Salas, Luis F. et al.

Patent Trials and Appeals Board

Oct 1, 2019

29547547 - (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.
29/547,547 12/04/2015 Luis F. Salas 15-CWD-832DES 8779
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 2019-001546
Application 29/547,547
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 2019-001546
Application 29/547,547

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 16, 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
Charger,” appearing on amazon.com, paper copy of record dated 12/1/2016)

2 A rejection of the claim under 35 U.S.C. § 102(a)(1) was withdrawn on
appeal. Ans. 3.
Appeal 2019-001546
Application 29/547,547

3
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. 21–22.

3 In re Rosen, 673 F.2d 388 (CCPA 1982).
Appeal 2019-001546
Application 29/547,547

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 that render the claimed design
noticeably different in appearance. Final Act. 8–9.
The Examiner takes the position, apparently in reference to GMYLE,
that “[t]he difference of the placement of the smaller port below the
rectangular shaped port,” as compared with the claimed design having the
smaller opening with semicircular ends positioned above the larger
rectangular opening, “is not significant enough to warrant a patent for the
overall appearance of the claimed design.” Id. at 9–10. In our view, this
different 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 and the GYMLE design.
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. Id. at 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
the cited art and there is no need to superimpose anything with anything

4 451 F.2d 1094 (CCPA 1971).
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Application 29/547,547

5
else” to appreciate the different overall appearance of the claimed design
from GMYLE. Id.
In view of the foregoing, we conclude that 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