Yoon-Young Kim

Patent Trials and Appeals Board

Jul 22, 2019

29470475 - (R) (P.T.A.B. Jul. 22, 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.
29/470,475 10/22/2013 Yoon-Young KIM D91098.0552C2 1206
89980 7590 07/22/2019
NSIP LAW
P.O. Box 65745
Washington, DC 20035
EXAMINER
WRIGHT, CARLA JOBE
ART UNIT PAPER NUMBER
2917
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
pto.nsip@gmail.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YOON-YOUNG KIM1
__________

Appeal 2017-008790
Application 29/470,475
Technology Center 2900
__________

Before JOHN C. KERINS, KEN B. BARRETT, and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Yoon-Young Kim (“Appellant”) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52, of our Decision dated March 4, 2019
(“Decision”), affirming the rejection of the sole design claim under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement therein. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Samsung Electronics Co., Ltd., is identified as the real party in interest.
Appeal Br. 3.
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Requests for Rehearing are limited to points that Appellant believes
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1).
Appellant posits that the Decision is based on “erroneous factual and
legal conclusions.” Request 2. More specifically, Appellant maintains that
“the Board’s selection, interpretation and application of the relevant,
controlling Federal Circuit case law to the Appellant’s design patent claim”
is in error, and, apparently, that the Board erred in determining “what would
have been understood by a designer of ordinary skill in this art regarding
where a natural boundary would be for a flip cover with a flexible hinge that
is attached to front and rear panel features.” Id. at 5.
Much of the Request simply repeats arguments presented, or
resembling, those made in the Appeal and Reply Briefs. Appellant argues
the alleged inapplicability of the Owens2 decision, and argues that certain,
select contour lines appearing in drawings of the entire flip cover article
evidence “natural boundaries,” so as to inform persons of ordinary skill in
the art that Appellant was in possession of a design appearance of only a
portion of the flip cover apart from the entire appearance. Request 6–13. As
to these arguments, Appellant does not identify any points that were
misapprehended or overlooked in the Decision. Indeed, those arguments
were addressed in the Decision, and the Request is little more than an
expression of disagreement with the outcome of the appeal. We do,
however, exercise our discretion to address selected parts of the Request that

2 In re Owens, 710 F.3d 1362 (Fed. Cir. 2013).
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either raise new points or present points previously made in a slightly
different manner.
As was the case with the principal briefs on appeal, Appellant’s
position that the Owens decision is not applicable is premised entirely on its
other position that certain, but not all, of the contour lines appearing in
drawing figures in Parent Application Serial Number 29/436,366, are
indicative of “natural boundaries,” and that there introducing an actual
boundary in broken lines3 does not run afoul of the written description
requirement. Appellant insists that, “[c]ontrary to the facts in Owens, the
Appellant in this case is not subdividing a previously undivided, amorphous
surface.” Request 7. Yet that is precisely what Appellant is doing, unless
one accepts, which we do not, that it is permissible to select certain contour
lines from among the many present, and proclaim that those were intended
to evidence the existence of a boundary.4
Appellant newly asserts that the side elevation view presented in
Figure 4 supports the position that the selected contour lines in other figures
represent natural boundaries, in that they correspond to the boundaries of the
portion of the flip cover seen in the Figure 4 view. Not only was this

3 In addition to adding the broken-line boundary lining, the drawings also
convert existing solid lines distal from the hinge, starting at the new
boundary, to broken lines, thus disclaiming the appearance of a majority of
the front and rear cover portions.
4 Appellant characterizes its selection of particular contour lines as being
natural, logical, and recognized as identifying separately-claimable features,
on the one hand, but begs the question by asserting that “it is irrelevant
whether there may be other markings that would support different shapes,
because it was never the Appellant’s intention to claim those other shapes.”
Request 11.
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4
argument waived by failure to present the same in the briefing prior to the
Decision (37 C.F.R. § 41.37(c)(iv)), it is not probative, in our view, of the
existence, or lack thereof, of any possible boundary on either the front or
rear cover portions of the flip cover. That Figure 4 is essentially identical in
appearance in both the Parent Application, which claims the article in its
entirety, and the present application on appeal, which claims only a minority
portion of the front and rear covers, informs us of the utter lack of
evidentiary value as to any characteristic of any claimed appearance of any
other portion of the article.
Appellant additionally calls to our attention a Patent Trial and Appeal
Board (“PTAB”) decision, Ex Parte Kitade,5 which is asserted to be directly
contrary to the decision in this appeal. Request 14. Appellant maintains
that, in Kitade, certain features were disclaimed “by converting them to
broken lines, and in several instances, dividing them from the surrounding
claimed features by using dot-dashed boundary lines, similar to how the
Appellant has used stippled shading” in the presently-claimed design. Id.
Appellant further asserts that, “[i]t should be carefully noted that the dot-
dashed boundary lines on the bottom edge surface of the amended [Kitade
design] track exactly the edge and contour lines that are shown,” which
Appellant maintains is “exactly the same technique used” in defining the
boundaries in the claim on appeal. Id. at 16.
Contrary to Appellant’s assertions, Kitade involved only the
conversion of solid lines connoting existing borders on the article appearing

5 Unpublished Ex Parte Kitade, Appeal No. 2016-000238 (PTAB May 31,
2017), Application Serial Number 29/436,125.
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in the original drawings to broken or dot-dash lines. Kitade did not involve,
in any way, reliance on any contour lines as establishing or providing written
descriptive support for any boundary separating claimed subject matter from
disclaimed subject matter. The original appearance of solid lines evidencing
structural boundaries allowed that PTAB panel to find that, “‘[l]ike the
situation in In re Daniels, Appellant’s presently-claimed underlying mobile
phone design was ‘clearly visible’ in the originally filed disclosure.’”
Request 17 (quoting Kitade 3). As such, not only is the Decision here not
inconsistent with Kitade, Kitade is not especially informative as to the issues
involved in this case.
For the above reasons, Appellant’s request for rehearing has been
considered, but fails to apprise us of any reason to change the Decision, and
is therefore denied.

REHEARING DENIED