Ex Parte VerWeyst

Board of Patent Appeals and Interferences

Mar 25, 2009

29226865 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GORDON VERWEYST
____________________

Appeal 2008-5555
Application 29/226,865
Technology Center 2900
____________________

Decided:1 March 25, 2009
____________________

Before: LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2008-5555
Application 29/226,865

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 2
rejection of the sole claim of the application under 35 U.S.C. § 103(a) 3
(2002) as being unpatentable over Bried ’458 (US Des. 431,458, issued Oct. 4
3, 2000) and Bried ’613 (US Des. 462,613 S, issued Sep. 10, 2002). We 5
have jurisdiction under 35 U.S.C § 6(b) (2002). We REVERSE. 6
The claim on appeal relates to an ornamental design for a container. 7
The Appellant’s Reply Brief characterizes the design as consisting of a: 8
9
relatively squat container includ[ing] a top wall, 10
one-half of which accommodates a door and the 11
other half of which is a smooth, continuously 12
planar surface. [The Appellant’s] design further 13
has a straight, vertical sidewall that intersects the 14
planar top and bottom walls to form a rounded, 15
circumferential corner. 16
17
(Reply Br. 4.) 18
19
ISSUES 20
Bried ’458 depicts a consumable tablet container. (Bried ’458, claim.) 21
The Examiner finds that the design characteristics of the appearance of the 22
container of Bried ’458 are basically the same as the design characteristics 23
of the claimed design. (Ans. 4.) The Appellant asserts that the form of the 24
container of Bried ’458 is taller and more slender than the claimed design 25
and that the container of Bried ’458 has a small door in the top wall and a 26
circumferential rib on the vertical wall which the claimed design does not 27
share. (App. Br. 4-5.) 28
This appeal turns on one issue (see App. Br. 3-5): 29
Appeal 2008-5555
Application 29/226,865

3
Has the Appellant shown that the Examiner erred in 1
concluding that the containers of Bried ’458 and Bried ’613 are 2
so related that the two references would have suggested a 3
container similar in appearance to that of Bried ’458 but with a 4
top wall and a vertical side wall which were smooth and 5
unornamented except for a single door confined to 6
approximately half of the top wall? 7
8
FINDINGS OF FACT 9
The record supports the following findings of fact (“FF”) by a 10
preponderance of the evidence. 11
1. Bried ‘458 does not state that its drawing figures are drawn to 12
any scale. 13
2. The container of Bried ’458 is approximately disc-shaped 14
having a cylindrically-shaped vertical side wall and planar top and bottom 15
walls of circular shape. The container is filleted along the outer peripheries 16
of the top and bottom walls where the top and bottom walls meet the vertical 17
side wall. 18
3. As best shown in Figs. 1 and 4 of Bried ’458, the top wall 19
mounts two covers or doors. 20
4. The top wall of the container of Bried ’458 mounts a large door 21
having an outline which appears to conform substantially to the outline of 22
the top wall except for a tab extending from a free end of the door. As best 23
shown in Figs. 2 and 8-11, the large door appears to be hinged along a 24
straight side of the door along approximately a center line of the container. 25
Appeal 2008-5555
Application 29/226,865

4
In other words, the large door is confined to approximately half of the top 1
wall. 2
5. The top wall of the container of Bried ’458 also mounts a 3
second, small door in the half of the top wall diametrically opposite the large 4
door. As best shown in Figs. 2 and 8-11, the small door appears to be 5
hinged along a straight side of the door parallel to the hinge of the large 6
door. As best shown in Figs. 4 and 5, the small door includes a tab with 7
converging, approximately linear sides which slightly overhangs the fillet at 8
the outer periphery of the top wall. When the small door is open as shown in 9
Fig. 2, 8, 9 and 11, the door perceptibly contributes to the overall profile of 10
the container. 11
6. The vertical side wall of the container of Bried ’458 has a raised 12
circumferential rib of arcuate cross-section which appears to approximately 13
bisect the vertical side wall along a plane perpendicular to an axis of the 14
vertical side wall. 15
7. The only disclosed function of the container of Bried ’458 is to 16
contain consumable tablets. (Bried ’458, claim.) 17
8. Bried ‘613 discloses a container. (Bried ’613, claim.) 18
9. The container of Bried ’613 has a vertical side wall and planar 19
top and bottom walls. The vertical side wall appears to have an elongated 20
outline when viewed from a direction perpendicular to the upper surface of 21
the top wall. The elongated outline of the vertical side wall includes semi-22
circular portions at either end and straight portions connecting the two semi-23
circular portions. The outer peripheries of the top and bottom walls 24
correspond in outline to the axial outline of the vertical side wall. The 25
Appeal 2008-5555
Application 29/226,865

5
container is filleted along the outer peripheries of the top and bottom walls 1
where the top and bottom walls meet the vertical side wall. 2
10. As best shown in Figs. 1, 3, 7, 10 and 11 of Bried ’613, the top 3
wall mounts a large door. As best shown in Fig. 2, the door appears to be 4
hinged along a straight side of the door parallel to, but offset from, a center 5
line of the container. The door appears to be confined to a portion of the top 6
wall which is significantly less than half of the total exposed area of the top 7
wall. 8
11. The vertical side wall of the container of Bried ’613 is smooth 9
with no surface ornamentation. 10
11
PRINCIPLES OF LAW 12
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 13
“the differences between the subject matter sought to be patented and the 14
prior art are such that the subject matter as a whole would have been obvious 15
at the time the invention was made to a person having ordinary skill in the 16
art to which said subject matter pertains.” More specifically, “the proper 17
standard is whether the design would have been obvious to a designer of 18
ordinary skill [in the art] involved.” In re Rosen, 673 F.2d 388, 390 (CCPA 19
1992). In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court 20
set out factors to be considered in determining whether claimed subject 21
matter would have been obvious: 22
23
Under § 103, the scope and content of the prior art 24
are to be determined; differences between the prior 25
art and the claims at issue are to be ascertained; 26
and the level of ordinary skill in the pertinent art 27
resolved. Against this background, the 28
Appeal 2008-5555
Application 29/226,865

6
obviousness or nonobviousness of the subject 1
matter is determined. 2
3
Id., 383 U.S. at 17. 4
One must find a single reference, “a something in existence, the 5
design characteristics of which are basically the same as the claimed design 6
in order to support a holding of obviousness.” Rosen, 673 F.2d at 391. 7
Once this primary reference is found, other references may be used to 8
modify it to create a design that has the same overall visual appearance as 9
the claimed design. See In re Spreter, 661 F.2d 1220, 1222 (CCPA 1981). 10
The Appellant does not rely on any objective evidence of patentability 11
in this appeal. (See App. Br. 7.) Therefore, the Appellant’s burden in this 12
appeal is to show that the Examiner has identified insufficient evidence to 13
support a conclusion of obviousness. In re Kahn, 441 F.3d 977, 985-86 14
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). 15
Reasoning which leads to a determination that the references sought to be 16
combined “are so related that the appearance of certain ornamental features 17
in one would suggest the application of those features to the other” suffices 18
to support a conclusion of obviousness. In re Glavas, 230 F.2d 447, 450 19
(CCPA 1956). 20
Our reviewing court has cautioned that a legal conclusion of 21
obviousness may be inappropriate where the primary reference relied on to 22
support the conclusion differs in several significant ways from the claimed 23
design. In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir. 1993). A modification 24
which would destroy a fundamental characteristic of the appearance of the 25
article shown in the primary reference generally will not be obvious. Rosen, 26
673 F.2d at 391. 27
Appeal 2008-5555
Application 29/226,865

7
ANALYSIS 1
The Appellant argues that the form of the container of Bried ’458 is 2
taller and more slender than the claimed design. This asserted distinction, if 3
not illusory, is de minimis. The Appellant appears to base this argument on 4
measurements of the heights and widths taken from the drawings of Bried 5
‘458 and the claimed design. (See App. Br. 5.) Unless stated otherwise in 6
the Specification, patent drawing figures typically are not drawn to scale. 7
This is particularly true of design drawing figures, which generally seek to 8
convey overall appearance rather than relative dimensions and spatial 9
interrelationships between operating components. Neither Bried ‘458 (see 10
FF 1) nor the present application states that the drawing figures are drawn to 11
any scale. Hence, the measurements taken by the Appellant from the patent 12
drawings of Bried ’458 and from the drawings of the present Specification 13
are of little probative value. See Hockerson-Halberstadt, Inc. v. Avia Group 14
Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). 15
A visual inspection of the drawings of Bried ’458 and of the claimed 16
design does not reveal a difference in relative dimensions so striking as to 17
distinguish the overall visual impression of the container of Bried ’458 from 18
the visual impression of the claimed design. This is true even when one 19
takes into account the circumferential rib appearing on the vertical wall of 20
the container of Bried ’458 but not in the claimed design. (See FF 6.) Even 21
assuming for purposes of this appeal only that the Appellants might have 22
established some small but readily perceptible visual distinction between the 23
relative dimensions of the container of Bried ’458 and the claimed design, 24
the fact that a claimed design changes some dimensions to a different degree 25
than other dimensions relative to the prior art is of no patentable 26
Appeal 2008-5555
Application 29/226,865

8
significance. In re Lamb, 286 F.2d 610, 612 (CCPA 1961). A designer of 1
ordinary skill in the art would be as likely to attribute any asserted 2
differences in the relative dimensions of the containers to the vagaries of the 3
draftspersons’ hands or to the limitations of modern imaging technologies as 4
to attribute such differences to any meaningful design choice. 5
Other distinctions between the appearance of the container of Bried 6
’458 and the claimed design cannot be dismissed as de minimis, however. 7
The second, smaller door in the half of the top wall of the container of Bried 8
’458 diametrically opposite the large door (FF 3-5) and the circumferential 9
rib on the vertical side wall of Bried ’458 (FF 6) represent, collectively, a 10
significant difference in appearance from the claimed design. While the 11
circumferential rib may be characterized as surface ornamentation of the 12
vertical side wall, the small door when open as shown in Figs. 2, 8, 9 and 11 13
affects the overall form or contour of the container of Bried ’458 (see FF 5). 14
Substituting a smooth, unornamented surface on the half of the top wall, 15
which Bried ’458 depicts as bearing the small door, would destroy the 16
fundamental characteristic which the small door contributes to the overall 17
form or contour of the container. 18
Unlike either the container of Bried ’458 or the claimed design, the 19
container of Bried ’613 has a top wall which is elongated and which has a 20
single door confined to a portion of the top wall significantly less than a half. 21
(FF 9 and 10.) Although Bried ’613 shows a container having a vertical side 22
wall as smooth and unornamented as the side wall of the claimed design, the 23
side wall of Bried ’613 includes parallel straight portions giving rise to an 24
oblong form somewhat different from the disc-like form of the container of 25
Bried ’458. (FF 9 and 11.) The container of Bried ’613 is similar in design 26
Appeal 2008-5555
Application 29/226,865

9
characteristics (compare FF 2 and 4 with FF 9 and 10) and in function 1
(compare FF 7 with FF 8) to the container of Bried ’458. Nevertheless, the 2
two containers are not so closely related in overall form that Bried ‘613 3
would have suggested modifying the container of Bried ’458 to omit both 4
the circumferential rib from the side wall and the second, small door from 5
the half of the top wall diametrically opposite the half to which the large 6
door is confined. 7
8
CONCLUSIONS 9
The Appellant has shown that the Examiner erred in concluding that 10
the containers of Bried ’458 and Bried ’613 are so related that the two 11
references would have suggested a container similar in appearance to that of 12
Bried ’458 but with a top wall and a vertical side wall which were smooth 13
and unornamented except for a single door confined to approximately half of 14
the top wall. Therefore, the Appellant has shown that the Examiner erred in 15
rejecting the sole claim of the application under § 103(a) as being 16
unpatentable over Bried ’458 and Bried ’613. 17
18
DECISION 19
We REVERSE the rejection of the claim. 20
21
REVERSED 22
23
24
25
26
Appeal 2008-5555
Application 29/226,865

10
hh 1
2
LEYDIG VOIT & MAYER, LTD. 3
(ROCKFORD OFFICE) 4
TWO PRUDENTIAL PLAZA, SUITE 49000 5
180 NORTH STETSON AVENUE 6
CHICAGO, IL 60601-6731 7