Ahren Bonnema et al.

Patent Trials and Appeals Board

Sep 26, 2019

29497580 - (D) (P.T.A.B. Sep. 26, 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.
29/497,580 07/25/2014 Ahren BONNEMA 513469/0243053 1001
23838 7590 09/26/2019
Hunton Andrews Kurth LLP/HAK
2200 Pennsylvania Avenue NW
Washington, DC 20037
EXAMINER
BENNETT-HATTAN, ELIZA Z
ART UNIT PAPER NUMBER
2915
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AHREN BONNEMA and COLLEEN MARIE HANLEN
____________

Appeal 2018-006442
Application 29/497,580
Technology Center 2900
____________

Before RAE LYNN P. GUEST, GRACE KARAFFA OBERMANN,
and MITCHELL G. WEATHERLY, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
Final Action rejecting the sole claim in Appellant’s design patent
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The real party-in-interest is JanSport Apparel Corporation. App. Br. 2.
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THE CLAIMED DESIGN
Appellant claims an ornamental design for an accessory pouch. Orig.
Spec. 3.2 Seven (7) figures depict various views of the accessory pouch and
define the scope of the claimed design. Amended Spec., Figs. 1–7
(replacement sheets). The Examiner in the Final Action focuses on
Figures 1 and 4, reproduced below:

2 We refer to the Original Specification filed July 25, 2014, as “Orig. Spec.”
and the Amended Specification filed April 7, 2016, as “Amended Spec.”
The Examiner identifies July 25, 2014, as the effective filing date of
Appellant’s application. Final Action 2.
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Amended Spec. Figs. 1, 4 (replacement sheets); Final Action 2. Figures 1
and 4, respectively, are a top-right perspective view and a left side view of
the claimed accessory pouch. We observe that “broken lines shown in all
views of the accessory pouch” are for illustrative purposes only and form no
part of the claimed design. Orig. Spec. 3.
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THE REJECTION
The Examiner rejects the design claim under 35 U.S.C. § 102(a)(2) as
anticipated by Wilson (U.S. Patent No. 3,143,424), a utility patent that,
according to the Examiner, discloses a design that was publicly available by
August 4, 1964, well before the critical date. Final Action 2. Appellant
does not dispute the prior art status of Wilson’s disclosure. App. Br. 2–6.

ANALYSIS
Wilson concerns a method for making a fried sandwich. Wilson, 1:1–
15, Fig. 2. In the Examiner’s view, “[t]he shape and appearance of”
Wilson’s sandwich, shown during an intermediate stage of formation, “is
identical in all material respects to that of the claimed design” for an
accessory pouch. Final Action 3. Significantly, in making that finding, the
Examiner compares a top view of Wilson’s fried sandwich (Wilson Fig. 2)
to top and side views of the claimed accessory pouch (Appellant’s Figs. 1
and 4). Id. at 2. Although the Examiner cites a side view of the claimed
design, which reveals an accessory pouch having a long, thin profile, the
Final Action does not explain how or why the intermediate fried sandwich as
disclosed in Wilson meets that perspective of the claimed design. See Final
Action 2–4 (nowhere discussing a side view of Wilson’s fried sandwich or
otherwise explaining how or why the intermediate fried sandwich depicted
in Wilson discloses the side view of the claimed design as depicted in
Figure 4 of the Amended Specification). We agree with Appellant that this
lack of analysis represents reversible error.
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Specifically, the Examiner relies on the following comparison of
Figure 2 from Wilson (on the left) and Figures 1 and 4 of the claimed design
(on the right):

Final Action 2 (arrow added by the Examiner). The above illustration is a
side-by-side comparision of Wilson’s Figure 2 (illustrating a top plan view
of a fried sandwich in an intermediate stage of formation) and Figure 1 from
the Amended Specification (illustrating a top-right perspective view of an
accessory pouch) positioned above Figure 4 from the Amended
Specification (illustrating a left side view of the claimed design).
Although the Examiner reproduces Appellant’s Figure 4 (on the
bottom right in the above side-by-side comparison), the Examiner does not
explain why Wilson’s fried sandwich as disclosed meets the scope of the
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claimed design as reflected in Figure 4. That failure undercuts the
Examiner’s finding that Wilson’s fried sandwich “is identicial in all material
respects to” the accessory pouch “of the claimed design.” Ans. 4; Final
Action 3.
All of the figures included in the Amended Specification bear upon
the correct construction and scope of the claimed design. See Amended
Spec, Figs 1–7 (including, for example, Figure 4, illustrating a left side view
of an accessory pouch characterized by a long, thin profile); Reply 2–5
(discussing the Examiner’s failure to take account adequately of the side
view perspective of the claimed design). The Examiner states, without
citing any objective support, that “[t]he scope of the Wilson reference is also
a thin folded material.” Ans. 4. Wilson, in fact, does not disclose “a thin
folded material” having an “appearance” that is “identical in all material
respects to that of the claimed design.” Ans. 4. On the contrary, even a
cursory comparison of Figure 4 from the Amended Specification to Figure 4
from Wilson reveals significant differences between the two designs. We
reproduce those views below with Wilson’s Figure 4 rotated
counterclockwise by ninty degrees in the comparison:
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See Reply 3–4 (reproducing Figure 4 from the Amended Specification and
Wilson’s Figure 4). The above illustration is a side-by-side comparison of a
left side view of the claimed design for an accessory pouch and a cross-
sectional view of Wilson’s fried sandwich along a line 4–4 of the final
folded sandwich product of Figure 3 of Wilson. We note that Figure 4 is not
a side view of the sandwich of Wilson in the intermediate stage of Figure 2.
The only side view presented in Wilson is of the final sandwich product in
Figures 5–8, which illustrate methods of preparing and storing the sandwich
product. Wilson 1:49–54, Figs. 5–8.
We agree with Appellant that the Examiner fails to take account of the
entirety of the claimed design, including the side view of the accessory
pouch illustrated in Figure 4 of the Amended Specification. Reply 2–5. As
Appellant observes, “Wilson’s sandwich is no such thin folded material.”
Reply 3–4 (reproducing for comparison Appellant’s Figure 4 and Wilson’s
Figure 4); see Final Action 2 (reproducing Wilson’s Figure 2 only, in a side-
by-side comparison to Appellant’s Figures 1 and Figure 4). Appellant also
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correctly observes that, unlike the long, thin profile illustrated in Figure 4
from the Amended Specification, “Wilson’s sandwich is roughly half as
thick as it is long.” Reply 3. The claimed design, when viewed from the
side, has a “length and width . . . at least an order of magnitude greater than
its thickness.” Id. at 2 (reproducing Figures 4–7 of the claimed design); 4
(reproducing Wilson’s Figure 4).
In sum, the Examiner does not adequately demonstrate that Wilson’s
intermediate sandwich describes the aspect of the claimed design shown in
Figure 4 of the application at issue. Accordingly, we determine that the
Examiner misconstrues the scope of the claimed design in determining that
“[t]he scope of the Wilson reference is also a thin folded material.” Ans. 4.
The Examiner has not shown that Wilson’s design is “identicial in all
material respects to that of the claimed design.” Id.; see Final Action 3
(same). Accordingly, we cannot sustain the Examiner’s finding that
Wilson’s fried sandwich describes, with anticipatory specificity, the side
view perspective of the claimed design as depicted, for example, in Figure 4
from the Amended Specification.
The decision of the Examiner rejecting the design claim under
35 U.S.C. § 102(a)(2) is reversed.
CONCLUSION
Claims
Rejected
Basis Affirmed Reversed

Design Claim

§ 102(a)(2) over Wilson

Design Claim

Overall
Outcome

Design Claim

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REVERSED