Ex Parte Stout

Board of Patent Appeals and Interferences

Aug 31, 2004

29138830 (B.P.A.I. Aug. 31, 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not written for publication and is not binding precedent of the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. 2004-1452
Application No. 29/138,830
__________
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. We have jurisdiction
pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to the
ornamental design for a duct tap with an indented end as shown
and described in Figures 1 through 8 submitted with a “Request
for Authorization to Amend the Drawings” dated Sep. 9, 2002, and
Appeal No. 2004-1452
Application No. 29/138,830
1We note that appellant has listed eleven (11) related
appeals on page 2 of the Brief. However, we also note that
appellant has omitted Appl. No. 29/138,764, filed Mar. 20, 2001,
now Appeal No. 2004-1410.
2
July 1, 2003 (Brief, page 3; a copy of these amended drawings are
found in Exhibit F attached to the Brief).
A. Background
This design application was filed on March 20, 2001, with
two original figures drawn to the ornamental design for a duct
tap 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 tap with an indented end.
Id. Appellant submitted new Figures 1-8 with the Request for
Authorization to Amend the Drawings dated Sep. 9, 2002, and July
1, 2003 (Brief, page 3; see Exhibit F attached to the Brief).
The examiner rejected the single design 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,
page 4; final Office action dated Mar. 4, 2003, page 2).
Appellant has appealed from this final rejection.1
Appeal No. 2004-1452
Application No. 29/138,830
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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, page 2, referring
to the final Office action dated Mar. 4, 2003, Paper No. 16).
The examiner finds that there is no support in the original
disclosure for seven features found in the amended drawings
(final Office action, Paper No. 16, pages 2-3; see also the
Brief, page 4). As correctly noted by the examiner (Answer, page
3), appellant’s arguments are solely based on the 37 CFR § 1.132
Declaration of David H. Wagner, Jr., dated July 1, 2003
(hereafter the “Wagner Declaration”; see the Brief, pages 5-21).
The examiner has replied to many of the “affiant’s [sic,
declarant’s]” points from the Wagner Declaration (Answer, pages
4-8).
C. The Decision
We reverse the examiner’s rejection on appeal essentially
for the reasons stated by appellant in the Brief, Reply Brief,
and the Wagner Declaration, as well as those reasons set forth
below.
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Application No. 29/138,830
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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):
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). We determine that the Wagner
Declaration contains statements of fact directly addressing the
Appeal No. 2004-1452
Application No. 29/138,830
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issue of whether the original drawings provide support for the
amended drawings (e.g., see ¶¶ 7-11 in the Wagner Declaration).
As correctly argued by appellant (Reply Brief, pages 1-2),
the examiner in the Answer apparently requires a “microanalysis”
of every point of the drawings. However, our reviewing court has
held that “[i]f 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. Accordingly, applying this standard to
the facts of this appeal, we consider the design as a whole and
determine whether the preponderance of evidence reasonably
conveys to a designer of ordinary skill in the duct art that
appellant was in possession of the now claimed subject matter as
of the filing date.
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 reasonably understood appellant to be in
possession of the claimed invention as now described by Figures
1-4 (the first embodiment) and Figures 5-8 (the second
Appeal No. 2004-1452
Application No. 29/138,830
6
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, 2, 5 and 6, as well as the number of concentric
outlines shown in Figures 3 and 7 (Wagner Declaration, ¶¶ 7 and
8; see Exhibit D). We agree with the declarant that it would
have been reasonable to the designer of ordinary skill in the
duct art that three flanges were represented in the original
drawings, and these flanges would have reasonably 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 in amended Figures 1-8 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,
would have been apparent due to the appearance of the profiles
and surfaces shown in original Figures 1 and 2 (Wagner
Declaration, ¶¶ 9-10). A designer of ordinary skill in the duct
art, with knowledge of conventional technical drawing practice,
would have recognized, upon rotation of original Figure 1 (as
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Application No. 29/138,830
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enlarged in Exhibit B, or as highlighted and marked as in Exhibit
C), the curved profile of the protrusion numbered as “6" (see
Exhibit D) and the edge profiles of each flange outward from the
lines forming the basic cylinder of the duct tap, 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, ¶¶ 13-17). We agree that it would have been
reasonable to the ordinary designer to consider that the two
lines of the first step (numbered “11" as found in Exhibits C and
D) do not go outward from the lines of the basic cylinder of the
duct tap and thus could not be any protruding design such as a
flange. Similarly, we agree with the declarant’s explanation of
the appearance of the corresponding lines of the second and third
steps (see the Wagner Declaration, ¶¶ 15-17 and Exhibits C and
D).
We also agree with the declarant that the saddle portions
(numbered as “9, 10, 15, 17 and 18" in Exhibit D) would have been
readily apparent to the designer of ordinary skill in this art
from the perspective views originally presented in Figures 1-2
(Wagner Declaration, ¶¶ 25-26). The examiner’s allegation that
the original lack of surface shading “allows for the possibility
that the exterior sides of the saddle ... could have a compound
Appeal No. 2004-1452
Application No. 29/138,830
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curvature” has no basis in fact on this record. See In re Alton
supra (if one of ordinary skill would have understood the
inventor to be in possession of the claimed invention, even if
every nuance of the claims is not explicitly described, then the
description requirement is met). From consideration of the
design as a whole, we determine that the saddle portions of the
amended Figures would have been readily apparent to a designer of
ordinary skill in this art from the perspective view of original
Figures 1-2.
For the foregoing reasons and those stated in the Brief,
Reply Brief, and the Wagner Declaration, we determine that, based
on the design as a whole and the totality of the record, the
preponderance of the evidence establishes that the written
description requirement of section 112 has been met by the
amended Figures 1-8 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.
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Application No. 29/138,830
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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. 2004-1452
Application No. 29/138,830
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