam has a “tucked-in structure at its lid top” which the Appellants argue the claimed mini-pack does not have. Appeal 2008-5613 Application 29/196,598 6 (Br. 4.) Fig. 4 of Gillam shows flaps (element 38) tucked straight down in the ends of the container. Once tucked in and the box is filled, the container can be opened via a hinged lid as shown in Fig. 5. But the ends, having flaps, remain tucked in. We find the Appellants’ characterization of Gillam to be correct. The Examiner does not dispute it. The Appellants contend further that “the mini-pack of the present invention has a single panel without a tucked-in portion which presents a more elegant apparance.” (Br. 4.) We agree. This is best shown in Figs. 11 and 12 where the lid is depicted with an end that is a straight panel across the top. The Examiner responded by arguing that “applicant’s lid has a folded over configuration, see Fig. 3 in the instant application, which is actually very similar in appearance to Fig. 5 of Gillam.” (Answer 6.) We have carefully reviewed Fig. 3. We do not see depicted there a “folded over configuration.” Because Gillam shows a folded-over configuration in the top lid of the container while the claimed design shows a straight panel across the top, we do not find that Gillam shows a mini-pack with design characteristics of which are basically the same as the claimed design. The Examiner’s characterization of the claimed design is not accurate. Furthermore, notwithstanding the inaccurate characterization of the claimed design, the Examiner has not addressed the obviousness of modifying Gillam’s tucked- in configuration so as to arrive at the straight panel configuration of the claimed design. Accordingly, a prima facie case of obviousness has not been established. Appeal 2008-5613 Application 29/196,598 7 CONCLUSIONS OF LAW We conclude that the Appellants have shown that the Examiner erred in rejecting the claim under §103 as obvious over Gillam, Davies, and Wu. DECISION The decision of the Examiner to reject the claim is reversed. REVERSED LV: CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 Copy with citationCopy as parenthetical citation