Ex Parte Hart et al

Board of Patent Appeals and Interferences

Apr 6, 2010

29196576 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALLISON M. HART, REBECKA D. KEELAN NELLI,
and R. BRUCE MONTGOMERY, JR.
____________________

Appeal 2010-000272
Application 29/196,576
Technology Center 2900
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Decided: April 7, 2010
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
decision rejecting the sole claim of the underlying application under 35 2
U.S.C. § 103(a) as being unpatentable over Pentz (US D467,247 S, issued 3
Dec. 17, 2002) and Creighton (US D462,714 S, issued Sep. 10, 2002). We4
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have jurisdiction under 35 U.S.C. § 6(b). 1
We REVERSE. 2
The Appellants claim an ornamental design for a data card, as shown 3
and described in the Appellants’ application. Figures 1-5 are reproduced 4
below: 5
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Figures 1-5 depict perspective, top, front, side and rear views, respectively, 7
of a data card showing the Appellants’ design. 8
The first issue in this appeal is one of claim construction. The 9
Appellants contend that “the claimed design defines a clear or transparent 10
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data card having a textured strip disposed on only one side of the claimed 1
card and that is seen from both sides of the card.” (Reply Br. 4). The 2
Examiner instead interprets the claim as requiring a data card with a 3
polished or glossy surface. (Ans. 6). 4
“Design patents are typically claimed as shown in drawings, and 5
claim construction must be adapted to a pictorial setting.” Crocs, Inc. v. 6
Int’l Trade Comm’n, Appeal 2008-1596 slip op. at 10, http://www.cafc 7
.uscourts.gov/opinions/08-1596.pdf (Fed. Cir. 2010). Here, the drawings 8
which define the claim on appeal depict a transparent data card having an 9
opaque strip disposed on only one side of the card. The perspective view of 10
Figure 1 and the front view of Figure 3 include oblique shade lines. Figures 11
1 and 3 also depict the opaque strip with relatively heavy stippling. The 12
oblique shade lines in the perspective and front view are interrupted and do 13
not extend over the strip as depicted in Figures 1 and 3. The rear view of 14
Figure 5 also includes oblique shade lines. In contrast to the perspective 15
view of Figure 1 and the front view of Figure 3, however, the strip as 16
depicted in the rear view of Figure 5 is relatively lightly stippled and the 17
shade lines in Figure 5 extend over the strip. This contrast implies that the 18
viewer sees a single strip on the front of the data card, directly in Figures 1 19
and 3, and indirectly through the body of the card in Figure 5. 20
The Appellants’ use of these oblique shade lines in Figures 1 and 3 21
corresponds to the requirement in the MANUAL OF PATENT EXAMINING 22
PROCEDURE (rev. 7, Jul. 2008) (“MPEP”) that oblique line shading be used 23
to show transparent surfaces. See MPEP § 1503.02 II “SURFACE 24
SHADING” at 1500-8. After viewing the Appellants’ drawing figures as a 25
whole, we agree with the Appellants’ contention that the claim on appeal is 26
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limited to “a clear or transparent data card and a textured strip on one side of 1
the card that is seen from both sides of the card.” (See App. Br. 9). We 2
agree with the Appellants’ claim interpretation even without a statement to 3
that effect in the Specification. 4
The Appellants’ failure to include hidden contour lines in the 5
perspective view of Figure 1 does not indicate an intent to claim an entirely 6
opaque design with a polished or glossy surface. As the Appellants point 7
out (Reply Br. 4), the dimensions of the top and left sides of the claimed 8
design, depicted in Figures 2 and 4, are too narrow to permit a clear showing 9
of the lower and left rear contour lines which might be visible through the 10
lower and left portions of an actual card. 11
The second issue in this appeal concerns whether the claimed design, 12
as correctly interpreted, would have been obvious from the combined 13
teachings of Pentz and Creighton. Both Pentz and Creighton appear to show 14
data cards which are entirely opaque. The opaque strips appearing on the 15
cards of Pentz and Creighton are not visible through either card. Were one 16
to have combined the teachings of Pentz and Creighton in the manner 17
proposed by the Examiner, the result would have been an opaque card 18
having strips on both front and rear sides. (See Ans. 4-5). 19
The visibility of the strip from the rear through the transparent portion 20
of the design is part of the appearance of the design as a whole. A skilled 21
designer would appreciate that the visual impression of a data card having a 22
strip viewed from the rear side of a data card through the transparent part 23
would differ perceptibly and significantly from the visual impression of an 24
entirely opaque data card having a strip positioned on the rear surface of the 25
card. The Examiner in the Answer has provided no reasoning which might 26
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explain why one of ordinary skill in the art might have had reason to 1
combine the teachings of Pentz and Creighton to yield a design in which a 2
strip was visible from the rear through a transparent part of the design. 3
The Examiner has not shown that the subject matter of the claim on 4
appeal would have been obvious. We do not sustain the rejection of the 5
claim under § 103(a) as being unpatentable over Pentz and Creighton. 6
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DECISION 8
We REVERSE the Examiner’s decision rejecting the sole claim on 9
appeal. 10
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REVERSED 12
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