29461780 - (D) (P.T.A.B. Sep. 17, 2019)

Giza, Danielle

Patent Trials and Appeals BoardSep 17, 2019

29461780 - (D) (P.T.A.B. Sep. 17, 2019)

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. 29/461,780 07/26/2013 Danielle Giza J-5952D1(510009.02110) 1376 155316 7590 09/17/2019 S.C. JOHNSON & SON, INC./Quarles & Brady LLP 1525 Howe Street Racine, WI 53403-2236 EXAMINER PRATT, DEANNA L ART UNIT PAPER NUMBER 2911 NOTIFICATION DATE DELIVERY MODE 09/17/2019 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): F074168@scj.com MJZolnow@scj.com SELechne@scj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DANIELLE GIZA1 ____________________ Appeal 2019-001900 Application 29/461,780 Technology Center 2900 ____________________ Before WILLIAM A. CAPP, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting the single design claim pending in this appeal. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The briefing identifies Applicant S.C. Johnson & Son, Inc. as the real party in interest. Appeal Br. 2. Appeal 2019-001900 Application 29/461,780 2 BACKGROUND Appellant’s invention relates to a computer icon. The claim on appeal is “[t]he ornamental design for a display screen portion with icon, as shown and described.” REJECTIONS The claim stands rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2. OPINION The Examiner finds that “a design that does not include the top portion of the large chevron feature, now shown in broken lines in every embodiment of the claimed design, was not originally described.” Final Act. 2. Appellant argues that the test for sufficiency of written description is whether the application disclosure reasonably conveys to a skilled designer that the inventor had possession of the claimed invention at the time of filing. Appeal Br. 6 (citing In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998)(internal citations omitted). Appellant also notes that MPEP § 1504.04(I)(B) specifically addresses the issue in this appeal, stating that “‘applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not a departure from the original disclosure.’” Appeal Br. 5. According to Appellant, the inventor was, thus, in possession of the pending claim scope. The Examiner responds that MPEP § 1504.04(I)(B) in a “Ninth Edition . . . published in January 2018 but indicated as being revised Appeal 2019-001900 Application 29/461,780 3 effective August 2017, [removed] of this pivotal passage.” Id. The Examiner further responds that Appellant misconstrued this statement in MPEP § 1504.04(I)(B) as “carte blanche to convert broken line subject matter to solid line and vice versa without running afoul of §112(a).” Ans. 3, 4. According to the Examiner, MPEP § 1504.04(I)(B) did not state that any amendment reducing solid lines to broken lines, or vice versa, is an acceptable amendment. Id. Further, the Examiner contends that the claim was not rejected because Appellant converted solid lines to broken lines, or vice versa. Id. Rather, the claim was rejected “because the design now claimed was not described in the original disclosure.” Id. The Examiner further explains her position regarding lack of written description in detail. Ans. 4–14. Appellant acknowledges that MPEP § 1504.04(I)(B) was amended “to separate the discussions of new matter and written description,” but maintains that the Examiner’s view of the written description requirement is “overly restrictive.” Reply Br. 2. We agree. Appellant’s amendment of the upper lines of each larger chevron from solid to broken does not alter the nature of the claimed design, and the newly-claimed arrangement of broken and solid lines (i.e., the exact current breadth of the claim) need not have been specifically depicted in the original drawings to satisfy the written description requirement. This is not a situation, as in In re Owens, 710 F.3d 1362 (Fed. Cir. 2013), where a new boundary is defined in an amendment. Nor is this a situation, as depicted in footnote 3 of Appellant’s Reply Brief, where an arrangement was “disclosed but not described.” Appellant has converted an entire existing length of certain solid lines to dashed lines in a Appeal 2019-001900 Application 29/461,780 4 manner that is both disclosed and described, and without defining any new boundaries. For this reason, we do not sustain the claim rejection. DECISION We REVERSE the rejection of the claim under 35 U.S.C. § 112(a). REVERSED