29547549 - (D) (P.T.A.B. Oct. 1, 2019)

Salas, Luis F. et al.

Patent Trials and Appeals BoardOct 1, 2019

29547549 - (D) (P.T.A.B. Oct. 1, 2019)

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. 29/547,549 12/04/2015 Luis F. Salas 15-CWD-1163DES 8249 101730 7590 10/01/2019 ECKERT SEAMANS CHERIN & MELLOTT, LLC EATON CORPORATION 600 GRANT STREET 44TH FLOOR PITTSBURGH, PA 15219 EXAMINER SHIELDS, RHEA M ART UNIT PAPER NUMBER 2915 NOTIFICATION DATE DELIVERY MODE 10/01/2019 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): ipmail@eckertseamans.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUIS F. SALAS, OSCAR L. NEUNDORFER, and SAIVARAPRASAD MURAHARI ____________ Appeal 2019-001547 Application 29/547,549 Technology Center 2900 ____________ Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the sole claim in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eaton Corporation. Appeal Br. 1. Appeal 2019-001547 Application 29/547,549 2 THE INVENTION Appellant’s claimed invention is to an ornamental design for an electrical outlet. Spec. 1. Figures 5 and 6 of Appellant’s drawings, as filed on March 15, 2017, are reproduced below: Figure 5 above is a front elevation view, and Figure 6 above is an enlargement of the indicated portion of Figure 5, of the claimed electrical outlet. THE REJECTION2 The Examiner rejects the sole claim of the application under 35 U.S.C. § 103 as being unpatentable over GMYLE (“USB-C Charger, GMYLE 20W USB Dual Ports Type C & A Power Adapter AC Wall 2 A rejection of the claim under 35 U.S.C. § 102(a)(1) was withdrawn on appeal. Ans. 3. Appeal 2019-001547 Application 29/547,549 3 Charger,” appearing on amazon.com, paper copy of record dated 12/1/2016) in view of Alisten (“Alisten 6 Port High Speed USB-C USB Wall Charger Hub Station,” appearing on amazon.com, paper copy of record dated 12/6/2016). Final Act. 7. GMYLE is reproduced on the left below, and Alisten on the right: Illustrated above, on the left, is a front elevation view of the GMYLE device, and, on the right, is a front perspective view of the Alisten device. ANALYSIS The Examiner’s position is that GMYLE operates as a Rosen3 reference, i.e., a something in existence, the design characteristics of which are basically the same as the claimed design. Final Act. 8. Appellant disagrees, arguing that the claimed design is “manifestly and noticeably different in appearance” from the cited references. Appeal Br. 22. 3 In re Rosen, 673 F.2d 388 (CCPA 1982). Appeal 2019-001547 Application 29/547,549 4 Appellant has the better position. Although the Examiner lists several design characteristics alleged to be common between GMYLE and the claimed appearance, the Examiner downplays to too great of an extent noticeable differences between the two which renders the claimed design noticeably different in appearance at the outset. Final Act. 8–9. The Examiner takes the position that the vertically parallel orientation of the smaller opening with semicircular ends and the larger rectangular shaped opening in the claimed design, versus the horizontally parallel orientation in GMYLE (i.e., a 90° rotational difference), “is not significant enough to warrant a patent for the overall apperance of the claimed design.” Id. at 9–10. In our view, this different orientation and placement or location indeed contributes to the different overall appearance. In addition, the Examiner’s position ignores another significant difference--the different vertical positions of the openings on the faces of the claimed design (located at center of plate) and the GYMLE design (located nearer top of plate than bottom of plate). The Examiner cites to In re Lapworth4 as support for the position that what the Examiner regards as only subtle or de minimis differences between the claimed appearance and the GMYLE appearance are not sufficient to result in the claimed appearance being patentably distinct. Final Act. 10. Appellant points out that, in Lapworth, two boat hull designs were nearly indistinguishable from one another until they were superimposed on one another. Reply Br. 6. We agree with Appellant that, unlike the designs at issue in Lapworth, “the claimed design is immediately visually distinct from 4 451 F.2d 1094 (CCPA 1971). Appeal 2019-001547 Application 29/547,549 5 the cited art and there is no need to superimpose anything with anything else” in order to appreciate the different overall appearance of the claimed design from GMYLE. Id. Further concerning the difference in appearance that the openings in the claimed design are oriented vertically, whereas the corresponding openings in GMYLE are oriented horizontally, the Examiner takes the position that this difference “is immaterial and an obvious change in the arrangement of well-known features.” Final Act. 10. The Examiner invokes In re Stevens5 seemingly as standing for the proposition that “[o]bvious changes in arrangement and proportioning are no more patentable in one case than in the other.” Id. Appellant counters that the Examiner’s characterization of this difference as “immaterial and an obvious change” amounts to a concession that GMYLE cannot serve as a basic design, i.e., Rosen, reference. Appeal Br. 18. We do not view the Stevens decision as announcing a hard and fast rule that all changes in arrangement and proportion between claimed designs and cited references are per se unpatentable advances. Accord, ATAS International, Inc. v. Centria, 2013 WL 6114992 (PTAB 2013). Instead, the Stevens decision made clear that the differences present there did not result in an overall appearance that was substantially different, and then characterized the changes in proportion as being obvious. Stevens, 173 F.2d at 1019. Furthermore, there are no portions of a design which are “immaterial” or “not important.” In re Blum, 374 F.2d 904, 907 (CCPA 1967). 5 173 F.2d 1015 (CCPA 1949). Appeal 2019-001547 Application 29/547,549 6 In view of the foregoing, we conclude GMYLE is not a Rosen reference because its design characteristics are not basically the same as the claimed design, so we do not sustain the rejection of the claim on appeal as being unpatentable over GMYLE and Alisten. CONCLUSION In Summary: Claims Rejected Basis Affirmed Reversed 1 § 103 1 Overall Outcome 1 DECISION The Examiner’s rejection of the claim under 35 U.S.C. § 103 is reversed. REVERSED