Ex Parte Kellermann et al

Board of Patent Appeals and Interferences

Oct 22, 2009

29302817 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT FINCH KELLERMAN and
BRI MALASPINO
____________

Appeal 2009-009310
Application 29/302,817
Technology Center 2900
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Decided: September 22, 2009

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Before MURRIEL E. CRAWFORD, JOHN C. KERINS, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009310
Application 29/302,817

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of the sole claim pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to an ornamental design
for an oval server. Figure 1, reproduced below, is representative of the
subject matter of appeal.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Henry US D459,635 S Jul. 2, 2002
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Thonis US D483,616 S Dec. 16, 2003
Watson US D483,617 S Dec. 16, 2003

The sole claim pending is rejected under 35 U.S.C. § 103(a) as
unpatentable over Henry, Thonis, and Watson.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejection.
This issue turns on whether it would have been obvious to modify the
teachings of Henry, Thonis, and Watson to obtain the ornamental design of
the claimed invention.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. The Appellant’s design has a handle with an “almond shaped”
opening therein (Fig. 2).
FF2. The Appellant’s design has a handle which slopes upwardly and then
flattens out while remaining in a fairly constant width (Fig. 3).
FF3. The Appellant’s design has a bottom with an outer ring portion and a
flat interior portion (Fig. 4).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF4. Watson discloses an oval dish having a handle with an oval shaped
opening that is slightly flattened at the two ends as shown in the top view
(Fig. 4).
FF5. Watson shows a handle which slopes upward for substantially all its
length in a side view (Fig. 2).
FF6. Watson shows a bottom portion which has a raised inner ring portion
in the bottom view (Fig. 5).
FF7. Henry discloses an oval dish with a handle portion which slopes
upwardly then turns back down, not remaining flat (Fig. 2).
FF8. Henry discloses an oval dish which has a bottom portion which is flat
in the center portion (Fig. 5).
FF9. Thonis discloses an oblong dish (Fig. 1).

PRINCIPLES OF LAW
Principles of Law Relating to Obviousness
“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, 406
(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).
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“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.’)” In re Haruna, 249 F.3d 1327, 1335
(Fed. Cir. 2001).
“[W]hen a § 103 rejection is based upon a combination of references,
there must be 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 (Cust. & Pat. App. 1982). The designs of other
references may properly be relied upon for modification of this basic design
when the references are ‘so related that the appearance of certain ornamental
features in one would suggest the application of those features to the other.’
In re Glavas, 43 CCPA 797, 801, 230 F.2d 447, 450 (1956).” In re Carter,
673 F.2d 1378, 1380 (CCPA 1982).

ANALYSIS
The Appellants argue that the rejection of the claim is improper for
several reasons including 1) the Appellants’ design has handles which curve
upwardly and then extend almost parallel to the upper surface of the
sidewalls whereas Watson’s handles simply extend upwardly (Br. 4); 2) that
the Appellants’ design has different shaped handle openings than the
rounded type rectangular shape of Watson’s; and 3) that the Appellants’
design does not have a distinctive oval in the middle of its bottom as shown
in Watson (Br. 6). The Appellants have argued that upon reviewing the
references cited by the Answer, one would have been led in a different path
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than taken by the Appellants’ design and that combining Watson, Henry and
Thonis still omits many of the design elements provided by the Appellants’
design (Reply Br. 2-3).
In contrast, the Examiner has determined that Watson, Henry and
Thonis are properly combined to meet the claim (Ans. 5-9). The Examiner
has determined that the differences in the use of metal design (Ans. 5),
handle differences (Ans. 6-7), side wall differences (Ans. 7), and bottom
differences (Ans. 8) would have been obvious and suggested by the prior art.
The Examiner has presented a well drafted Answer with Figures used to
explain the rejection of record.
After reviewing the record, however, we agree with the Appellants.
We note first as illustrated in the Examiner’s Answer at page 6, and copied
below, differences exist in the shape of the oval dish’s handle opening.

First, we find that the handle of Appellants design includes an “almond
shaped” opening (FF1) which differs from the “oval shaped opening” that is
slightly flattened at the two ends as shown by Watson (FF4). The Examiner
has not disagreed with this contention but instead has determined this change
to be minor and not sufficient to patentably characterize the claimed
invention and instead considers this only an obvious design expedient (Ans.
6-7).
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Secondly, we note, as illustrated in the Examiner’s Answer at page 7,
and copied below, that the side view of the handle of the Appellants’ design
slopes upwardly and then substantially parallel to the edge of the dish while
those of Henry and Watson do not.

The Examiner contends that Henry shows this shape for the handle side wall
(Ans. 7-8), but we disagree. The invention has a handle which slopes
upwardly and then flattens out while remaining in a fairly constant width
(FF2) while Henry shows an oval dish with a handle portion which slopes
upwardly then turns back down, not remaining flat (FF7). Thus, the prior art
fails to disclose a handle which has a side view shape identical to the
Appellants’ design and the side view of the handle of the prior art would
have to be modified to meet this ornamental feature as well.
Thirdly, we note, as illustrated in the Examiners Answer at pages 8-9,
and copied below, that differences exist between the claimed design which
has a flat bottom central portion and that of Watson. Henry in Fig. 5, and
copied below, in contrast does have a flat bottom portion.
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Appellants’ design has a bottom with an outer ring portion and a flat interior
portion (FF3) while, in contrast, Watson shows a bottom portion having a
raised inner ring portion in the bottom view (FF7). Henry does disclose an
oval dish that has a bottom portion which is flat in the center portion (FF9)
and the Examiner contends that would suggest such a surface as the
Appellants’ design.
Taken together, the prior art would have to be further modified to at
least include: 1) an “almond shaped” handle opening not shown in the prior
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art; 2) a handle which “slopes upwardly and then flattens out” while
remaining in a fairly constant width which is also not shown in the prior art;
and 3) a bottom with a flat center portion as disclosed by Henry, in order to
meet the ornamental design characteristics as disclosed and we hold such a
combined modification to not be obvious. The Examiner has not established
that the ornamental features of the prior art are so related that they would
specifically suggest as obvious the combination of all these particular
features claimed in order to meet the claimed ornamental design. For these
reasons the rejection of the claim is not sustained.

CONCLUSION OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claim.

DECISION
The Examiner’s rejection of the claim is reversed.

REVERSED

MP

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