Amazon Technologies, Inc.Download PDFPatent Trials and Appeals BoardMay 21, 20202019004749 (P.T.A.B. May. 21, 2020) Copy Citation 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. 29/572,562 07/28/2016 Matthew Michael Seflic AM2-2199US 7682 136607 7590 05/21/2020 Lee & Hayes P.C. 601 West Riverside Avenue Suite 1400 Spokane, WA 99201 EXAMINER FAST HORSE, MARIE D ART UNIT PAPER NUMBER 2918 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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): lhpto@leehayes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MATTHEW MICHAEL SEFLIC, CHRISTOPHER GREEN, and MARC RENE WALLISER ____________________ Appeal 2019-004749 Application 29/572,562 Technology Center 2900 ____________________ Before KEN B. BARRETT, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject the single design claim pending in this appeal.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Amazon Technologies, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-004749 Application 29/572,562 2 BACKGROUND Appellant’s invention relates to a design for a media extender. The claim on appeal is “[t]he ornamental design for a media extender, as shown and described.” Appeal Br. 16 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Paradise US D675,173 S January 29, 2013 Seflic US D742,884 S November 10, 2015 Donachy US D757,710 S May 31, 2016 REJECTION The claim stands rejected under 35 U.S.C. § 103 as unpatentable over Seflic, Paradise, and Donachy. OPINION The Examiner finds, inter alia, that Seflic (referred to by the Examiner as 884) discloses a square media extender “with sharp corners and hard edges and substantially vertical sidewalls on a slightly smaller narrow square base with softer, rounded edges,” making Seflic’s media extender “basically the same as the claimed design.” Final Act. 2. The Examiner finds that Seflic’s media extender differs from the claimed design because, inter alia, Seflic has “a profile thickness roughly 1/3 of that of the claimed design.” Id. The Examiner contends that “[t]he difference in profile thickness is taught by [Donachy]; further, it is well known in the art that ‘mere difference in dimension cannot add novelty to a new design, nor Appeal 2019-004749 Application 29/572,562 3 detract from the teaching of the prior art.’” Id. (citing King Ventilating Co. v. St. James, 26 F.2d 357 (8th Cir. 1928)). Appellant argues, inter alia, that Seflic is not a proper primary reference, because Seflic is not basically the same as the claimed design. Appeal Br. 10. Appellant provides the below comparison of Figure 3 of the claimed design (left) and Figure 3 of Seflic (right). Id. at 13–14. Appellant’s Figure 3 is a front view of the claimed media extender. Spec. ¶ 4. Seflic’s Figure 3 is a front view of its media extender. Seflic, cover page. Appellant points out that Seflic’s media extender has “about 1/3 the thickness of the claimed design” and presents a different overall visual impression from the claimed design. Appeal Br. 12. Appellant contends that King Ventilating, relied on by the Examiner, is not analogous to the facts of this case. We first consider whether Seflic is a proper primary reference. King Ventilating, while referring to a “well-known principle that mere difference in dimension cannot add novelty to a new design” (King Ventilating, 26 F.2d at 359), was not a similar factual scenario and was not a determination of whether a proposed primary reference was basically the same as a claimed design. For this reason, we do not consider King Ventilating a proper guide for determining the outcome of this case. A primary reference is a single reference creating basically the same visual impression as the claimed design. See, e.g., MRC Innovations Inc. v. Appeal 2019-004749 Application 29/572,562 4 Hunter Mfg., 747 F.3d 1326, 1331 (Fed. Cir. 2014); High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1311 (Fed. Cir. 2013); Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335, 1340 (Fed Cir. 2019); Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). To be “basically the same,” the designs at issue cannot have “substantial differences in the[ir] overall visual appearance[s].” Apple, 678 F.3d at 1330. We disagree with the Examiner’s determination that Seflic is a proper primary reference, because we disagree with the Examiner’s finding that Seflic’s media extender is basically the same as the claimed design or creates the same overall visual impression. Seflic’s media extender has about 1/3 the thickness of the claimed design for a given base size, as shown in Appellant’s comparison of the front view of the claimed design with the front view of Seflic. Final Act. 2; Appeal Br. 12. This difference in relative dimensions, given that the design is claimed as a fairly basic box with limited design elements, causes Seflic to have a different overall visual impression from the claimed design. More particularly, here, this difference in relative dimensions takes on particular significance because the overall visual impressions of the respective media extenders reside predominately in the proportions of their box-like shapes. For this reason, Seflic is not a proper primary reference and we do not sustain the rejection of the claim as obvious over Seflic, Paradise, and Donachy. DECISION SUMMARY In summary: Appeal 2019-004749 Application 29/572,562 5 Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Seflic, Paradise, Donachy 1 REVERSED Copy with citationCopy as parenthetical citation