2019004293 (P.T.A.B. May. 1, 2020)

Eichler, Mark Joseph.

Patent Trials and Appeals BoardMay 1, 2020

2019004293 (P.T.A.B. May. 1, 2020)

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. 29/598,496 03/27/2017 Mark Joseph Eichler 255-001USDES1 5030 27791 7590 05/01/2020 ALLISON JOHNSON, P.A. 6016 Logan Ave. S. MINNEAPOLIS, MN 55419 EXAMINER PRICE, IEISHA N ART UNIT PAPER NUMBER 2915 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): allison@ajiplaw.com patent@ajiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARK JOSEPH EICHLER ____________________ Appeal 2019-004293 Application 29/598,496 Technology Center 2900 ____________________ Before JOHN C. KERINS, KEN B. BARRETT, and JILL D. HILL, 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 the inventor, Mark J. Eichler, as the real party in interest. Appeal Br. 3. Appeal 2019-004293 Application 29/598,496 2 BACKGROUND Appellant’s invention relates to a design for a shovel blade. The claim on appeal is “[t]he ornamental design for a shovel blade as shown and described.” Spec. 3. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Dishfunctional Designs http://dishfunctionaldesigns.blogspot.co m/2015/04/the-upcycled-garden-spring- 2015.html April 20, 2015 REJECTION The claim stands rejected under 35 U.S.C. § 102(b) as anticipated by Dishfunctional Designs. OPINION The Examiner finds that Dishfunctional Designs is substantially the same as the claimed design “because they both consist of a garden shovel with an indented tip wherein the overall shape and appearance is substantially the same.” Final Act. 4. The Examiner provides, for comparison, the following annotated side-by-side views of a portion of the Dishfunctional Designs blog image (left) and Figure 5 of the claimed design (right): Appeal 2019-004293 Application 29/598,496 3 Id. Figure 5 of the claimed design is described as “a rear elevational view of the shovel blade.” Spec. 3. According to the Examiner, “the depth and width of the indented portion of the shovel blade and the slope and ratio from the bottom of the indented portion of the blade to the tip portions of the two peaks as well as the shape and location of the two peak[s]” are “hardly different” and would satisfy the ordinary observer test. Final Act. 2. It is the Examiner’s position that, although “the shape and location of the two tip portions [of Dishfunctional Designs] appear not to be completely symmetrical,” this lack of symmetry appears “because the Dishfunctional Designs reference is shown at a slightly angled position in a perspective view,” such that “[p]roportionally the Dishfunctional Designs reference is substantially the same as the claimed design.” Id. at 3. Appellant argues, first, that all of the views that make up the claimed design are not shown in Dishfunctional Designs. Appeal Br. 10. According to Appellant, the rear and side views of Dishfunctional Designs are not shown, such that “the claimed design cannot be fairly assessed relative to the reference design.” Id. at 11 The Examiner responds that “[w]hen applying the ordinary observer test . . ., there is no language requiring that a prior art reference must include Appeal 2019-004293 Application 29/598,496 4 multiple views.” Ans. 5. According to the Examiner, “the sole view provided of the Dishfunctional Designs reference provides sufficient evidence that the claimed design and the Dishfunctional Designs reference resemble one another to a point that an ordinary observer would be deceived.” Id. Appellant also argues that Dishfunctional Designs does not anticipate the claimed design under the ordinary observer test. Appeal Br. 11. Appellant more specifically argues, inter alia, that “[t]he shape and location of the two tip portions of the right-most shovel blade of the Dishfunctional Designs reference do not appear symmetrical, whereas the shape and location of the two tip portions of the shovel blade of the claimed design are relatively symmetrical.” Id. at 15. According to Appellant, an ordinary observer “would attach importance to the differences in the symmetry of the tip portions of each shovel blade.” Id. As noted above, the Examiner disagrees with Appellant’s assertion of asymmetry, maintaining that “the shape and location of the two tip portions appear not to be completely symmetrical because the Dishfunctional Designs reference is shown at a slightly angled position in a perspective view.” Ans. 8. The Examiner finds that, “[p]roportionally the Dishfunctional Designs reference is substantially the same as the claimed design,” and the Dishfunctional Designs shovel “has been used, which exhibits some normal wear and tear.” Id. at 9. Appellant has the better argument. The Examiner’s finding that the asymmetry of Dishfunctional Designs is due to “a slightly angled position in a perspective view” (Ans. 8) is based on speculation. Appeal 2019-004293 Application 29/598,496 5 Further, Appellant claims the shovel tip design as a three dimensional article. In design patent applications, to establish anticipation, a prior art reference “‘must be identical in all material respects’” to the claimed design. MPEP § 1504.02 (citing Hupp v. Siroflex of America Inc., 122 F.3d 1456 (Fed. Cir. 1997)). The Examiner only provides a comparison of the front view of the Dishfunctional Designs to a rear view (Figure 5) of the claimed design. Ans. 5. We understand that the Examiner intended to compare the front view (Figure 2) of the claimed design to the Dishfunctional Designs shovel, and comparison of the front view of the claimed portion of the design does not differ significantly from the claimed portion of the rear view thereof. However, the Examiner has not established that remaining views of the claimed design lack material differences. Thus, while the Examiner is able to compare a single view of the claimed design to a front portion of the Dishfunctional Designs shovel, no comparison can be made between side and rear views, and a determination of the two designs being identical in all material aspects is, at best, based on speculation about the appearance of the side and rear of the Dishfunctional Designs shovel. For the above reasons, we do not sustain the anticipation rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102(b) Dishfunctional Designs 1 Appeal 2019-004293 Application 29/598,496 6 REVERSED