Danielle Giza

Patent Trials and Appeals Board

Sep 24, 2019

29461783 - (D) (P.T.A.B. Sep. 24, 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.
29/461,783 07/26/2013 Danielle Giza J-5952D2 (510009.02111) 8515
28165 7590 09/24/2019
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
PRATT, DEANNA L
ART UNIT PAPER NUMBER
2911
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
F074168@scj.com
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIELLE GIZA1
____________________

Appeal 2018-004712
Application 29/461,783
Technology Center 2900
____________________

Before JENNIFER S. BISK, JILL D. HILL, and GEORGE R. HOSKINS,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting the single design claim pending in this appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies Applicant S. C. Johnson & Son, Inc. as the real party
in interest. Appeal Br. 2.
Appeal 2018-004712
Application 29/461,783

2
BACKGROUND
Appellant’s invention relates to a display screen portion with an icon,
or a package portion with surface ornamentation. Spec. 2. The claim on
appeal is “[t]he ornamental design for an icon for a display screen or
packaging with surface ornamentation, as shown and described.” Id. at 3.
REJECTIONS
The claim stands rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 2.

OPINION
The Examiner determines that the claim is not enabled, “because the
claim identifies that the claimed design is embodied in ‘Packaging’, yet . . .
the claimed design is not shown applied to packaging.” Final Act. 3.
According to the Examiner, “[w]hile a computer-generated icon design may
be properly illustrated as embodied in a ‘portion’ of [a display screen], the
same practice does not extend to art areas outside of computer-generated
icon art.” Id.
The Examiner reasons that “[d]esign claims are for the design applied
to or embodied in an article of manufacture, not the design standing alone.”
Id. at 4. The Examiner contends that a design applied to a portion of an
article defined within broken lines, rather than to the entire article, “is not
applied in a meaningful way that enables a person to make or use the
claimed design.” Id. According to the Examiner, the MPEP requires that a
design “be applied to or embodied in a specific article of manufacture”
(Final Act. 8 (referring to MPEP §1504.01 (citing 35 USC §171))), not a
“portion” of an article of manufacture.
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Appellant argues that, even though the closed broken line area
surrounding the claimed design is a “portion” of packaging, precedent
establishes that the claim is enabled. Appeal Br. 7. For support, Appellant
cites Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), wherein the claimed
design was a utensil handle, and only the handle (i.e., a portion of the article
to which the design is applied) was depicted in the Figures. Id. at 7 (citing
Gorham, 81 U.S. at 512). We agree with Appellant that illustrating a portion
of an article of manufacture can enable a claim to a design therefor, and that
Gorham is an example of such an illustrated portion. While Gorham
illustrated a much greater portion of the article of manufacture, ruling out a
far greater number of options for the completed shape of article and not
effectively reducing the design to the equivalent of mere surface treatment,
the Examiner has not persuaded us that Appellant erred simply by
illustrating only a portion of the article of manufacture in this instance.
The Examiner then argues that the claim is directed to “packaging,”
rather than a “packaging portion.” Ans. 8. The Examiner determines that,
even if a claim can be enabled by illustrating a portion of an article of
manufacture, as in Gorham, the claimed design here is not enabled because
the claim recites an entire article of packaging rather than a portion of
packaging. Ans. 4.
The Examiner has not persuaded us that Appellant must recite a
“portion of” packaging for the claim to be enabled. MPEP § 1503.01(I)
specifically states that “[t]he title may be directed to the entire article
embodying the design while the claimed design shown in full lines in the
drawings may be directed to only a portion of the article.”
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Regarding illustrating only a portion of the claimed article of
manufacture, the Examiner argues that, although MPEP §1504.01(a) permits
computer icons being depicted on a portion of a computer screen, monitor,
or display panel, and MPEP § 1503.02(IV) states that the guidelines for
disclosing computer icons “apply equally to all types of surface treatment,”
the claimed design cannot be enabled by illustrating only a portion of
packaging. Id. at 5. The Examiner contends that the guidance set forth in
MPEP § 1504.01(a) is limited to computer icons, and MPEP § 1503.02(IV)
should not be construed to mean that MPEP § 1504.01(a) “applies verbatim
to surface treatment designs.” Id. at 6. The Examiner argues that “the clear
meaning” of MPEP § 1503.02(IV) is that “the principles set forth in those
guidelines apply within the context of the art to which they are being
applied,” and “[w]hether a claimed design is enabled by being disclosed on
merely a portion of an article of manufacture is an instance where this
context is key.” Id.
The Examiner’s argument regarding “context” is not persuasive. It is
unclear to us what “[t]he guidelines that apply for disclosing computer-
generated icons apply equally to all types of surface treatment” (MPEP
§ 1503.02(IV)) could mean/encompass, other than that surface treatment can
be depicted on less than an entire article of manufacture. While MPEP
§ 1504.01(a) may not apply verbatim to surface treatment designs, it also
does not apply solely to computer icons. MPEP § 1503.02(IV) intends for
some of the guidelines for disclosing computer icons to apply to surface
treatment. It is not clear to us that displaying a portion of the underlying
article of manufacture is not one of those “guidelines.”
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The Examiner further contends that “[t]he Strijland decision that
allows [icon] designs to be enabled by a showing of a ‘portion’ of an article
sets forth an understanding of the statutory requirements of computer
generated icon designs that . . . does not extend to the packaging art, surface
treatment art, or any other art.” Final Act. 8. This contention is not
persuasive because it (1) is not supported by Ex parte Strijland, 26 USPQ2d
1259 (BPAI 1992), and (2) appears to be contradicted by MPEP
§ 1503.02(IV), which states that the guidelines for disclosing computer icons
“apply equally to all types of surface treatment.”
Appellant argues that the disclosure depicts “the claimed design on at
least one type of packaging, i.e., the packaging represented by the closed
broken line that completely surrounds the design.” Appeal Br. 4 (citing
Figs. 1–3). The Examiner disagrees, arguing that for the claimed design to
be enabled, “the disclosure needs to be clear how the design is applied to a
complete article.” Final Act. 7–8 (emphasis added) (citing Ex parte
Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm'r Pat. 1938); Ex parte
Sweeney, 123 USPQ 506 (BPAI 1959); and Ex parte France, 132 USPQ 211
(BPAI 1961)).
Appellant replies that the regulation forming the basis for the
decisions in Salsbury, Sweeney, and France was revised in 1997. Reply
Br. 3. Rather than requiring a more specific number and type of views in
design patent applications, the regulation was amended to “instead require ‘a
sufficient number of views to constitute a complete disclosure of the
appearance of the design.’” Id. (citing 37 C.F.R. § 1.152 (Oct. 10, 1997));
Appeal Br. 6–7 (citing Changes to Patent Practice and Procedure, 62 Fed.
Reg. 53,132, 53,164 (Oct. 10, 1997)).
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We agree with Appellant that the regulation forming the basis for the
decisions in Salsbury, Sweeney, and France was revised in 1997, such that
the Examiner’s reliance on those cases to support a requirement to depict a
complete article is improper.
Appellant makes various arguments about similar designs that have
been issued as design patents. Appeal Br. 4–6; Reply Br. 3–5. We agree
with the Examiner that “such evidence is anecdotal at best” because,
“[a]bsent proof of a consistent practice in the Patent and Trademark Office,
the decision to issue individual design patents is of limited precedential
value.” Ans. 4 (citing Ex parte Donoghue, 26 USPQ2d 1271, 1273 (BPAI
1992)).
The Examiner and Appellant contend that In re Schnell, 46 F.2d 203
(CCPA 1931) is relevant to the outcome of this decision, but disagree on
how Schnell affects the outcome. Final Act. 4–5; Appeal Br. 6–7; Ans. 4–7,
9–10; Reply Br. 2. What we find informative in Schnell is its discussion of
Ex Parte Fulda, 194 OG 549, which explains that a design can consist of
(1) the configuration of an article of manufacture, (2) ornamentation
imposed on the article manufacture “without reference to its general form,”
or (3) both the configuration and ornamentation. See Schnell, 46 F.2d at 206
(discussing Fulda), 209. Fulda held that, where the design is for the
configuration of an article of manufacture, the article of manufacture “must
necessarily be disclosed in the application;” but, where the design is solely
for ornamentation imposed on the article of manufacture, there is no
requirement that the design be applied to “some particular definite article of
manufacture.” Id. at 206–07. Appellant’s design appears to be of the latter
type ––solely for ornamentation imposed on the article of manufacture (i.e.,
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a display or a package) so that, in accordance with Fulda and as discussed in
Schnell, there is no requirement that the design be applied to “some
particular definite article of manufacture.” In other words, the precise
configuration of the package need not be fully disclosed.
For these reasons, we do not sustain the Examiner’s rejection.

DECISION
We REVERSE the rejection of the claim under 35 U.S.C. § 112(a).

REVERSED