DAVID ZAHNER ZAHNER DESIGN GROUP, LTD. et al.

Patent Trials and Appeals Board

Aug 19, 2021

2021001988 (P.T.A.B. Aug. 19, 2021)

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.
90/013,952 05/08/2017 D746078 4042 - D078 Reexam 5275
28083 7590 08/19/2021
Goldberg Cohen LLP
1350 Avenue of the Americas
3rd Floor
New York, NY 10019
EXAMINER
RUDZINSKI, KEVIN KEITH
ART UNIT PAPER NUMBER
2911
MAIL DATE DELIVERY MODE
08/19/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZAHNER DESIGN GROUP, LTD.
Patent Owner and Appellant

Appeal 2021-001988
Reexamination Control 90/013,952
Patent D746,0781
Technology Center 2900
Before RAE LYNN P. GUEST, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and 306, Appellant2 appeals from the
final rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b). We

1 U.S. Design Patent D746,078S issued December 29, 2015 to David Zahner
(‘078 Patent).
2 Appellant identifies the real party in interest as Zahner Design Group, Ltd.,
the assignee of record. Appeal Br. 1.
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AFFIRM.3
CLAIMED SUBJECT MATTER
The claim is directed to an ornamental design for a shower curtain, as
shown and described. ’078 Patent, claim. Figures 1, 2, 6, and 8 are
representative and provided below. An entered amendment to the drawings
submitted July 8, 2018 was withdrawn. Final Act. 1. Thus, the claimed
design on appeal in this reexamination proceeding is the same as that of the
’078 Patent.

3 We consider the Final Office Action issued October 28, 2019 (“Final
Act.”), the Appeal Brief filed May 22, 2020 (“Appeal Br.”), the Examiner’s
Answer issued on November 18, 2020 (“Ans.”), the Reply Brief filed
January 19, 2021 (“Reply Br.”).
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Figure 1 of the ’078 Patent depicts a front elevation view of the
detailed area 1 circumscribed in Figure 8. ’078 Patent, cover page. Figure 2
is a front left perspective view of the shower curtain in use on a shower
curtain rod. Id. Figure 6, is a top elevation view of the shower curtain in
use on a shower curtain rod. Id. Figure 8 depicts a front elevation view of a
portion of the shower curtain of the claimed design. Id.
The ’078 Patent states:
The broken lines on the shower curtain depict features of
the article that form no part of the claimed design.
The rod drawn in broken lines showing the shower
curtain in use illustrates environmental subject matter not
included in the claim.
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The jagged line and the area between the jagged line and
the solid lines of the claim depict portions of a shower curtain
that form no part of the claim.
’078 Patent, cover page.
Therefore, the claimed design is a shower curtain having a thin, flat,
smooth grommet (for receiving for example a shower curtain rod), having a
ring shape on all sides, except for the side adjacent a (for discussion
purposes) top edge of the curtain. On this side, the grommet extends to and
is flush with the edge of the curtain. According to the perspective views of
Figures 2-5, the grommet has an interior flat surface with sharp angled
edges. According to the perspective views of Figures 2-5 and top views of
Figures 6-7, the thin, flat smooth grommet also has an exterior flat surface
with a sharp angled edge.
BACKGROUND
The ’078 Patent issued from U.S. design Application 29/530,488 filed
June 17, 2015 (“the ’488 Application”), which on its face asserts is a
divisional of U.S. utility Application 14/458,664, filed August 13, 2014
(“the ’664 Application”). The ’664 application claims priority through a
series of continuation or divisional utility applications to U.S. Application
09/738,545, filed December 15, 2000 and U.S. Application 09/617,402, filed
July 17, 2000 (“the ’402 Application”). Although not listed on the face of
the patent as part of the original priority claim, Appellant further contends
that the ’402 Application claims priority to provisional U.S. Application
60/150,876, filed August 26, 1999 (“the ’876 Application”).
We also note there is a related district court case that has been stayed
pending the outcome of this appeal. Appeal Br. 2.
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REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Sawaya US 5,111,868 May 12, 1992
A webpage of the Mitre Linen UK company entitled, “Comfort Hookless
Shower Curtain” asserted to be publically available on September 6, 2013 at
the address https://www.mitrelinen.co.uk/mitre-comfort-hookless-shower-
curtain/gw415 (“Comfort Hookless”)
REJECTION(S)
Claim 1 is rejected as being unpatentable over Comfort Hookless, in
view of Sawaya.
OPINION
During reexamination, the Examiner determined the description and
figures in the ’664 Application (having an identical specification via
continuation or divisional applications back to the ’402 Application) are
insufficient in demonstrating that the claimed design of the ’078 Patent is
fully disclosed and understood before the filing date of the ’488 Application
and did not support the claim to priority. Final Act. 3. The Examiner
concluded that the effective filing date of the ’488 Application was June 17,
2015. Id. at 9. Appellant’s arguments are limited to the assertion that the
’078 Patent is entitled an effective filing date of the ’402 Application,
namely July 17, 2000, which would antedate the Comfort Hookless
reference. Appeal Br. 14–26.
Thus, the issue before us is: whether the claimed design has sufficient
descriptive support in the ’664 Application to properly claim priority as a
divisional application of the ’664 application.
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To be entitled to a parent application’s effective filing date under 35
U.S.C. § 120, a continuation must comply with the written description
requirement. In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). “The test
for sufficiency of the written description, which is the same for either a
design or a utility patent, has been expressed as ‘whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.”’ Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc)).
Appellant contends that § 120 means that a later-filed application that
has a disclosure which overlaps with one or more earlier-filed applications is
given benefit of the filing date of those earlier filed applications if the later
filed application meets the statutory requirements, including the “written
description” requirement of 35 USC § 112(a). Appeal Br. 12. While we
agree with Appellant this is the general standard for priority, we also agree
with the Examiner that a design patent, representing an overall visual
impression of a claimed design, requires a disclosure of the claimed design.
See Ans. 7. Indeed, since each design is unique, disclosure representing the
same overall visual impression must be present to support a priority claim.
Generally, introduction of new elements, the visual impression of which is
neither described in the text nor depicted in the figures of the prior
application, demonstrates a lack of written description support. See, e.g.,
Munchkin, Inc. and Toys R Us, Inc. v. Luv N Care, Ltd., 2014 WL 1619033,
*4 (PTAB April 21, 2014) (holding that differences in a spout tip on an
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overall similar cup design demonstrated a lack of written descriptive support
for an earlier priority claims).
Appellant argues that, when comparing the disclosures of the ’402
Application to the later-claimed subject matter of the ’078 Patent, the design
of the ’078 Patent is fully supported by the disclosures of the priority
application, and an artisan of ordinary skill in the art would understand that
Appellant was previously in possession of the claimed designs when it filed
the ’402 Application. Appeal Br. 13.
It is undisputed that Figure 21 of the ’402 Application discloses a
single partial view of a shower curtain having a ring similar to that depicted
in Figure 1 of the ’078 Patent. Final Act. 4; Appeal Br. 14–15. Figure 21 of
the ’402 Application is reproduced below.

Figure 21 of the ’402 Application depicts a front plan view of an
embodiment of a shower curtain ring, in which a flat upper surface extends
along the product’s hem. ’402 Application, ¶ 27.
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Appellant further contends that the ’402 Application supports
substituting Figure 21’s ring design into any of the other various
embodiments of the ’402 Application, specifically into Figures 4B and 4C,
reproduced below. Id. 16.

Figure 4B of the ’402 Application depicts a front view of shower
curtain rings according to “further embodiments” of the invention. Figure
4C is a top view of the embodiment of Figure 4B. ’402 Application, ¶ 14.
In support of substitution, Appellant points to Specification of the
’402 Application describing that “Various other examples of external slits
are provided herein” and the following language of the ’402 Application:
Preferably, the ring is an open ring with rounded edges, as
discussed above with respect to FIG. 2. Likewise, an open ring
with rounded edges (or one of the other embodiments of the
present invention), or a ring with a locking device (e.g. as
shown in FIGS. 22-27) can also be substituted for the closed
ring shown in the other figures of the present application.
Eventhough [sic] a simple slit in a closed ring is often provided
for simplicity of illustration, the present inventions are not
limited to such a closed ring.
’402 Application, ¶ 58.
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Accordingly, Appellant contends that Figure 21 of the ’402
Application can be substituted into Figure 4B to demonstrate the claimed
spacing depicted in Figures 2 and 8 of the ’078 Patent and in Figure 4C to
demonstrate the thickness or depth and width of the rings of the shower
curtain depicted in Figures 2 and 6 of the ’078 Patent. Id. 17–21.
The Examiner maintains that the claimed design is not supported.
Appellant does not dispute that the ’402 Application fails to include a single
express embodiment encompassing all of the features of the claimed design.
Initially, the Examiner contends that there is insufficient disclosure from the
above quoted paragraph that the inventor contemplated picking and choosing
features, other than the closure of a ring (rounded, locking, simple slit or
closed), from the disclosure overall to combine in the way represented in the
claimed design. See Final Act. 3 (“there is no evidence provided that
explicitly connects FIG. 21 with the precise design features shown in the
previous embodiments to create the claimed design as presented in the ’078
patent”). Accordingly, the Examiner contends that the embodiment of
Figure 21 is not shown to have the spacing, the right angle edge
configurations or thickness of the shower curtain rings of the ’078 Patent
design. Further, the Examiner contends that none of the ’402 Application
figures describes a ring with inner surface of the aperture having a flat
surface with a right-angled edge, as depicted in Figure 2 of the ’078 Patent.
We need not address whether or not substitution of the embodiment of
Figure 21 into other embodiments of the ’402 Application is sufficiently
supported to meet the spacing, thickness and exterior edge shape of the ’078
Patent design because we agree with the Examiner that the inclusion of a flat
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inner surface of the aperture with right-angled edges is a new feature of the
claimed design that is not supported in any figure or disclosure of the ’402
Application.
Appellant contends that, because Figure 21 in the ’402 Application
does not have additional lines or shading around the opening to demonstrate
the opening has a rounded edge, one of ordinary skill in the art would
understand that as a matter of design convention, Figure 21 expressly
includes right angle edges or that right angle edges were contemplated and
within the scope of the figure. Appeal Br. 24. Appellant presents an
annotated Figure 21, indicated as Figure 21-2, to illustrate what Appellant
argues would depict a curved surface, which is reproduced below.

Figure 21-2 from Appellant’s Appeal Brief depicts Figure 21 from the
’402 Application with annular concentric lines around the aperture to depict
varying depth around the aperture.
Further, Appellant points to the written description of the ’402
Application as confirmation the inventor did not consider rounded edges to
be an absolute necessity. Appeal Br. 24. Specifically, the Specification of
the ’402 Application, referring to the embodiment in 4A–4C, states “the
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external and/or internal edges of the ring need not be rounded although they
are preferably so.” ’402 Application, ¶ 48. We are not persuaded that the
skilled artisan would have considered that the ’402 Application has written
descriptive support for, specifically, flat inner surfaces of ring apertures with
right-angle edges.
As the Examiner points out, the rings of Figures 4A–4C, which
according to the description are depicted as having “rounded” internal edges,
do not contain shade lines of the sort purported by Appellant. Ans. 10.
Therefore, we are not persuaded that the lack of such ‘additional lines’
around the opening is clear descriptive support for a flat inner edge of the
circular aperture with right angle. Furthermore, the disclosure in the ’402
Application which states, “the external and/or internal edges of the ring need
not be rounded although they are preferably so,” is generic of several
possible internal edge shapes other than rounded (including for example
angled, or hexagonal) and falls short of clearly describing a flat surface with
a right-angle edge, as is depicted in Figure 2 of the ’078 Patent. Therefore,
we agree with the Examiner’s conclusion that a shower curtain design with
rings having a flat inner surface with right angles edges is new matter added
to the design of the ’078 Application. Id. 10.
Appellant has not shown error in the Examiner’s determination that
the ’402 Application does not demonstrate the Applicant had possession of
the claimed design of ’078 Patent as of the filing date of the ’402 application
as is required by §120 to establish priority and benefit of the earlier filing
date of the ’402 Application. Therefore, the rejection of the claimed design
as unpatentable over Comfort Hookless in view of Sawaya is sustained.
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CONCLUSION
We affirm the Examiner’s rejection of the claimed design.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103 Comfort Hookless,
Sawaya
1
Overall
Outcome
1

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

jagr

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Patent Owner:

Morris E. Cohen
Goldberg Cohen LLP
1350 Avenue of the Americas
3rd Floor
New York, NY 10019

Third-Party Requester:

Bernhard P. Molldrem, Jr.
224 Harrison Street Ste. 200
Syracuse, NY 13202