29271282 (B.P.A.I. Sep. 7, 2010)

Ex Parte Hung

Board of Patent Appeals and InterferencesSep 7, 2010

29271282 (B.P.A.I. Sep. 7, 2010)

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. 29/271,282 01/16/2007 Peter M.H. Hung VIN-350 5607 23995 7590 09/08/2010 RABIN & Berdo, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON, DC 20005 EXAMINER ALBERT, ELIZABETH ART UNIT PAPER NUMBER 2913 MAIL DATE DELIVERY MODE 09/08/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PETER M.H. HUNG ____________ Appeal 2010-002291 Application 29/271,282 Technology Center 2900 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and MICHAEL W. O’NEILL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HORNER Opinion Concurring filed by Administrative Patent Judge McCARTHY HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002291 Application 29/271,282 2 STATEMENT OF THE CASE Peter M.H. Hung (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting the sole claim in this application under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellant’s claimed invention is an ornamental design for a marker. Spec. 1. Figure 1, reproduced below, is representative of the subject matter on appeal. Figure 1 is a perspective view of a marker showing Appellant’s claimed ornamental design. Appeal 2010-002291 Application 29/271,282 3 THE EVIDENCE The Examiner relies upon the following evidence: Davidson D295,537 May 3, 1988 Nadel D406,165 Feb. 23, 1999 Hung D482,726 S Nov. 25, 2003 Reichmann D508,262 S Aug. 9, 2005 THE REJECTION Appellant seeks review of the Examiner’s rejection of the claim under 35 U.S.C. § 103 as being unpatentable over Hung, Davidson, Reichmann, and Nadel. ISSUES The issues presented by this appeal are: Is Hung a proper Rosen reference? Would the proposed combination of Hung, Davidson, Reichmann, and Nadel result in the claimed design having a decorative line spaced apart from the joint line between each cap and the marker body, in conjunction with a smooth transition between each cap and the body of the marker? PRINCIPLES OF LAW The central inquiry in analyzing an ornamental design for obviousness is whether the design would have been obvious to “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). That inquiry focuses on a consideration of the overall appearance, the visual effect of the design as a whole. In re Rosen, 673 F.2d 388, 390 (CCPA 1982). Appeal 2010-002291 Application 29/271,282 4 In order for a design to be unpatentable because of obviousness, there must first be a basic design reference in the prior art, “a something in existence, the design characteristics of which are basically the same as the claimed design.” In re Rosen, 673 F.2d at 391; see In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993). In other words, both the Rosen reference and the claimed design must create basically the same visual impression when viewing the design as a whole. See Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). A finding of obviousness cannot be based on selecting features from the prior art and assembling them to form an article similar in appearance to the claimed design. In re Jennings, 182 F.2d 207, 208 (CCPA 1950) (the claimed design must be “compared with something in existence - not with something that might be brought into existence by selecting individual features from prior art and combining them”). ANALYSIS Appellant’s claim is to the ornamental design for a marker. Spec. 1. The visual appearance of the claimed design is that of a three-piece marker containing a marker body having writing points on both ends, a top cap having a clip thereon, and a bottom cap having no clip, where the marker body is considerably longer than the end caps. Spec., fig. 8. On the clip is a circular portion. Id. When the end caps are disposed on the marker body, the junction between the marker body and the end caps is smooth. Spec., fig. 1. Appeal 2010-002291 Application 29/271,282 5 The visual appearance created by Hung is that of a two-piece marker containing a marker body having a single writing point and a top cap. Hung, figs. 1, 2. While Hung discloses the top cap has a clip thereon that is similar in many respects to the design of the claimed top cap (see Hung, fig. 1), the overall visual impression of Hung’s marker differs from the claimed design in many significant respects. For example, Hung’s marker does not disclose any end cap, the marker body of Hung is approximately the same length as the cap, and the marker body of Hung has a writing point on only one end. Hung, figs. 1-6. Further, the junction between Hung’s marker body and end cap is inset so that it does not have a smooth transition. Hung, fig. 2. Due to these differences between Hung’s marker design and the claimed design, Hung does not contain design characteristics which are basically the same as the claimed design. In other words, Hung does not create basically the same visual impression as the claimed design when considering the design as a whole. The Examiner’s rejection appears to have impermissibly selected features from the prior art and assembled them to form an article similar in appearance to the claimed design. Based on our comparison of Hung with the claimed design, we find that Hung is not a proper Rosen reference. Even were one to find Hung to be a proper Rosen reference, the Examiner’s proposed modification of Hung would still not render obvious the claimed design because the design of Hung, as modified, would not render obvious at least one ornamental feature of the claimed design. In particular, the Examiner found that Davidson teaches “making the junctions Appeal 2010-002291 Application 29/271,282 6 between the two end caps and the middle of the barrel smooth instead of inset” as shown in Hung. Ans. 3. The Examiner concluded “it would have been obvious to a designer of ordinary skill in the art at the time the invention was made to modify the marker of Hung by … showing no grooves at the junctions of the caps and marking body as taught by the marking instrument of Davidson….” Ans. 4. In addition to showing a smooth junction between the end caps and the marker body; however, the claimed design also shows two lines at each junction: 1) a joint line where the cap and marker body actually abut, and 2) a decorative line that encircles the marker and is parallel to and offset slightly from the joint line. Br. 12. Even though Davidson shows a smooth junction, it shows only a single joint line at the junction of the end caps and the marker body. Davidson, fig. 3. So, if one were to modify Hung’s marker to have Davidson’s smooth junction, as proposed by the Examiner, the resulting design would lack the second decorative line offset from the joint line of the claimed design. For these reasons, we cannot sustain the Examiner’s rejection of the claim under § 103 as being unpatentable over Hung, Davidson, Reichmann, and Nadel. CONCLUSIONS Hung is not a proper Rosen reference. The proposed combination of Hung, Davidson, Reichmann, and Nadel would not result in the claimed design having a decorative line spaced apart Appeal 2010-002291 Application 29/271,282 7 from the joint line between each cap and the marker body, in conjunction with a smooth transition between each cap and the body of the marker. DECISION The decision of the Examiner to reject the claim is reversed. REVERSED Nlk RABIN & BERDO, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON DC 20005 Appeal 2010-002291 Application 29/271,282 1 McCARTHY, Administrative Patent Judge, concurring. I agree with my colleagues’ finding that Hung is not a Rosen reference for the reasons discussed in the majority opinion. On this basis alone, I concur in the result.