Ex Parte D536,881 S et al

Patent Trial and Appeal Board

Jul 30, 2015

95001793 (P.T.A.B. Jul. 30, 2015)

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.
95/001,793 10/25/2011 D536,881 S 110199-B 2838
58110 7590 07/30/2015
ALBERT BORDAS, P.A.
5975 SUNSET DRIVE
SUITE 607
MIAMI, FL 33143
EXAMINER
CALABRESE, MARY ANN
ART UNIT PAPER NUMBER
2913
MAIL DATE DELIVERY MODE
07/30/2015 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
____________________

MAJESTIC MIRRORS AND FRAME, LLC
Requester/Respondent
v.
ELECTRIC MIRROR, L.L.C.
Patent Owner/Appellant
____________________

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Technology Center 2900
____________________

Before: STEVEN D.A. MCCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

1
Patent US D536,881 S was issued to James V. Mischel, Jr. et al. on
February 20, 2007 (hereinafter referred to as the '881 patent).
Reexamination Certificate US D536,881 C1 was issued August 4, 2009 in
Reexamination 90/008,939. Reexamination Certificate US D536,881 C2
was issued October 26, 2010 in Reexamination 90/009,391.
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
the Examiner’s rejection of the sole claim. We have jurisdiction under
35 U.S.C. § 315(b).
We are informed that the present patent is involved in a litigation
styled Majestic Mirrors & Frame LLC v. Electric Mirror, LLC, case no. 07-
21300-CIV-Hoeveler/Bandstra (S.D. Florida).
We REVERSE and enter NEW GROUNDS OF REJECTION.
THE INVENTION
The Patent Owner's invention is directed generally to a design for a
lighted mirror as depicted in the figures of the Patent. Figure 1 of the '881
patent, reproduced below, is a perspective view illustrating the design.

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Figure 1 depicts the appearance of a framed mirror that includes two
elongated lighted elements.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Electric Mirror's 2003 Lighted Mirror Brochure, including the
2003 Fusion Brochure ("Fusion").
2002 Décor Moulding & Supply Company catalog, showing
sample 8790 ("8790 sample").
2002 Studio Moulding Catalog, showing sample 25501
("25501 sample").
Samples of these references are of record in the file of the reexamination.
THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fusion and the 8790 sample. Ans. 5.
2. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fusion and the 25501 sample. Id.
ANALYSIS
The Rejections on Appeal
Each of the rejections on appeal relies on a combination of the Fusion
mirror with one of two moulding samples. The Examiner and the Requester
agree that the Fusion mirror depicts a mirror having light bars as depicted in
the '881 patent with a simple frame bordering the mirror. See, e.g. Req.
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Resp. Br. 6. According to the Requester, the Fusion mirror "clearly shows a
framed mirror" and points to the schematic drawing in the Fusion brochure.

The Figure above shows a schematic front view of the Fusion mirror
depicted in the sales brochure.
We agree with the Requester that the mirrors and the light bars are
identical or nearly identical in appearance. We also agree with the
Requester that the schematic in the prior art has double lines around its
periphery. As explained by the Patent Owner, however, it is just as plausible
that an ordinary designer would have understood the double lines around the
Fusion mirror to be merely a rounded "pencil polish" edge of the glass itself
and not actually a frame. App. Br. 14 and 27–29, citing Declaration of
James V. Mischel. In other words, the Examiner and the Requester have not
proven that the Fusion mirror had a frame. Accordingly, we cannot agree
that the Fusion mirror qualifies as a proper Rosen reference by being "a
something in existence, the design characteristics of which are basically the
same as the claimed design," which would require a frame not present in
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Fusion. In re Rosen, 673 F.2d 388, 391 (CCPA 1982). See App. Br. 19–20
& 29–30. As such we do not sustain the Examiner's rejections based upon
the Fusion mirror.
NEW GROUNDS OF REJECTION
Cordova Sky Momentum
Figure 6 of the ’881 patent, reproduced below, is a perspective view
of a “second embodiment” of the claimed design:

Figure 6 depicts the appearance of a framed mirror that includes two
elongated lighted elements. As best shown in Figure 7, the mirror is
generally rectangular, with the two elongated lighted elements being located
adjacent, and parallel to, opposing long edges of the mirror. As best shown
in Figures 7 and 8, the frame includes a flat front surface adjacent the mirror,
a bevel that tapers toward the back, which surrounds the flat front surface,
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and a flat side surface having a width of a portion of the thickness of the
frame.
The embodiment of Figures 6–10 of the ’881 patent would have been
obvious from the teachings the 2003 Cordova Sky (Momentum) Brochure
(Exh. H to the original Reexamination Request) (also referred to herein as
"Momentum Brochure") in combination with the Fusion mirror and either
the 8790 sample or the 25501 sample. We need not address separately
whether the embodiment of Figures 1–5 would have been obvious from
those teachings.
In the Right of Appeal Notice, the Examiner originally rejected the
claim of the '881 patent over the Momentum mirror in combination with the
Fusion mirror and either the 8790 sample or the 25501 sample. RAN 14–15.
The Examiner, after reviewing the arguments presented by both sides in this
appeal, withdrew this rejection in the Answer. Ans. 3, 10. The Examiner
did not explain why the rejection was withdrawn other than to refer
generally to the Patent Owner’s arguments in the Appeal Brief. Id.
Regardless, the Examiner did make the determination that this rejection was
proper in the first instance. By making this rejection, the Examiner
determined a reasonable likelihood of prevailing, which is not appealable.
See 35 U.S.C. § 312(c); cf. Belkin Intern., Inc. v. Kappos, 696 F.3d 1379
(Fed. Cir. 2012). All we do here is reinstate what we believe to have been a
proper rejection.
Various models of the Momentum mirror are depicted in the
Momentum Brochure, both in a photograph on the front cover of the
brochure and in drawing figures on the second page. Two of the drawing
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figures showing one model of the Momentum mirror, including front and
side views, are reproduced below:

The drawing depicts a framed mirror that includes elongated lighted
elements. As best shown in first of the two figures, the mirror is generally
rectangular, with the elongated lighted elements located adjacent and parallel
to each of the four edges of the mirror. The brochure describes the frame as
a “low profile wood frame.”
We adopt the following findings and reasoning of the Examiner
previously articulated in the record as specifically applied to the above noted
model of the Momentum mirror:
The Momentum design shows a framed
rectangular mirror with an inner lit element
running along its edges, having an overall
appearance remarkably similar [to the claimed
design]. However, the [claimed design] differs
[from the Momentum design] in that the inner lit
elements only run along the two vertical opposing
sides and the frame element consists of a 3 sided
moulding with a flat front, a beveled side and a flat
side along the outer perimeter. The Fusion design
teaches that [a mirror] with inner lit elements along
its edges can be comprised of two vertical parallel
lit bars as shown in the [claimed design]. The
[8790 sample] design teaches that frame
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mouldings can be wide, angled and three sided
with a flat front, a beveled side and a flat side
along the outer perimeter as shown in the [claimed
design]. Any slight difference in the length or
width of the mirror and the distance of the inner lit
elements from the edges is considered to be de
minimis and does not affect the overall aesthetic
appearance of the design. Any difference in the
width of the flat side and the angle of the moulding
sides is considered to be de minimis and does not
affect the overall aesthetic appearance of the
design. Where the only substantial difference
between a design and the prior art is one of
obvious changes in proportioning, the design is not
patentable. In re Stevens, [173 F.2d 1015] (CCPA
1949). It would have been obvious to a designer
of ordinary skill in the art at the time the invention
was made to modify the [Momentum] mirror using
only the two vertical parallel lit bars along the
edges and using the wide, angled three sided frame
moulding as taught by the Fusion mirror and the
[8790 sample]. This combination would [have]
result[ed] in a design having an appearance
strikingly similar to the claimed design and over
which the claimed design would have [had] no
patentable distinction.
Ans. 8–9.
The Patent Owner argues that the Momentum mirror is not a proper
primary reference and that the Patent Office has already determined that
Momentum is not a proper primary reference. App. Br. 46–47. The
Momentum mirror and the embodiment of the claimed design depicted in
Figures 6–10 each consists of a framed, rectangular, planar mirror. Each has
a lighted element or lighted elements extending adjacent, and parallel to,
opposed, vertical columns of the frame. The two mirrors differ in that the
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Momentum mirror, as depicted in the drawing, includes a raised lighted
element having horizontal portions adjacent, and parallel to, the horizontal
beams of the frame connecting the two vertically-extending portions of the
lighted element. The claimed design includes flush lighted elements lacking
such horizontal portions; on the contrary, the two vertically-extending
elements fail to reach to the top and bottom horizontal beams of the frame.
See App. Br. 57–61. The drawing figures of the Momentum Brochure
indicate that the frame has a flat, front surface and a flat, beveled portion,
like the frame of the claimed design.
2
The drawing figures do not depict a
frame having a flat, side surface corresponding to the thin, flat, side surface
of the frame in the claimed design. The design characteristics of the
Momentum mirror, however, are basically the same as the claimed design.
Both the configuration of the Momentum mirror and the claimed
design are characterized by, in the words of the Momentum Brochure,
similar “clean lines and luminescent properties.” In both cases, vertically-
extending bar or bar-like portions of lighted elements adjacent opposing
sides of the frames illuminate at least the middle portion of the reflective
surface of the mirror. In this sense, the design characteristics of the lighted
elements and reflective surfaces of the two mirrors are basically the same as
required by Rosen even if the lighted element of the Momentum mirror

2
The photograph on the front of the Momentum Brochure indicates that the
frame has a flat, front surface and a beveled surface with what appears to be
a shallowly curved profile. The Patent Owner’s arguments that design
features of the frame depicted in the photograph are “indiscernible,” see
App. Br. 42, as well as the Patent Owner’s argument that the beveled surface
shown in the photograph is “substantially curved,” see id., are not persuasive
as the drawings in the Momentum Brochure are clear as to the beveled
surface in the models illustrated figures.
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includes upper and lower horizontally-extending portions. The frame of the
claimed design is low profile even if that frame includes a relatively thin,
flat, side surface. In this sense, the presence of the flat, side surface in the
frame of the design and the absence of a similar side surface in the “low
profile” frame of the Momentum mirror is a de minimis difference. Based
on these comparisons, we find that the 2003 Cordova Sky (Momentum)
Brochure is a proper primary reference under Rosen.
Fusion teaches the necessary modifications to the configuration of the
lighted elements. Either the 8790 sample or the 25501 sample teaches the
necessary modifications to the configuration of the frame, to the extent that
de minimis modifications are not obvious from the Momentum Brochure
alone. As the Examiner correctly concludes, it would have been obvious to
modify the Momentum mirror in view of the teachings of Fusion because
both references teach mirrors lit by vertically-extending lighted elements
near opposed sides of the reflective surfaces of the mirrors.
It would have been obvious to modify the Momentum mirror in view
of the teachings of the 8790 sample of the 25501 sample because both teach
frames having similar profiles. (Although the references disclosing the 8790
sample and the 25501 sample do not show entire frames, see Reb. Br. 6, they
provide sufficient visual information for an ordinary designer to readily
envision a complete frame.) Despite the Patent Owner’s argument to the
contrary, see App. Br. 59–60, the extent of the proposed modifications is not
so great as to destroy fundamental characteristics of the configuration of the
Momentum mirror.
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The Patent Owner argues that both Fusion and the Momentum
Brochure teach away from the claimed design. See App. Br. 13–15 & 46.
The mere disclosure of an article having an appearance that is different from
a claimed design but shares basically the same design characteristics does
not “teach away” from the claimed design. Neither Fusion nor the
Momentum Brochure criticizes or disparages the claimed design. The Patent
Owner does not explain persuasively how the teachings of either reference
might have discouraged an ordinary designer away from the claimed design.
Because the Examiner withdrew this rejection in the Answer, we
enter this as a new ground of rejection.
Cordova Sky Masterpiece Mirror
In addition to the Examiner's withdrawn rejection over the Momentum
mirror, we find that the Masterpiece mirror (Exhibit I to the original
Reexamination Request) also represents a proper Rosen reference by
including a mirror with light bars on either side surrounded by a beveled
frame. The Masterpiece mirror is depicted below.

Although the '881 patent depicts light bars pushed all the way to the
edge of the mirror (as seen in Fig. 6), it also includes light bars that are set in
from the edge of the mirror as shown in Fig. 1 reproduced above. The
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Masterpiece mirror likewise includes a lighting element that is set in from
the edge of the mirror. As with the Momentum mirror, the lighting element
extends around the entirety of the mirror and not just along the sides.
Similarly, we determine that it would be a de minimis change to substitute
the light bars from the Fusion mirror for the lighting element in the
Masterpiece mirror. Additionally, as with the Momentum mirror, to the
extent the beveled frame is not identical to the frame depicted in the
'881 patent, we also deem it a de minimis change to substitute the frame
shown for either the 8790 sample or the 25501 sample.
We note that the Masterpiece and Fusion combination was overcome
during earlier prosecution. See Notice of Intent to Issue a Reexam
Certificate in Reexamination Control 90/008,939, dated October 14, 2008.
This rejection, however, did not include the moulding references included in
the rejection herein. Accordingly, the present rejection involves a
combination of references not previously considered. Furthermore, the
additional ground of rejection is consistent with the basis for rejecting the
claim over the Momentum prior art as detailed above.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject the sole claim of the '881 patent, but enter new grounds of rejection of
the claim over either Momentum or Masterpiece in combination with Fusion
and either of the 8790 sample or the 25501 sample.
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.77(b), which provides that "[a]ny decision which includes a
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new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review." Correspondingly, no portion of the decision is
final for purposes of judicial review. For further guidance on new grounds
of rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final
after it has returned to the Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file
a response requesting reopening of prosecution
before the examiner. Such a response must be
either an amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both.
(2) Request rehearing. The owner may
request that the proceeding be reheard under
§ 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the Examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
Requester may file comments in reply to a Patent Owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
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be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the Patent Owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the Patent Owner and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for
all Patent Owner responses and Requester comments is required.
The Examiner, after the Board's entry of a Patent Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the Patent Owner and/or Requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
The Requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate. However, the Board may elect to defer issuing any decision on
such request for rehearing until such time that a final decision on appeal has
been issued by the Board.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.
AFFIRMED; 37 C.F.R. § 41.77(b)

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Albert Bordas, P.A.
5975 Sunset Drive
Suite 607
Miami, FL 33143

Third Party Requester:

Espinosa/ Trueba, PL
1428 Brickell Ave.
Suite 100
Miami, FL 33131