29547564 - (D) (P.T.A.B. Jan. 3, 2020)

Salas, Luis F. et al.

Patent Trials and Appeals BoardJan 3, 2020

29547564 - (D) (P.T.A.B. Jan. 3, 2020)

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. 29/547,564 12/04/2015 Luis F. Salas 15-CWD-1171DES 1972 101730 7590 01/03/2020 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 01/03/2020 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 2019-001551 Application 29/547,564 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 2019-001551 Application 29/547,564 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 22, 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 REJECTION The Examiner rejects the sole claim of the application under 35 U.S.C. § 103 as being unpatentable over an image identified by the Examiner as “Leviton T5631-W 15-Amp USB Charger as shown on Amazon.com” (hereafter “Leviton”), in view of “Google Universal 22.5W Dual Port USB Type-C Charger” as shown on Lesterchan.net (hereafter “Google”). Final Act. 3. Appeal 2019-001551 Application 29/547,564 3 Leviton (left) and Google (right) are reproduced below: Illustrated above, on the left, is a front elevation view of the Leviton outlet plate; and, on the right, a front elevation view of the Google charger.2 ANALYSIS The Examiner’s position is that Leviton 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. 3–4. The Examiner takes the position, relative to the overall appearance of the claimed design 2 The images are copied from the ones appearing at pages 4 and 5 of the Final Action. 3 In re Rosen, 673 F.2d 388 (CCPA 1982). Appeal 2019-001551 Application 29/547,564 4 and that of Leviton, that the claimed design principally differs in that the elongated features present in the claimed design have more rounded corners, and that the elongated features are closer together. Id. at 4. The Examiner relies on Google as teaching two elongated features with rounded corners positioned close together on a flat rectangular surface, and appears to conclude that it would have been obvious to modify the shape of the Leviton elongated features to have rounded ends, and to move the elongated features closer together. Id. at 5. Appellant disagrees that Leviton constitutes a proper Rosen reference, arguing, in part, that the elongated features (USB-A ports) in Leviton are: horizontally spaced apart from one another a distance more than three times the width . . . of such USB-A ports. Such spaced- apart positioning of the two USB-A ports in Leviton causes the USB-A ports (which are designed to be dominant features on the frontal face) to each be associated with the corresponding corner of the frontal surface in which it is situated (i.e., rather than to be associated with one another) and to be viewed as having separate identities. Appeal Br. 6. Appellant contrasts this characterization with the claimed design, averring that the closer spacing relative to the width of the elongated features provides a visual appearance in which the elongated features, though physically separated, are complementary to each other. Id. The Examiner responds that “[g]enerally, two items of the same shape, size, and appearance in the same proximity are visually identified as a pairing,” and that the elongated features of Leviton are organized in a pairing, substantially the same way as the elongated features in Google and in the claimed design. Ans. 9. The Examiner additionally states that, “Google teaches the shape and close proximity of the pair of ports; which Appeal 2019-001551 Application 29/547,564 5 again has basically the the same appearance (size, shape and spacing) as the claimed design.” Id. Appellant has the better position here, overall. The fact that the Examiner twice makes reference to the appearance of the Google elongated features in addressing Appellant’s argument that Leviton is not a proper Rosen reference gives us considerable concern at the outset as to whether Leviton can stand alone as a proper Rosen reference. Further, although Appellant’s characterization of the Leviton elongated features as having separate identities may be something of an overstatement, the fact that the features are positioned so closely to the edges of the rectangular plate in addition to being spaced apart to a greater extent does, we believe, present an apperance that is not basically the same as that in the claimed design. Our view as to the appearances not being basically the same is buttressed by our review of the Answer. It appears that the Examiner, instead of repeating the rejection as set forth in the Final Action, inadvertently reproduced the grounds of rejection appearing in the Final Action in related application Serial Number 29/547,570, which is the subject of related Appeal 2019-001554. Ans. 3–6. In the related application, the claimed elongated features are spaced farther apart than in the present application. Compare Final Act. 3–5 with Ans. 3–6 (reproductions of Figure 3 from the present application in Final Action, reproductions of Figure 3 from Application Serial No. 29/547,570 in Answer). Tellingly, in the Answer, the Examiner describes as a design characteristic in Leviton that is basically the same as the claimed design, “[t]he outer most parallel line of each USB port being near the parallel edge of the rectangular surface creating a wide space between the ports.” Ans. 3. Appeal 2019-001551 Application 29/547,564 6 This same statement does not appear in the comparison of designs in the grounds of rejection in the Final Action in reference to the actual claimed design in the present case. Final Act. 3. In all, we find that this lends support to Appellant’s argument. We additionally note that, in reviewing the grounds of rejection in the Answer, our attention was first drawn to the images appearing therein, and our initial reaction was to the effect that Appellant’s claimed design was not the one appearing in the Answer. This additionally reinforces our view that the increased spacing in conjunction with the elongated features being much closer to the edges of the rectangular plate, results in Leviton not having an overall appearance whose design characteristics are basically the same as the claimed design. In view of the foregoing, we find that Leviton is not a proper Rosen reference relative to the claimed design herein. The rejection of the sole design claim as being unpatentable over Leviton in view of Google is not sustained. Appeal 2019-001551 Application 29/547,564 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Leviton, Google 1 REVERSED