29241338 (B.P.A.I. Jan. 22, 2010)

Ex Parte Cueto

Board of Patent Appeals and InterferencesJan 22, 2010

29241338 (B.P.A.I. Jan. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AARON CHARLES CUETO ____________ Appeal 2009-009601 Application 29/241,338 Technology Center 2900 ____________ Decided: January 22, 2010 ____________ Before LINDA E. HORNER, STEVEN D.A. MCCARTHY, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-009601 Application 29/241,338 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of the sole claim pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a grippable container. Figure 1, reproduced below, is representative of the subject matter of appeal. Figure 1 is an elevation view of the grippable container with the front, left side, right side, and back views all being the same. Appeal 2009-009601 Application 29/241,338 3 THE REJECTION The Examiner relies upon the following as evidence in support of the rejections: Torongo, Jr. US D258,199 Feb. 10, 1981 Wilkinson US D345,696 Apr. 5, 1994 The sole claim pending is rejected under 35 U.S.C. § 103(a) as unpatentable over Wilkinson and Torongo, Jr. THE ISSUE At issue is whether the Appellant has shown that the Examiner erred in making the aforementioned rejection. This issue turns on whether it would have been obvious to modify the teachings of Wilkinson and Torongo, Jr. to obtain the ornamental design of the claimed invention. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 FF1. The Appellant’s claimed design includes a rounded top portion, a concave band below the center area of the object, and a rounded bottom as marked in Figure 2 below: 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-009601 Application 29/241,338 4 Figure 2, annotated, shows the Appellant’s claimed design with the rounded bottom, the concave band below the center area of the object, and the rounded top all marked sequentially from the bottom. FF2. Wilkinson in Fig. 1 discloses a grippable container having a top with a first flat portion, a second flat portion (tapered), and a third flat portion. The container has a fourth flat portion near the bottom. Wilkinson also discloses a concave band placed at the center area of the container and marked in Figure 3 below. Appeal 2009-009601 Application 29/241,338 5 Figure 3, annotated, shows the Wilkinson design in an elevation view marked in sequence from the bottom with flat portion 4, a concave band at the center area, flat portion 1, flat portion 2 (tapered), and flat portion 3 at the top. FF3. Torongo, Jr. discloses a roll-on dispenser in Fig. 4 having a curved top. Torongo, Jr. also has a neck portion positioned above the center area and marked in Figure 4 below. Appeal 2009-009601 Application 29/241,338 6 Figure 4, annotated, is an exploded elevation view of Torongo, Jr.’s design with the curved top and neck portion above the center area both marked. PRINCIPLES OF LAW Principles of Law Relating to Obviousness “Section 103 applies to design patents in much the same manner as it applies to utility patents. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441 (Fed. Cir. 1984) (‘35 U.S.C. § 103 (and all the case law interpreting that statute) applies with equal force to a determination of the obviousness of either a design or a utility patent.’)” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). Appeal 2009-009601 Application 29/241,338 7 “[W]hen a § 103 rejection is based upon a combination of references, there must be a reference, a ‘something in existence,’ the design characteristics of which are basically the same as the claimed design.” In re Rosen, 673 F.2d 388, 391 (CCPA 1982). The designs of other references may properly be relied upon for modification of this basic design when the references are ‘so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’ In re Glavas, 43 CCPA 797, 801, 230 F.2d 447, 450 (1956).” In re Carter, 673 F.2d 1378, 1380 (CCPA 1982). ANALYSIS The Appellant argues that Wilkinson does not have “design characteristics which are basically the same” when compared to the present design (Br. 3). The Appellant also argues the Torongo, Jr. patent “is significantly different from that of the Wilkinson patent” in the overall visual impression (Br. 4). The Appellant further argues that the rejection of the claim is improper because the combination of Wilkinson and Torongo, Jr. has been improperly made to meet the present design (Br. 5). The Appellant argues that “the location of the concave band is offset vertically downwards from the center of the container in the present design relative to the central location of the concave band in the Wilkinson patent”. Thus, the Appellant argues, the hybrid combination would present a different appearance in view of the location of the concave band in the present design (Br. 5). In contrast, the Examiner has determined that Wilkinson and Torongo, Jr. are both proper references by showing containers similar in overall Appeal 2009-009601 Application 29/241,338 8 appearance and configuration to meet the present design (Ans. 6). The Examiner has also determined that the combination of Wilkinson and Torongo, Jr. has been properly applied to meet the present design claim (Ans. 5-6). We agree with the Appellant that the combination of the references of Wilkinson and Torongo, Jr. would not have led to the claimed design. The Appellant’s claimed design includes a rounded top portion and a concave band placed below the center area of the object (FF1). In contrast, Wilkinson discloses a container with a concave band placed near the center area of the container (FF2) and Torongo, Jr. discloses a roll-on with a neck portion above the center area (FF3). In order to meet the Appellant’s claimed design the Wilkinson reference would have to be modified to have a rounded top as shown by Torongo, Jr. (FF3) and then further include a concave band placed below the center portion of the device, which is not shown in either reference. The Examiner did not acknowledge this difference between the design of Wilkinson and the claimed design, and thus did not articulate why the placement of the concave band below the center portion of the device would have been obvious in view of the prior art. Both the prior art references of Wilkinson and Torongo, Jr. fail to show a concave band placed below the center portion of each respective device (FF2, FF3). For these reasons, the rejection of the claim is not sustained. Appeal 2009-009601 Application 29/241,338 9 CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting the claim under 35 U.S.C. § 103 (a) as unpatentable over Wilkinson and Torongo, Jr. DECISION The Examiner’s rejection of the claim is not sustained. REVERSED MP STITES & HARBISON PLLC 1199 NORTH FAIRFAX STREET SUITE 900 ALEXANDRIA VA 22314