Bredemeier, Lori A. et al.

Patent Trials and Appeals Board

Jul 16, 2020

2019004375 (P.T.A.B. Jul. 16, 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.
29/570,334 07/07/2016 Lori A. Bredemeier WIP 08-09-15.3DA 9570
116546 7590 07/16/2020
Benjamin F. Williams
9200 W Cross Dr
Ste 202
Littleton, CO 80123
EXAMINER
HAMILTON, KENDRA L
ART UNIT PAPER NUMBER
2915
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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):
ben@wip.net
info@wip.net
orionsg8@mac.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LORI A. BREDEMEIER and MICHAEL BREDEMEIER
____________

Appeal 2019-004375
Application 29/570,334
Technology Center 2900
____________

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

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals the Examiner’s rejection of the single design
claim pending in this application (claim 1) under 35 U.S.C. § 112(a). We
REVERSE.2

1 The Appellant is the “applicant” (e.g., the “inventor” or the “joint
inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest is the
inventor.” (Appeal Br. 2.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a), and 171(a).
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THE CLAIMED DESIGN
The Appellant claims an ornamental design for a “Teething Toy” as
“described” and “shown.” (Appeal Br., Claims App.) In the original
application, the Appellant’s teething toy is described as “a Waffle Shaped
Teething Toy” and is shown in Figures 1–5. (See Specification filed July 7,
2016.)
In the presently pending application, the Appellant’s teething toy is
still described as “a Waffle Shaped Teething Toy” and is still shown in
original Figures 1–5. (See Specification filed July 3, 2017.) However, the
presently pending application also includes a Figure 6, which was introduced
by amendment. (See id.) As discussed below, the sole issue in this appeal is
whether Figure 6 contains “new matter.” (Final Act. 2.)
Original Drawings—Figures 1–5
Figure 1, below, is a top perspective view of the Appellant’s teething
toy. Figure 1 shows that the teething toy has a top portion and a bottom
portion; that the top portion has a gridlike pattern of indentations; and that
the top indentations have a certain three-dimensional contour (i.e., depth).
Figure 1
top perspective view

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Figures 2 and 3, below, are front and side views of the Appellant’s
teething toy. They show that the top and bottom portions of the teething toy
have symmetrical profiles, and, more particularly, equal thicknesses.
Figure 2
front view
Figure 3
side view

Figures 4 and 5, below, are top and bottom views of the Appellant’s
teething toy. Figure 4 shows the gridlike pattern of indentations on the top
portion of the teething toy; and Figure 5 shows a matching gridlike pattern
of indentations on the bottom portion of the teething toy.
Figure 4
top view
Figure 5
bottom view

As indicated above, Figure 1 shows that the top indentations have a certain
three-dimensional contour (i.e., depth). In Figure 4, this three-dimensional
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contour of the top indentations is represented by solid lines and shading. In
Figure 5, the three dimensional contour of the bottom indentations is
represented by similar solid lines and essentially identical shading.
Introduced-by-Amendment Drawing—Figure 6
Figure 6, below, is a bottom perspective view of the Appellant’s
teething toy, and it perspectively shows the three-dimensional contour (i.e.,
depth) of the bottom indentations.
Figure 6
bottom perspective view

More particularly, Figure 6 expressly depicts that the bottom indentations
have the same three-dimensional contour (i.e., depth) as the top indentations
expressly depicted in Figure 1.
REJECTION
The Examiner rejects claim 1 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement because Figure 6 allegedly
contains “new matter.” (Final Act. 2.) According to the Examiner, “[t]he
measurable depth and physical contour” of the bottom indentations of the
Appellant’s teething toy are “not disclosed in the original drawings.” (Id.)

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ANALYSIS
The Appellant argues that written-description support for Figure 6 is
conveyed by a combination of the original claim language and the original
drawings. (See Appeal Br. 8–12.) We are persuaded by the Appellant’s
position, and we do not sustain the Examiner’s rejection.
“The test for sufficiency of the written description, which is the same
for either a design or a utility patent, has been expressed as ‘whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” (In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013).)
In the context of a design claim, the original drawings are often
exclusively responsible for conveying possession of the claimed subject
matter. (See In re Daniels 144 F.3d 1452, 1456 (Fed. Cir. 1998).) But
37 C.F.R. § 1.153(a) tells us that a claimed design can be defined “by a
combination of the figures and the language.” (Curver Luxembourg, SARL
v. Home Expressions Inc., 938 F.3d 1334, 1340–41 (Fed. Cir. 2019).) Put
another way, “this regulation permits claim language, not just illustration
alone, to identity the [claimed] article.” (Id.)
The Appellant’s teething toy is described, in the original application,
as “a Waffle Shaped Teething Toy.” (See Specification filed July 7, 2016.)
A dictionary definition of a “waffle” is “a batter cake with a pattern of deep
indentations on each side, formed by the gridlike design on each of the two
hinged parts of the metal appliance (waffle iron) in which the cake is
baked.” (https://www.dictionary.com/browse/waffle (last visited July 1,
2020).) In other words, a traditional waffle is regarded as having a
symmetrical shape with matching gridlike indentation patterns on its top and
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bottom portions (i.e., the waffle’s top and bottom indentations have the same
three-dimensional contours).
We share the Appellant’s sentiment that a designer of ordinary skill in
the teething-toy art (who has enjoyed a waffle for breakfast) would be
familiar with this traditional waffle shape. (See Appeal Br. 13.) And this
designer would understand that, when a teething toy is described as “Waffle
Shaped,” it is being described as having a traditional waffle shape, which
carries the connotation that it has top and bottom indentations with the same
three-dimensional contours.3
The Examiner is troubled by the notion of basing written-description
support for Figure 6 “entirely on the expected appearance of a waffle.”
(Ans. 5.) The Examiner explains that “teethers (even those simulative of
other articles) are notoriously well known to have a different configuration
on one surface than on the opposite surface.” (Id.) As such, the Examiner
questions whether it is reasonable to “expect[] a teether to maintain
characteristics and design details of a literal waffle.” (Id.)
Here, the Examiner’s concerns are abated because our decision is not
based entirely on the Appellant’s textual description of its teething toy as
“Waffle Shaped.” Rather, our decision is based upon what is cumulatively

3 The Examiner draws our attention to asymmetrical waffle irons which
would not produce a batter cake having top and bottom indentations with the
same three-dimensional contours. (See Ans. 5.) Insofar as the Examiner is
saying that the mere existence of these asymmetrical waffle irons would
undermine tradition and sway a designer’s understanding of what is meant
by “Waffle Shaped,” we disagree. Even a teething-toy designer aware of
asymmetrical waffle irons would nonetheless immediately envision a
symmetrical waffle shape when reading the Appellant’s description of its
teething toy as “Waffle Shaped.”
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conveyed by both the original claim language and the original drawings.
Even if it is commonplace for a teething toy to have different surface
configurations, the original drawings convey that the Appellant’s teething
toy has a traditional waffle shape (i.e., its top and bottom indentations have
the same three-dimensional contours).
Specifically, Figure 1 shows that the top portion of the teething toy
has a gridlike indentation pattern which mimics that formed by the top part
of a waffle iron. Figures 2 and 3 show that the teething toy has a
symmetrical profile where the top portion and the bottom portion have equal
thicknesses, which is characteristic of a traditional waffle shape. Figures 4
and 5 show that the teething toy has matching gridlike indentation patterns
on its top and bottom portions, which is the hallmark of a traditional waffle
shape. A designer of ordinary skill in the teething-toy art would know from
these drawings that the top and bottom indentations, which indent into
equal-thickness top and bottom portions, have the same three-dimensional
contours.
As correctly pointed out by the Examiner, Figures 4 and 5 reveal that
the top and bottom portions of the Appellant’s teething toy “are not exactly
the same.” (Ans. 5.) Indeed, Figure 4 shows what the Appellant calls a
“blob of butter” (Appeal Br. 11) straddling two top indentations; while
Figure 5 shows an interrupted wall between two aligned bottom
indentations. However, we agree with the Appellant that these features do
not hinder the original drawings’ conveyance that the teething toy has a
traditional waffle shape. (See id.) A designer would not consider a “blob of
butter” on the topside, or lack thereof on the bottomside, to be inconsistent
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with a traditional waffle shape in which the top and bottom indentations
have the same three-dimensional contours.
Moreover, to the extent that there would be hesitancy as to whether
the top and bottom indentations have the same three-dimensional contours,
the similar solid lines and essentially identical shading in Figures 4 and 5
eliminate any uncertainty. We agree with the Appellant that a designer of
ordinary skill in the teething-toy art would give due consideration to these
alike topographies in the original drawings. (See Appeal Br. 9.) And we
disagree with the Examiner’s implication that the similar solid lines and
essentially identical shading in Figure 4 and 5 are of no consequence when it
comes to conveying the sameness of the three-dimensional contours of the
top and bottom indentations. (Ans. 4)
Accordingly, we agree with the Appellant that the original claim
language and the original drawings cumulatively convey to a designer of
ordinary skill in the teething-toy art that the three-dimensional contour
depicted in Figure 1 applies to both the top and the bottom indentations.
(See e.g. Appeal Br. 8.) We also agree with the Appellant that Figure 6
merely “duplicate[s]” this already-conveyed contour of the bottom
indentations. (Id. at 9.) Thus, we agree with the Appellant that Figure 6
does not contain new matter, whereby its introduction by amendment does
not contravene the written-description requirement.
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CONCLUSION
Claim
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1 112(a) Written
Description
1

REVERSED