Ex Parte Bergfalk

Board of Patent Appeals and Interferences

Jun 6, 2001

29066498 (B.P.A.I. Jun. 6, 2001)

THIS DOCUMENT IS NOT BINDING PRECEDENT OF THE BOARD
Paper 42
Filed by: Trial Section Merits Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT R. WINTER
Junior Party,
(Design Patent 403,501),
v.
KENT BERGFALK
Senior Party,
(Application 29/066,498).
______________
Patent Interference No. 104,531
_______________
Before LEE, GARDNER-LANE, and MEDLEY, Administrative Patent
Judges.
GARDNER-LANE, Administrative Patent Judge.
FINAL DECISION
I. Introduction
The parties waived oral hearing (Papers 33 and 41).
Accordingly, no oral hearing was held in the interference.
Findings of fact
The record supports, by a preponderance of the evidence, the
following findings, as well as any findings set out in the
discussion portion of this DECISION.
1. The interference involves a Winter design patent
403,501 ("'501") and a Bergfalk design application 29/066,498
("'498").
2. The Winter '501 patent is based on design application
29/086,087, filed 6 April 1998.
3. Winter has been accorded benefit for the purpose of
priority of design application 29/069,799 ("'799"), filed
17 April 1997, which issued as design patent 403,500 on 5 January
1999 (Paper 1 at 48).
4. The Bergfalk '498 application was filed on 13 February
1997.
5. Bergfalk has not been accorded benefit for the purpose
of priority of any earlier filed application (Paper 1 at 49).
6. Because the '498 filing date of 13 February 1997 is
earlier than the earliest filing date accorded to Winter (i.e.,
17 April 1997), Bergfalk is senior party and Winter is junior
party.
7. The subject matter of the '501 patent and the '498
application is a snowboard key chain.
8. Figures 1-3 from the '501 patent reproduced below
illustrate the '501 key chain:
9. Figures 1-3 from the '498 application reproduced below
illustrate the '498 key chain:
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10. According to the examiner's statement under 37 CFR
§ 1.609(b) (attachment to Paper 1):
Any variation in appearance between the designs
[of the '501 key chain and the '498 key chain] is de
minimus. Specifically, the key ring in Patent Number
D403,501 is considered functional and therefore not
subject to design patent considerations. Additionally,
the slight undulation in the body of D403,501 does not
provide a patentably distinct overall appearance from
the pending application Serial Number 29/066,498.
11. The count in the interference is as follows (Paper 1
at 50):
A design according to claim 1 of Bergfalk (29/066,498)
or
A design according to claim 1 of Winter (Des. 403,501).
12. All the figures of each party, i.e., figures 1-6 of
Winter and figures 1-3 of Bergfalk, correspond to the count
(Paper 1 at 50).
13. Both parties are acting pro se, i.e., are representing
themselves without the aid of counsel.
14. Robert R. Winter is said to be the sole inventor of the
subject matter of the '501 patent and Kent Bergfalk is said to be
the sole inventor of the subject matter of the '498 application.
15. Each party indicated that it planned to file no
preliminary motions in a conference call held on 21 June 2001
(See paper 22). Neither party has filed any preliminary motion.
16. On 21 July 2000, Bergfalk filed a preliminary statement
(Paper 25). In the preliminary statement Bergfalk states that he
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conceived the idea for a key chain on 8 March 1996 and made a
drawing of the key chain on 10 March 1996.
17. Winter did not file a preliminary statement within the
time set by the Administrative Patent Judge's Order of 23 June
2000 (Paper 22).
18. An ORDER was issued on 24 July 2000 extending the time
for filing preliminary statements to 7 August 2000 (Paper 26).
19. On 7 August 2000, Winter filed a preliminary statement.
In the preliminary statement Winter states that he "commenced
design and construction of a snowboard keychain" and bought a
full size snowboard from Sports Chalet for guidance in the
general appearance of snowboards on 5 October 1996. According to
Winter, a model of the key chain was completed on or about
1 November 1996 and "the first technical drawings were then made
from the wooden snowboard keychain." Winter states that he
disclosed his design to Tony Hiebel on 1 November 1996 and that
he hired Mr. Hiebel to assist in the construction of the key
chain model.
20. On 7 August 2000, Winter filed a submission entitled
"WINTER, JUNIOR PARTY, CASE IN CHIEF" (Paper 28). The submission
consists of the following:
(a) a photocopy of what appears to be two checks dated
10/5/96 and 10/7/96 said to be checks written to pay for the
snowboard and to pay Mr. Hiebel for work on the snowboard key
chain;
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(b) a statement dated 3 August 2000 and signed by Tony
Hiebel which says:
I Tony Hiebel declare that I was Commissioned By
Robert R. Winter to make a Wooden Snowboard keychain
simialar [sic] to the full size snowboard that he
brought me.
I made the wooden snowboard keychain between
October7, 1996 and November 1, 1996.
I understood that Robert R. Winter was going to
make molds from the wooden snowboard keychain to make
plastic snowboard keychains. I was paid in full for my
work.;
(c) drawings, reproduced below, said to be drawings by
Winter of the snowboard key chain;
(d) a photocopy of what appears to be an invoice from
"Unique Mold" to "Creative Arts-Mini Fins" dated 4/13/98 showing
a charge of $1700.00 for "Mold Work High Polish" with the
notation "Paid in Full" and signed by Robert Winter and another
name that we cannot decipher; and
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(e) a photocopy of what appears to be an invoice from
"Performance Polymers" to "Creative Arts" dated 4/27/98 showing a
shipment of 1760 unidentified units at a unit price of 2,0000 for
a total charge of $3520.00.
21. On 11 October 2000, Bergfalk filed a submission
entitled "BERGFALK CASE-IN-CHIEF" (Paper 30). The submission
consists of the following:
(a) a photocopy of what appears to be a letter to "Kent"
signed by Minda De Voto and stating that "[t]he first day you
brought your product into Tom Girl, in Breckenridge, was
February 15, 1996....I have carried the snowboard keychains ever
since";
(b) a photocopy of what appears to be an invoice to "Tom
Girl" dated 10/4/96 for 30 engraved snowboard key chains and 30
colored snowboard key chains for a total charge of 210.00 and
identifying the salesperson as "Kent";
(c) a photocopy of what appears to be an receipt dated
11/4/96 for the sale of 5 key chains by "tom girl";
(d) a photocopy of what appears to be three checks dated
11/4/96, 3/2/97, and 11/16/97, from "Tom Girl Corp." payable to
the order of Kent Bergfalk;
(e) a statement dated 5 October 2000, signed by Terry R.
Barrett and stating that he is the owner of "Rarities & Remedies"
in Breckenridge, Colorado and that on 4 November 1996 he bought
snowboard key chains for resale in his store from a person
identifying himself as Kent Bergfalk;
8
(f) a photocopy of what appears to be a check dated 11/4/96
from "TAAK IV, INC. DBA Rarities & Remedies" payable to the order
of Kent Bergfalk.
22. On 8 December 2000, Winter filed a paper entitled
"WINTER ISSUES TO BE CONSIDERED AT FINAL HEARING 37 CFR 1640(b)"
(Paper 32).
23. Attached to the paper is what Winter says is "an old
invoice that proves that I have been selling snowboard key chains
manufactured in the orient from November 20, 19991 [sic]".
Winter states that "[t]his invoice and letter from Beach Break
Café in Oceanside, CA. proves that Kent Bergfalk did not invent
the snowboard key chain!"
24. A photocopy of a letter having a "Beach Break Cafe"
letter head addressed to Robert Winter dated 6 December 2000 and
signed by Zellarah A. Dwelley is attached to the paper (Paper
32). The letter states:
I bought snowboard key chains from you at Creative Arts
on November 20, 1991. Along with the snowboards, I
also bought assorted key chains with by [sic] logo
printed on them at that time for $1.00 each.
I have enclosed the invoice #1453 dated 11-20-91.
Thank you for the great service!
25. Two papers labelled "DUPLICATE" and "TRIPLICATE" that
appear to be two copies of an invoice are also attached to the
paper (Paper 32). The invoices are dated 11/20/91 and appear to
be from "Creative Arts/Mini Fins" to "Beach Break Cafe". One of
the items listed on the invoice is "10 Snowboards" at a unit
price of $1.00. The salesperson is identified as "RW".
9
26. Also attached to the paper (Paper 32) is a list of what
appears to be 10 company names and their telephone numbers. The
notations "-HOPEFULLY THIS HELPS! I CAN ALMOST GUARANTEE YOU
THEIRS [sic] MORE THAN THIS" and "These manufacturers all make
snowboard keychains! Some for 10 years! I think!" are printed
on the list.
27. Also attached to the paper (Paper 32) is what appears
to be some type of product information sheet for a product
identified as a "SNOWKEY". A "catalog date" of 2000 is on the
sheet.
28. Winter did not file a principal brief on the issue of
priority or derivation by 12 January 2001, the time set in the
Order of 23 June 2000 (Paper 22).
29. On 5 April 2001, an order was issued extending the
times for filing briefs such that the junior party principal
brief on the issue of priority or derivation was due on or before
14 April 2001 (Paper 34).
30. On 13 April 2001, Winter filed a paper entitled
"JUNNIOR [sic] PARTY PRINCIPAL BRIEF ON THE ISSUE OF PRIORITY
AND/OR DERIVATION" (Paper 35).
31. The entire argument portion of Winter's brief is
reproduced below:
I will attempt to make a statement of the issues
presented for decision in the alleged interference.
I Robert Winter have been selling SNOWBOARD KEY CHAINS
since the YEAR 1991.
I have presented the patent office and Mr. Bergfalk
proof of this from a letter and an invoice from BEACH
BREAK CAFÉ in OCEANSIDE, CA. TEL. (706)439-6355 DATED
1
Finding of fact.
10
11-20-1991. These SNOWBOARD KEY CHAINS were made in the
Orient.
I also prepared my CASE IN CHIEF stating when I made
and applied for patents on my SNOWBOARD KEY CHAINS that
I make in the U.S.A.
My argument is simple. HOW COULD I BE SELLING
SNOWBOARD KEY CHAINS IN 1991 IF THE SNOWBOARD KEY CHAIN
WAS NOT INVENTED UNTIL MARCH OR APRIL 1996 BY Kent
Bergfalk.
Therefore Kent Bergfalk simply made a snowboard key
chain in 1996 but HE IS NOT THE ORIGINAL INVENTOR OF
THE SNOWBOARD KEY CHAIN since I HAVE BEEN SELLING
SNOWBOARD KEY CHAINS SINCE THE YEAR 1991.
Therefore Kent Bergfalk cannot claim interference on a
snowboard key chain or anything for that matter.
What I mean is Kent could make an automobile TIRE
tomorrow but that DOES NOT mean he invented The wheel.
So he has no valid claim against my design patent of my
unique interpretation of a snowboard key chain.
If the Patent Office would like to give Kent Bergfalk a
design patent for his unique design of a snowboard Key
chain that's fine with me.
But it is my opinion that neither Kent Bergfalk nor the
Patent Office has a right to claim interference
Because I have proven that I have been selling
SNOWBOARD KEY CHAINS 5 YEARS BEFORE KENT BERGFALK made
NOT INVENTED his snowboard key chains.
II. Discussion
A rebuttable presumption exists that the inventors made
their invention in the chronological order of their effective
filing dates. The burden of proof is on the party that contends
otherwise. 37 CFR § 1.657. Bergfalk filed its '498 application
before Winter filed its '799 benefit application (FF1 6).
Accordingly, Bergfalk is presumed to have invented the snowboard
key chain of the count before Winter. Winter has the burden of
proving otherwise.
2
This is the same as the principal brief.
11
Priority of invention goes to the first party to reduce an
invention to practice unless the other party can show that it was
the first to conceive the invention and that it exercised
reasonable diligence in later reducing that invention to
practice. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d
1896, 1901 (Fed. Cir. 1998). According to Winter's preliminary
statement, Winter completed a model of the snow board key chain
on or about 1 November 1996. We take 1 November 1996 as the date
on which Winter states that he actually reduced the invention to
practice (See 37 CFR § 1.623(a)(5)). Since it is Winter's
position that he actually reduced to practice the invention prior
to the '498 filing date of 13 February 1997 (FF 19), diligence
does not appear to be an issue in the interference. In its brief
for final hearing2, Winter does not argue diligence.
A reduction to practice may be a constructive reduction to
practice, which occurs when a patent application is filed.
Cooper v. Goldfarb, 154 F.3d at 1327, 47 USPQ2d at 1901.
Bergfalk constructively reduced its invention to practice on
13 February 1997, the date it filed its '498 application.
Accordingly, Winter must at least show that it actually reduced
to practice an embodiment within the scope of the count prior to
13 February 1997.
In order to establish an actual reduction to practice, the
inventor must prove, inter alia, that the inventor constructed an
embodiment that met all the limitations of the interference
12
count. Cooper v. Goldfarb, 154 F.3d at 1327, 47 USPQ2d at 1901.
We hold that Winter has not met its burden.
Winter's principal brief:
In its principal brief (Paper 35), Winter does not argue
that he invented the snowboard key chain of the count prior to
Bergfalk. Instead, Winter argues that he was selling snowboard
key chains "made in the Orient" in 1991, prior to Bergfalk's '498
filing date. Winter does not claim that he invented the key
chains that were sold in 1991. Therefore, it seems to be
Winter's position that Bergfalk is not entitled to a patent since
snowboard key chains were commercially available in 1991. We
find at least two problems with the Winter position:
(1) If it is Winter's contention that Bergfalk is
unpatentable over prior art, e.g., the key chains Winter says he
sold in 1991, then the appropriate action would have been to file
a preliminary motion under 37 CFR § 1.633(a) seeking judgment
against Bergfalk on the ground that the Bergfalk claim is
unpatentable in view of the snowboard key chains that were
commercially available. However, Winter did not file any
preliminary motion.
A party may not raise at final hearing any matter which
properly could have been raised by a motion under § 1.633 unless
the party shows good cause why the issue was not properly raised
by a timely filed motion. 37 CFR § 1.655(b). Winter has not met
its burden in showing good cause why a preliminary motion under
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§ 1.633(a) was not filed at the appropriate time. Allowing
Winter to argue the unpatentability of the Bergfalk claim in
Winter's principal brief under the circumstances would unfairly
prejudice Bergfalk since Winter did not file or serve the Beach
Break Cafe invoices, the letter from Dwelley, or the list of 10
companies said to be selling snowboard key chains, until
8 December 2000, after both Winter and Bergfalk had filed their
cases-in-chief (See FF 20, 21, and 22); and
(2) Even if we were to consider evidence that Winter has
filed indicating that snowboard key chains were commercially
available prior to 13 February 1997, Winter has not shown that
the commercially available key chains anticipate (35 USC § 102)
or would have rendered obvious (35 USC § 103) the snowboard key
chain claimed by Bergfalk.
Anticipation requires the invention to have been known in
the art in the detail of the claim; that is, all of the elements
and limitations of the claim must be shown in a single prior
reference, arranged as in the claim. Karsten Mfg. Corp v.
Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291
(Fed. Cir. 2001). Winter provides no description of the
snowboard key chains he says he sold in 1991. The invoices and
letter supplied by Winter (attachments to Paper 32) do not
provide a description of the snowboard key chains said to have
been sold by Winter in 1991. Winter has not shown that the key
chains he says he sold in 1991 have all the elements and
limitations of the key chain of the Bergfalk claim or
14
alternatively that the key chains he says he sold in 1991 would
have rendered obvious the key chain of the Bergfalk claim.
Winter attached a list of 10 companies said to manufacture
snowboard key chains to its list of issues to be considered at
final hearing (Paper 32). Winter provides no objective evidence
that the companies manufacture snowboard key chains or that the
key chains anticipate or would have rendered obvious the Bergfalk
key chain.
Other Winter arguments:
Winter argues, in his preliminary statement but not in his
brief for final hearing (i.e., the principal brief), that he and
Mr. Hiebel produced a model of a snowboard key chain on or about
1 November 1996 and that thereafter technical drawings were made
from the model. A party's brief for final hearing must contain
an argument containing the contentions of the party with respect
to the issues it is raising for consideration at final hearing
and the reasons therefor. 37 CFR § 1.656(b)(6). In the brief
for final hearing, Winter does not argue that Winter invented the
snowboard key chain of the count prior to Bergfalk, therefore we
need not consider the arguments made in the Winter preliminary
statement. Nonetheless, even if we were to consider the
arguments in the preliminary statement and the evidence presented
in the Winter case-in-chief, Winter has not shown that he
reduced to practice a key chain within the scope of the count
prior to Bergfalk.
15
According to Winter, he disclosed the key chain design to
Mr. Hiebel on 1 November 1996 (FF 19). Mr. Hiebel has submitted
a statement indicating that he made a wooden snowboard key
chain at Winter's request between 7 October 1996 and 1 November
1996 (FF 20). Mr. Hiebel does not describe the key chain in any
detail nor does he state that the key chain would fall within the
scope of the count.
Winter also submitted invoices from various companies. None
of the invoices describe the key chain in any detail or indicate
that the key chain would fall within the scope of the count
(FF 20).
In the Winter preliminary statement, Winter mentions
technical drawings made from the model Mr. Hiebel made
(FF 19). With the Winter case-in-chief, Winter submitted drawing
said to be his drawings of the snowboard key chain (FF 20). No
drawing is attached to the preliminary statement and it is not
clear that the technical drawings referred to in the preliminary
statement are the same as Winter's drawings submitted with the
Winter case-in-chief. Even if we do assume that the drawings are
the same, it is not clear that the key chain of the submitted
drawings falls within the scope of the count. For instance, the
key chain of the count has a hole for placing a ring through it
and is slightly curved upward at the front and back ends of the
snowboard (see, e.g., fig. 2 of '501 and fig. 1 of '498). The
key chain of the drawing submitted by Winter does not appear to
have a hole or a slight curve at the front and back ends. Even
16
if the key chain of the drawings can be said to fall within the
scope of the count, there is no corroborating evidence indicating
that the key chain of the drawings is the same as the snowboard
key chain Mr. Hiebel says he made. Inventor testimony must be
corroborated by independent evidence. Cooper v. Goldfarb, 154
F.3d at 1330, 47 USPQ2d at 1903.
The physical embodiment relied upon as an actual reduction
to practice must include every limitation of the count. Cooper
v. Goldfarb, 154 F.3d at 1328, 47 USPQ2d at 1902. We have not
been directed to evidence sufficient to persuade us that the key
chain Mr. Hiebel says he made was within the scope of the count.
We have not been directed to evidence sufficient to indicate to
us that the key chain of the submitted drawings is the same as
the key chain Mr. Hiebel says he made between 7 October 1996 and
1 November 1996 or even that the key chain of the submitted
drawings falls within the scope of the count. Accordingly,
Winter has not shown that it reduced to practice a key chain
within the scope of the count prior to Bergfalk's '498 filing
date of 13 February 1997.
It is not necessary to consider Bergfalk's arguments (Paper
36) since Winter has not established a reduction to practice
prior to Bergfalk's constructive reduction to practice.
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III. Order
Upon consideration of the record of the interference and for
reasons given, it is
ORDERED that judgment on priority as to
Count 1, the sole count in the interference, is awarded against
junior party ROBERT R. WINTER;
FURTHER ORDERED that junior party, ROBERT R. WINTER,
is not entitled to a patent containing the claim and figures 1-6
of design patent 403,501, which correspond to Count 1;
FURTHER ORDERED that a copy of this decision be given
a paper number and be entered in the administrative records of
Winter's 403,501 design patent and Bergfalk's 29/066,498 design
application.
______________________________)
JAMESON LEE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
______________________________) APPEALS AND
SALLY GARDNER-LANE ) INTERFERENCES
Administrative Patent Judge )
)
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )
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cc (via Federal Express):
Address for Winter:
Robert R. Winter
Extended Stay America
20251 Lake Forest Dr.
Lake Forest, CA 92630
Tel: 949-598-1898, ext. 7422
949-929-1575
Address for Bergfalk:
Kent Bergfalk
12281 W Quinn Dr.
Morrison, CO 80465
Tel: 303-933-4205