FLOS S.P.A.

Patent Trials and Appeals Board

Oct 21, 2020

2019002407 (P.T.A.B. Oct. 21, 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.
35/500,409 10/01/2015 Anastassiades Michael 4670
24504 7590 10/21/2020
THOMAS | HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
SHIELDS, RHEA M
ART UNIT PAPER NUMBER
2915
NOTIFICATION DATE DELIVERY MODE
10/21/2020 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):
docketing@thomashorstemeyer.com
ozzie.liggins@tkhr.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANASTASSIADES MICHAEL
____________________

Appeal 2019–002407
Application 35/500,409
Technology Center 2900
____________________

Before KEN B. BARRETT, JILL D. HILL, and CYNTHIA L. MURPHY,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject the single design claim pending in this
appeal.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies FLOS S.p.A. as the real party in interest.
Appeal Br. 3.
Appeal 2019–002407
Application 35/500,409

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BACKGROUND
The claim on appeal is “[t]he ornamental design for a table lamp as
shown and described.” Spec. 2.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sabernig US D625,879 S Oct. 19, 2010
Lee US D670,424 S Nov. 6, 2012

REJECTION
The claim stands rejected under 35 U.S.C. § 103(a) as obvious over
Sabernig and Lee.
OPINION
The Examiner provides the following annotated illustration that
affords a visual comparison of figures from the claimed design (right),
Sabernig (top left), and Lee (bottom left).
Appeal 2019–002407
Application 35/500,409

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Final Act. 3.
The Examiner construes the claimed design as “a light sphere or ball
placed off center on top of a short rectangle platform.” Final Act. 3. The
Examiner then finds that “Sabernig Fig. 1 shows a slightly elongated ball
placed off center on top of a slightly taller square platform; having a design
characteristic which is basically the same as that of the claimed design.” Id.
According to the Examiner, “[t]he claimed design differs from Fig. 1 of
Sabernig in that the claimed design discloses a sphere placed off center on
top of a shorter rectangle platform.” Id. The Examiner finds, however, that
Lee discloses a spherical light, and concludes that it would have been
obvious to replace Sabernig’s elongated ball with Lee’s spherical ball
“because the mere difference in geometric shape cannot add novelty to a
new design nor detract from the teaching of the prior art.” Id. at 3–4
Appeal 2019–002407
Application 35/500,409

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(citation omitted). The Examiner further concludes that it would have been
obvious to modify the combined teachings of Sabernig and Lee to have “a
shorter rectangle platform for the off center placed sphere because the mere
difference in dimension cannot add novelty to a new design nor detract from
the teaching of the prior art.” Id. at 4 (citation omitted). The Examiner
continues that “[d]e minimis differences are not a matter of skill. They are
insignificant in determining patentable distinction.” Id.
Appellant construes the claimed design as “a table lamp having a
vertically disposed elongated, rectangular, support element on which a
spherical light element is off-centered within the four edges of the support
element, the light element being off-centered on a vertical side of the support
element.” Appeal Br. 14. Appellant argues, inter alia, that Sabernig’s light
fixture includes “a distinctive centered squat, elliptical light fixture
supported on top of a . . . square base,” such that Sabernig’s light element is
not “positioned on an edge of the base as in the present claim.” Id. Thus,
Appellant argues, Sabernig’s centered ball cannot be considered “off center”
as found by the Examiner. Id.; Final Act. 32. Further, according to
Appellant, “the lamp of Lee is also centered on its base.” Id. at 15.
Appellant then argues that the Examiner’s reasoning, that a difference
in dimension or geometric shape is obvious (Final Act. 3–4), “fails to
provide any reasoning or rationale as to why one skilled in the art would
change the design as shown in Sabernig (or Lee) of a centered base to an off-
center base.” Id. at 16. According to Appellant, the Examiner fails to
explain why a designer would modify Sabernig, Lee, or the combination

2 The Examiner appears to agree that Sabernig’s ball is centered on its base.
Ans. 5 (“centered (revised) on a taller square platform”).
Appeal 2019–002407
Application 35/500,409

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thereof to make the ball off center on the base, “which is related to the
orientation of the light in relation to the base, not a mere difference in
dimension.” Id.
Appellant has the better argument. The ball of Sabernig is centered
on its square base. Likewise, the ball of Lee is centered on its base. It
would seem to us, then, that the result of combining Sabernig and Lee would
be a ball centered on Sabernig’s square base. Even if it were true, in this
case, that a mere difference in geometric shape, such as the base being
square versus rectangular, cannot add novelty to the design, the difference
between the Examiner’s proposed combination and the claimed design is not
limited to simply a square versus a rectangle. Even if it was obvious to
replace Sabernig’s square base with a rectangular base in the proposed
combination, the result would intuitively be a spherical ball centered on the
rectangular base. The Examiner has not provide a reasoning, supported by a
rational basis, why a designer would place the spherical ball off center on
the rectangular base as in the claimed design. For this reason, we do not
sustain the rejection.

Appeal 2019–002407
Application 35/500,409

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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103(a) Sabernig and Lee 1

REVERSED