George Bucher et al.

Patent Trials and Appeals Board

May 26, 2020

2018007626 (P.T.A.B. May. 26, 2020)

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.
29/543,700 10/27/2015 George Bucher 83600537 1066
28395 7590 05/26/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
MCLEAN, CHRISTIAN P
ART UNIT PAPER NUMBER
2923
NOTIFICATION DATE DELIVERY MODE
05/26/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEORGE BUCHER, DEAN CARBIS, and
STEVEN GILMORE
____________________

Appeal 2018-007626
Application 29/543,700
Technology Center 2900
____________________

Before SCOTT A. DANIELS, JILL D. HILL, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
George Bucher et al. (Appellant1) appeal under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting the ornamental design for a vehicle
rear bumper cover, under 35 U.S.C. § 103 as unpatentable over Messale in
view of Rupar et al. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Ford Global Technologies, LLC as the real
party in interest (Appeal Br. 1).

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THE INVENTION
The claimed ornamental design on appeal pertains to a left side, rear
bumper cover for a motor vehicle. See, e.g., Spec. 1, Figs. 1–9. The claim
on appeal reads: “[t]he ornamental design for a VEHICLE REAR BUMPER
COVER as shown and described.” Spec. 3. Figures 1, 2, 3, and 4
reproduced below, are illustrative of the subject matter on appeal.

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Figures 1, 2, 3, and 4, above, of the claim currently on appeal, depict
an ornamental design for a rear bumper cover.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Messale
Rupar
US D644,577 S
US D726,602
Sept. 6, 2011
Apr. 14, 2015

ANALYSIS
Obviousness over Messale and Rupar
The Examiner’s rejection is premised upon the claimed design being
obvious over a primary reference (Messale) in view of secondary reference
(Rupar).
The initial question is whether the asserted underlying primary
reference to Messale is a suitable primary reference in accordance with In re
Rosen, 673 F.2d 388, 391 (CCPA 1982); see also e.g., Appeal Br. 8–10;
Ans. 10–11. Rosen explains that “there must be a reference, a something in
existence, the design characteristics of which are basically the same as the
claimed design in order to support a holding of obviousness.” Rosen, 673
F.2d at 391; see also Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
(Fed. Cir. 1996) (stating “the first step in an obviousness analysis for a
design patent requires a search of the prior art for a primary reference. This
requires the trial court to: (1) discern the correct visual impression created
by the patented design as a whole; and (2) determine whether there is a
single reference that creates ‘basically the same’ visual impression.”).
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We determine that the record does not support the conclusion that
Messale is a suitable primary reference.
The Examiner describes that Messale and the claimed design similarly
depict, “a corner of a curved rear bumper cover for an automobile with
trunk/hatch and side fender attachment points, and that has a noticeable
squared horizontal ridge near the bottom.” Final Action 2; see also Ans. 10
(“a corner of a curved rear bumper cover for an automobile with curved
wheel well and trunk/hatch attachment points, a sloped top edge, and a
horizontal band wrapping around the front of the lower portion of the
bumper.”). The Examiner notes that the claimed design is different from
Messale “in that the top edge of the [claimed] bumper cover features a deep
chamfer approximately one quarter the height of the bumper that creates a
‘peaked’ or sharply inclined appearance on the side.” Final Action 2.
Despite this difference, the Examiner concludes that “Messale and the
claimed design both contain design characteristics that are basically the
same . . . [t]he difference cited by applicant does not create a different visual
impression from that of the claimed design.” Id. at 4; see also Ans. 10
(“Messale and the claimed design share design characteristics that are
basically the same, as set forth in Rosen.”).
The Examiner’s analysis is hamstrung, at least initially, by an
incomplete description of the claimed design which may indicate that the
Examiner did not consider the appearance of the claimed design as a whole.
See Rosen, 673 F.2d at 391 (“In considering patentability of a proposed
design the appearance of the design must be viewed as a whole, as shown by
the drawing, or drawings, and compared with something in existence.”). A
reasonable observation of the claimed design gives the visual impression of
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a vehicle rear bumper including the distinct beveled surface defining an
upper edge which, as argued by Appellant, “is curved in an opposed manner
to the lower edge and the intermediate protruding ridge, such that the upper
edge follows a line that is different and distinctive from the lines of the
lower edge and the intermediate protruding ridge.” Appeal Br. 9. The
Examiner, however, discounts these ornamental features and, in our view,
incorrectly concludes that other common characteristics, such as, e.g., “a
curved rear bumper cover for an automobile with curved wheel well, . . .
result in two designs that share substantially similar overall appearances.”
Ans. 10.
By not determining an appropriate overall visual impression of the
claimed design that includes the beveled surface and curved upper edge, the
Examiner’s analysis does not “discern the correct visual impression created
by the patented design as a whole,” so as to effectively compare the claimed
design with Messale as the asserted primary reference in this case. Durling,
101 F.3d at 103. The presence of the beveled surface and curved upper edge
is important to the overall appearance and the visual effect of the claimed
design. See Rosen, 673 F.2d at 390. Here, the primary reference’s lack of a
beveled surface and curved edge prevents the primary reference from
possessing design characteristics that are basically the same as the claimed
design as required for supporting a conclusion of obviousness. Id. at 391;
see also Durling, 101 F.3d at 103. The Examiner determines that, when the
prior art design disclosed in the alleged Rosen reference (Messale) is
modified in view of the secondary reference (Rupar), the modified design
would include a beveled surface and curved upper edge. A secondary
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reference cannot cure a primary reference’s shortcomings as a Rosen
reference.
The Examiner incorrectly concludes that Messale’s rear bumper “is
basically the same,” as the claimed rear bumper design and fails to
sufficiently explain why the beveled surface and curved upper edge can be
presumptively ignored in the determination of a primary reference. High
Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314 (Fed. Cir.
2013). In our view, the Examiner has not considered the claimed design as a
whole by disregarding the distinct visual impressions created by the beveled
surface and curved upper edge of the claimed design. See Durling, 101 F.3d
at 103.
Considering the appearance of the claimed design as a whole, and the
absence of the beveled surface and curved upper edge on the bumper shown
in Messale, we determine that Messale cannot support the conclusion of
obviousness as a primary reference. Accordingly, we do not sustain the
Examiner’s rejection of the claim as unpatentable over Messale and Rupar.
DECISION
For the above reasons, we REVERSE the Examiner’s decision
rejecting the claim on appeal as obvious over Messale and Rupar under 35
U.S.C. § 103.
DECISION SUMMARY
In summary:

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Application 29/543,700

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
The claim 103 Messale, Rupar The claim

REVERSED