LERMAN CONTAINER CORPORATION ( PATENT OWNER) et al.

Patent Trials and Appeals Board

Sep 1, 2021

2021002799 (P.T.A.B. Sep. 1, 2021)

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.
90/014,262 02/11/2019 D781151 8748-019 8506
22440 7590 09/01/2021
GOTTLIEB RACKMAN & REISMAN PC
270 MADISON AVENUE
8TH FLOOR
NEW YORK, NY 10016-0601
EXAMINER
HYDER, PHILIP S
ART UNIT PAPER NUMBER
2917
MAIL DATE DELIVERY MODE
09/01/2021 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LERMAN CONTAINER CORPORATION
Patent Owner and Appellant

Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S
Technology Center 2900

Before DANIEL S. SONG, RAE LYNN P. GUEST, and
JEREMY M. PLENZLER, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and § 306, Appellant1 appeals from
the Examiner’s decision to reject the claimed design of U.S. Patent
D781,151 S2 solely under 35 U.S.C. § 103. See Examiner’s Final Office
Action (“Final Act.”), dated December 26, 2019; Appellant’s Brief on

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (a). Appellant identifies the real party in interest as Lerman Container
Corp. Appeal Br. 3.
2 US Patent D781,151 S issued on March 14, 2017 to Robert Lerman
(hereinafter “the ’151 Patent”). The claimed design was not amended during
this reexamination proceeding.
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

2
Appeal (“Appeal Br.”), dated June 8, 2020; and Examiner’s Answer
(“Ans.”), dated January 25, 2021. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s invention is titled “JAR.” The claimed design is an
ornamental design for a jar as illustrated in the figures. See Appeal Br. 33–
36. Representative Figures 1 and 2 are reproduced below.

Figure 1 of the ’151 Patent, reproduced above left, depicts a top, front,
right side perspective view of the claimed jar design. Figure 2 of the ’151
Patent, reproduced above right, depicts a front elevation view of the claimed
jar design. See ’151 Patent, Description.
The claimed jar has a wide and thick circular base, and a tall narrow
circular neck extending upwardly from the base. See, Appeal Br. 5. The base
and the neck are concentric, and the base encompasses about 40% of the
total height of the jar. See, Appeal Br. 5. The neck encompasses the
remainder of the jar’s height that is about 60% of the total height. See,
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

3
Appeal Br. 5. The jar defines an exteriorly visible interior storage chamber
that extends downwardly from the top of the neck through the entire height
of the neck, and partially into the base. See, Appeal Br. 6. The interior
storage chamber has a slight frustoconical shape within the neck, and an
ellipsoidal shape within the base. See, Appeal Br. 6. The interior storage
chamber is also described as having a bowl-like shape with a curved bottom
edge extending below the shoulder of the thick circular base. See, Appeal Br.
6. All of the claimed exterior edges of the jar are curved but for the top
surface of the neck, which is flat and has an interior right angle with the
interior storage chamber. The jar is entirely transparent. See, Appeal Br. 5.
The thread and punt of the jar, depicted in broken lines, form no part of the
claimed design. See ’151 Patent, Description.
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

4
Name Reference Date
Zamberlan et al. US D634,202 S March 15, 2011
Beauty Packaging, McKernan Adds Low Profile, Frosted Glass Jars
(June 2012) (https://www.beautypackaging.com/issues/2012-
06/view_design-center/mckernan-adds-low-profile-frosted-glass-jars)
(printed Jan. 24, 2019) (“Exhibit B1”).
McKernan Catalogue, published February 2012 (“Exhibit B2”).
Image of McKernan jar, available from archive.org as of October 30,
2013 (“Exhibit B3”).
McKernan Packaging Clearing House, part drawings, identifying Part
Number EL-28595 and dated March 21, 2011 (“Exhibit B4”).3
REJECTION
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
McKernan in view of Zamberlan.
OPINION
After reviewing carefully each of Appellant’s arguments for
patentability, we determine that a preponderance of the evidence supports
reversing the Examiner’s determination that a designer of ordinary skill
would have arrived at the claimed design by modifying the frosted glass jar
of McKernan with the transparent jar of Zamberlan. Accordingly, we reverse
the Examiner’s rejection of the claimed design under 35 U.S.C. § 103.
McKernan’s jar, illustrated in Exhibit B3, which is reproduced below
discloses a jar having a wide base that is frosted, to which a concentric and
transparent neck or opening is attached or formed. McKernan shows a jar

3 The four McKernan references (Exhibits B1-B4) are collectively referred
to as “McKernan” or “the McKernan jar.” Each references was submitted
by Appellant in an Information Disclosure Statement filed May 7, 2019, and
is admittedly prior art.
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

5
having edges that are rounded and a neck that comprises threads. The
photograph in Exhibit B3, reproduced below, provides a limited view of the
interior of the McKernan jar so that the shape of the interior storage chamber
of the jar cannot be ascertained.

The McKernan Exhibit B3 figure depicts a black and white
photograph of a jar, in a perspective view.
The Examiner further relies on schematic drawings, illustrated in
Exhibit B4, from the McKernan company, allegedly of the same frosted jar,
which is reproduced below.

The McKernan Exhibit B4 figure is a schematic plan view of a side of
a jar.
Zamberlan, Figures 6 and 7 of which are reproduced below, discloses
a front elevation view of a jar having a wide base and a short narrower neck.
The base comprises a significant portion of the jar and has a narrowed
“waistline” in the middle of the base. The jar has an internal storage
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

6
chamber that transitions from the neck of the jar, which is concentric with
the base, down into the base of the jar. The jar illustrated in Figures 6 and 7
of Zamberlan is transparent and from this view we are able to ascertain an
interior storage chamber that has rounded corners inside the base.

Zamberlan Figure 6, reproduced above left, depicts a top perspective
view of the flask (base) portion of the claimed design. Figure 7, reproduced
above right, depicts a front elevation view of the same flask (base) portion.
See Zamberlan, Description.
In determining prima facie obviousness, the proper standard is
“whether the claimed design would have been obvious to a designer of
ordinary skill who designs articles of the type involved.” See Spigen Korea
Co., Ltd. v. Ultraproof, Inc., 955 F.3d 1379, 1383 (Fed. Cir. 2020) (quoting
Durling v. Spectrum Furnit. Co., 101 F.3d 100, 103 (Fed. Cir. 1996)); Titan
Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380–81 (Fed. Cir.
2009).
An obviousness analysis must involve two steps: first, “one must find
a single reference, a something in existence, the design characteristics of
which are basically the same as the claimed design,” often referred to as a
Rosen reference (see In re Rosen, 673 F.2d 388, 391 (CCPA 1982)); second,
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

7
“[o]nce this primary reference is found, other references may be used to
modify it to create a design that has the same overall visual appearance as
the claimed design.” Durling, 101 F.3d at 103 (internal quotations and
citation omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314,
1329 (Fed. Cir. 2012); High Point Design LLC v. Buyers Direct, Inc., 730
F.3d 1301, 1311 (Fed. Cir. 2013). However, in doing so, “the teachings of
prior art designs may be combined only when the designs are ‘so related that
the appearance of certain ornamental features in one [design] would suggest
the application of those features to the other.’” In re Borden, 90 F.3d 1570,
1575 (Fed. Cir. 1996) (quoting In re Glavas, 230 F.2d 447, 450 (CCPA
1956)).
Primary Reference
The Examiner finds both the McKernan jar and the jar of the ’151
Patent consist of a short and wide cylindrical body topped with a taller
narrower cylindrical neck. Final Act. 2. The Examiner finds any differences
in proportions or shaping are negligible. Id. The Examiner acknowledges the
frosted finish on the body of the McKernan jar, where the claimed jar design
body is transparent. Id. The Examiner finds the designs are “basically the
same” because their primary characteristics include stubby cylindrical
bodies topped with taller narrower cylindrical necks, the wall thicknesses of
both designs appear to be substantially the same, and overall the basic design
characteristics are the same. Id. at 4. The Examiner finds the frosted finish
on the McKernan jar does not affect the “underlying form” or “underlying
design,” the “basic shape,” and the “overall form.” Id. at 4; Ans. 7, 9. The
Examiner finds that the frosted surface does not alter the basic shape or
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

8
detract from the overall similarities of the jars. Ans. 9. The Examiner
acknowledges other differences (e.g., marginally taller neck) but finds those
to be negligible as well. Final Act. 4–5. The Examiner concedes the frosted
appearance makes it impossible to see how deep the chamber extends into
the jar but finds the perspective view of the McKernan jar in Figure B3
establishes there is an interior chamber. Ans. 7. The Examiner finds that a
side by side comparison of the McKernan jar and the jar of the ’151 Patent
shows that the jars have the same overall visual appearance. Final Act. 5–6.
Appellant contends McKernan cannot be a primary reference as a
matter of law because it is not “basically the same” visual impression as the
claimed jar design found in the ’151 Patent. Appeal Br. 12. Appellant argues
the visual impression created by the claimed jar design as a whole is one of
openness and clarity, which contrasts the visual impression of McKernan’s
jar, in which the “visually prominent” frosted finish base diffuses or blocks
the transmission of light and gives the impression of a solid opaque object
that is visually closed. Id. at 12–13; Reply Br. 10–11. Appellant contends
that the Examiner’s “underlying form” position is comparing only the
outlines of the two jar designs and nothing else, which is “from too high a
level of abstraction” and not the legal test. Appeal Br. 17. Appellant also
argues that, even assuming McKernan’s jar has an interior opening, it has an
unknown shape and size due to the limited view of the opening. Id. at 18;
Reply Br. 11–12.
In considering the evidence and arguments of record, we are
persuaded the Appellant has the better argument. Initially, we take judicial
notice that there are many types of jars, and even the “small jar” art is a
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

9
crowded art. Thus, the differences in small details will have more weight
than in less crowded arts. See Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 675 (Fed. Cir. 2008) (noting, in the context of infringement, that
“similarity ‘is not to be determined by making too close an analysis of
detail,’ nonetheless, ‘where in a crowded art the composite of differences
presents a different impression to the eye of the average observer’”) (quoting
Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th
Cir. 1933)).
While the McKernan jar has a shape similar to that of the jar of the
claimed design, it falls short of creating an overall visual impression that is
“basically the same” as the claimed jar to qualify as a proper primary
reference as defined by Rosen. We agree with the Appellant that the overall
visual impression of the claimed jar design as a transparent jar conveys an
impression of openness and clarity that is lacking in the frosted finish of
McKernan’s jar, which creates a visual impression of being masked or
visually closed from the outside due to the prominent opaque base. The
Examiner relies on the “underlying form” or shape of the jar as the sole basis
for applying the reference and considers all other features minor or not
otherwise affecting that overall shape. Yet, an overall visual impression,
particularly in a crowded art, must reflect more than an overall shape, which
is only one aspect of a design. We also find the lack of disclosure of the
shape and depth of the interior chamber due to the limited views of the
reference to be problematic. Part of the overall visual effect of a transparent
jar necessarily will be reflected by the interior surfaces of the jar’s container.
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

10
Accordingly, the frosted aspect of McKernan’s jar is more significant to the
overall visual impression than argued by the Examiner.
Combination of References
Even if one were to find McKernan a suitable Rosen primary
reference, we are not persuaded that a skilled artisan would have arrived at
the claimed invention in combining the references.
The Examiner finds the Zamberlan reference discloses a similar
stubby jar design where the body does not have a frosted finish and is fully
transparent to reveal an inner cavity that has rounded contours. Final Act. 2.
The Examiner concludes it would have been obvious to a designer of
ordinary skill in the art at the time of filing to have modified the McKernan
jar by removing the frosted finish from the base of the jar to reveal an inner
cavity having rounded corners as suggested by Zamberlan. Id. at 2–3.
Appellant contends the Zamberlan reference cannot bridge the gap
between the McKernan jar and the claimed invention. Appeal Br. 20.
Specifically, Appellant argues that the base of the Zamberlan jar makes up
virtually the entire jar including the internal storage area (about 73%
according to Appellant), while the neck is significantly smaller. Id. at 22;
Reply Br. 8. Appellant also points out the Zamberlan jar has a step-like neck
which is different in appearance from the neck of the McKernan jar. Appeal
Br. 20. Moreover, Appellant points out the Zamberlan jar has a visually
prominent interlocking mechanism and an inwardly directed “waistline”
curve located circumferentially about the base. Id. at 23. Other differences
noted by Appellant include an inner chamber that extends in a vertical, not
sloping direction as in the claimed design. Reply Br. 8.
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

11
Appellant thus argues the Examiner has arbitrarily and improperly
combined selected features from the McKernan and Zamberlan jars based on
hindsight reasoning. Appeal Br. 25. Specifically, Appellant contends the
Examiner has failed to demonstrate why an ordinary designer would only
borrow the interior chamber and clear exterior finish of the Zamberlan to the
exclusion of the other features, such as the small neck, middle “waistline,”
and prominent threading, in order to modify the McKernan jar to arrive at
the claimed jar design. Id. at 26. Appellant argues the appearance of the
McKernan jar modified with the teachings of Zamberlan would be
substantially different from the claimed jar design, i.e., the base would
constitute essentially the entire body of the jar and have a minuscule neck
and a middle “waistline.” Id. Appellant concludes the Zamberlan jar is not
“so related” to the McKernan jar in appearance, an ordinary designer would
not be motivated to modify the McKernan jar with teachings of Zamberlan.
Id. at 28.
The Examiner contends that a secondary reference is not required to
“display an appearance that is basically the same as, or strikingly similar to,
the claimed design.” Ans. 9. The Examiner takes the position that a designer
of jars, charged with knowledge of all jars, would be sufficiently skilled to
modify one jar with certain aesthetics of another jar. Id. The Examiner
contends Zamberlan and McKernan disclose cylindrical jars with chambers
extending from a top opening and an ordinary jar designer would have
removed the frosted finish, as taught by Zamberlan, so the chamber is visible
to the base of the jar depicted in McKernan. Id. at 9–10. The Examiner
further responds that foremost any combination of references is in a sense a
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

12
reconstruction based on hindsight reasoning and that 35 U.S.C. § 103 does
not require all the features of Zamberlan to be incorporated into the
McKernan jar. Id. at 10. Instead, the Examiner argues the intent of 35 U.S.C.
§ 103 is that the integrity of the primary reference is maintained with minor
modifications based on the teachings of the secondary reference. Id. The
Examiner argues the modifications of the McKernan jar with some features
of the Zamberlan jar are not conceptual and are applied in whole to cure
minor deficiencies of the McKernan jar in teaching the claimed jar design.
Id. at 11.
We again agree that Appellant has the better argument. Unlike with a
utility application, there is no particular reason we can point to that a skilled
designer would apply a feature of one design into another. Thus, the
suggestion must come from some similar aspects between the primary and
secondary design to suggest minor changes in the primary reference. Even if
not required to be basically the same or similar, the primary and second
reference must be “so related” that the secondary reference suggests
modifying the primary reference with such features. Glavas, 230 F.2d at
450. We agree with Appellant that a designer of ordinary skill in the art
would not have modified the features of the McKernan jar with only the
transparency of the Zamberlan jar, nor can we find that the artisan would
have arrived at the claimed jar design in doing so. Appellant notes the
differences in the McKernan jar and the Zamberlan jar, namely the relative
side and shapes of the bases and necks of the jars and the prominent
“waistline” of the Zamberlan jar, in addition to the transparency. These
differences are not minor and would not suggest the skilled artisan pull only
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

13
one aspect, the transparency, from Zamberlan to apply to McKernan.
Accordingly, the references are not “so related” to suggest the skilled
designer create a transparent McKernan jar.
Moreover, even if the references were combined, we agree with
Appellant that the interior chamber of Zamberlan is visually different than
the interior of the claimed design. We cannot determine the shape and depth
of McKernan’s jar, and thus the skilled artisan would have only Zamberlan’s
design. We note that Zamberlan’s interior chamber extends substantially
through the base with vertical walls, and find that a skilled designer in the art
would have had to incorporate these aspects into the design as well. Yet, the
claimed design has relatively shallow depth with respect to the base, the
interior chamber residing mostly in the neck of the jar and taking up less
than half of the depth of the base, in sharp contrast to Zamberlan’s design.
Further, in the claimed design, the sides of the interior chamber are sloped
down with a slight curve to an entirely sloped bottom, while the sides of
Zamberlan’s interior chamber are substantially vertical and form a sharper
curve down to a primarily flat bottom. We find these aspects of the design to
be of significance in the overall visual impression of such an otherwise
simple design, particularly in an otherwise crowded art. Thus, even in
combining the visual features of the two references, the skilled artisan would
not have arrived at the claimed design.
Secondary Considerations
Appellant argues that the claimed jar is patentable based on the
secondary consideration of commercial success. Appeal Br. 29. For support,
Appellant points to the Declaration of the inventor Robert Lerman, who
Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

14
testifies about continuous sales growth of the product based on the claimed
jar design over the last several years. Id. Mr. Lerman also declares that jars
embodying the claimed design comprise 65% of all jars that are purchased
by licensed cannabis producers nationwide. Id. at 31. Appellant concludes
this information and other evidence in the declaration establishes a proper
nexus because the commercially successful jar is the design of the ’151
Patent. Id.
While we need not address Appellant’s arguments regarding
commercial success in light of our positions above, we agree with the
Examiner that Appellant has not shown the commercial success of the
product is based on the particular design of the claimed jar.4 Ans. 11.
Appellant has not distinguished sales of the claimed jar from the growth of
cannabis sales in the U.S. Id. We agree with the Examiner that Appellant has
not demonstrated a nexus between the jar’s design and increased growth in
sales, outside of its connection to cannabis sales.
CONCLUSION
We reverse the Examiner’s rejection.

4 Further, to the extent that the jar is particularly suited to a particular use,
here cannabis packaging, such a finding suggests a functional correlation
between the jar and particular product stored therein (e.g., due to the size or
transparency) rather than a correlation based purely on ornamental aspects of
the jar. Functional features cannot be a basis of patentability for a claimed
design. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444,
1450 (Fed. Cir. 1993) (“A design patent protects the non-functional aspects
of an ornamental design as shown in a patent.”).

Appeal 2021-002799
Reexamination Control 90/014,262
Patent D781,151 S

15
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 103 McKernan,
Zamberlan
1

REVERSED

PL Initials:
hh

For Appellant:

GOTTLIEB RACKMAN & REISMAN PC
270 MADISON AVENUE
8TH FLOOR
NEW YORK, NY 10016-0601