Ex Parte Stout

Board of Patent Appeals and Interferences

Aug 27, 2004

29138829 (B.P.A.I. Aug. 27, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM K. STOUT, JR.
___________
Appeal No. 2004-1305
Application No. 29/138,829
__________
ON BRIEF
_________
Before PAK, WALTZ, and SAADAT, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of the single design claim 1. We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to the
ornamental design for a duct with an indented end as shown and
described in Figures 1 through 6 submitted with the Requests for
Authorization to Amend the Drawings dated September 17, 2002, and
Appeal No. 2004-1305
Application No. 29/138,829
1 We note that appellant has listed eleven (11) related
appeals on page 2 of the Brief. However, we also note that
appellant has omitted Application No. 29/138,764, filed Mar. 20,
2001, now Appeal No. 2004-1410.
2
December 30, 2002 (Brief, page 3; these amended drawings are
shown in Exhibit F attached to the Brief).
A. Background
This design application was filed on March 20, 2001, with
two original figures drawn to an ornamental design for a duct
with an indented end (see Exhibit A attached to the Brief).
These original figures are two-dimensional drawings representing
two different embodiments of a duct with an indented end.
Appellant submitted new Figures 1-6 with the Requests for
Authorization to Amend the Drawings dated Sep. 17, 2002, and Dec.
30, 2002 (Brief, page 3; see Exhibit F attached to the Brief).
The examiner objected to but entered these amended Figures
(Brief, page 5; see the Office actions dated Dec. 16, 2002, and
Mar. 4, 2003), while rejecting the claim under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement since the amended drawings introduced
“new matter” not supported by the original disclosure (Brief,
pages 3-4; final Office action dated Mar. 4, 2003, page 2).
Appellant has appealed from this final rejection.1
Appeal No. 2004-1305
Application No. 29/138,829
3
B. The Rejection
The single design claim stands rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the description
requirement since the amended drawings introduce new matter not
supported by the original disclosure (Answer, unnumbered page 2,
referring to the final Office action dated Mar. 4, 2003, Paper
No. 15). The examiner finds that there is no support in the
original disclosure for five features in the amended drawings
(final Office action, Paper No. 15, page 2; see also the Brief,
page 4). As noted by the examiner (Answer, unnumbered page 2),
appellant’s arguments are solely based on the 37 CFR § 1.132
Declaration of David H. Wagner, Jr., dated June 30, 2003
(hereafter the “Wagner Declaration”; see the Brief, pages 5-17).
The examiner has replied to “affiant’s [sic, declarant’s]” points
from the Declaration in the Answer (unnumbered pages 3-6).
C. The Decision
We reverse the examiner’s rejection on appeal essentially
for the reasons stated by appellant in the Brief, Reply Brief,
the Wagner Declaration, and for those reasons set forth below.
D. The Opinion
As stated by our reviewing court in In re Daniels, 144 F.3d
1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998):
Appeal No. 2004-1305
Application No. 29/138,829
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The test for sufficiency of the written
description is the same, whether for a design or a
utility patent. This test has been expressed in
various ways; for example, “whether the disclosure of
the application relied upon ‘reasonably conveys to the
artisan that the inventor had possession at that time
of the later claimed subject matter.’” [Citations
omitted].
...
In general, precedent establishes that although the
applicant “does not have to describe exactly the
subject matter claimed, ... the description must
clearly allow persons of ordinary skill in the art to
recognize that [the applicant] invented what is
claimed.” [Citation omitted].
It is the drawings of the design patent that
provide the description of the invention. [Citation
omitted].
The issue of whether a patent specification adequately
describes the subject matter claimed is a question of fact. See
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991). The Wagner Declaration, even couched in
terms of the declarant’s “opinion,” clearly is offering factual
evidence in an attempt to explain why one of ordinary skill in
this art would have understood the original drawings to support
the amended drawings. See In re Alton, 76 F.3d 1168, 1175, 37
USPQ2d 1578, 1583 (Fed. Cir. 1996). The Wagner Declaration
contains statements of fact directly addressing the issue of
whether the original drawings provide support for the amended
drawings (e.g., see ¶9 in the Wagner Declaration).
Appeal No. 2004-1305
Application No. 29/138,829
5
As correctly argued by appellant (Reply Brief, pages 1-2),
the examiner in the Answer requires a “microanalysis” of every
point of the drawings. “If a person of ordinary skill in the art
would have understood the inventor to have been in possession of
the claimed invention at the time of filing, even if every nuance
of the claims is not explicitly described in the specification,
then the written description requirement is met.” In re Alton,
76 F.3d at 1175, 37 USPQ2d at 1584.
We agree with appellant and the declarant that a designer of
ordinary skill in the heating, ventilation and air conditioning
(HVAC) duct art, with knowledge of conventional technical drawing
practice, would have understood appellant to be in possession of
the claimed invention as described by Figures 1-3 (the first
embodiment) and Figures 4-6 (the second embodiment) at the time
of filing this application, as supported by the original figures
(Figure 1 as the first embodiment; Figure 2 as the second
embodiment). For example, declarant states that the original
application clearly describes the surfaces and profiles of the
shapes of the indented ends and gaskets in Figures 1 and 4, as
well as the number of concentric outlines shown in Figures 2 and
5 (Wagner Declaration, ¶¶ 7 and 8). We agree with declarant that
it would have been clear to the design artisan that three flanges
Appeal No. 2004-1305
Application No. 29/138,829
6
were presented in the original drawings, and would have appeared
as three concentric outlines in a top view. We also agree with
the declarant that the surfaces and profiles of the indented ends
and gaskets would have been readily apparent from original
Figures 1-2. Furthermore, declarant states that the rounded edge
profile of the shortest flange, as contrasted with the edge
profiles of the intermediate and longest flanges, are apparent
due to the appearances of the profiles and surfaces shown in
original Figures 1 and 2 (Wagner Declaration, ¶¶ 9 and 10). A
designer of ordinary skill in this art, with conventional
knowledge of technical drawing, would have recognized, upon
rotation of original Figure 1 (as enlarged in Exhibit B, or
highlighted as per Exhibit C), the curved profile of the
protrusion “6" (see Exhibit D) and the edge profiles of each
flange outward from the lines of the basic cylinder of the duct,
increasing in protuberance from top to bottom. We also agree
with declarant’s statement concerning the lines of various steps
and step surfaces (Wagner Declaration, ¶¶ 13, 15 and 17). We
agree that it would have been clear to the design artisan that
the two lines of the first step (numbered “10" as in Exhibits C
and D) do not go outside the lines of the basic cylinder which
forms the duct and thus could not be a protruding flange.
Appeal No. 2004-1305
Application No. 29/138,829
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Similarly, we agree with declarant’s explanation of the
appearance of the corresponding lines of the second step, the
third step, the single lines listed as 10B and 12B, as well as
the inner surface 16A (see Exhibits C and D; Wagner Declaration,
¶¶ 13, 15 and 17).
For the foregoing reasons and those stated in the Brief,
Reply Brief, and the Wagner Declaration, we determine that, based
on the totality of the record, the preponderance of evidence
establishes that the written description requirement of section
112 has been met by the amended Figures 1-6 submitted by
appellant. See In re Alton, 76 F.3d at 1175, 37 USPQ2d at 1584,
citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). Accordingly, we do not sustain the examiner’s
rejection on appeal.
Appeal No. 2004-1305
Application No. 29/138,829
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The decision of the examiner is reversed.
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Mahshid D. Saadat )
Administrative Patent Judge )

TAW/tdl
Appeal No. 2004-1305
Application No. 29/138,829
9
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