HFA, INC.

Patent Trials and Appeals Board

Apr 15, 2021

2021002735 (P.T.A.B. Apr. 15, 2021)

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.
29/641,286 03/21/2018 Brad Sarnoff 0000037.0497 1727
34755 7590 04/15/2021
ADAM K. SACHAROFF
MUCH SHELIST, PC
191 N. WACKER DRIVE, Suite 1800
CHICAGO, IL 60606-1615
EXAMINER
SMITH, MESSINA L
ART UNIT PAPER NUMBER
2913
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
asacharoff@muchshelist.com
ipdocket@muchshelist.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRAD SARNOFF, NORTON SARNOFF, and RAJ PATEL
____________

Appeal 2021-002735
Application 29/641,286
Technology Center 2900
____________

Before KEN B. BARRETT, GEORGE R. HOSKINS, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals the Examiner’s rejection of the single design
claim (claim 1) pending in this application under 35 U.S.C. § 103. We
REVERSE.2

1 The Appellant is the “applicant” as defined in 37 C.F.R. § 1.42. “HFA,
Inc.” is “the real party in interest.” (Appeal Br. 1.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 171(b).
Appeal 2021-002735
Application 29/641,286

2

THE CLAIMED DESIGN
The Appellant claims an “ornamental design” for a “pan” (Appeal Br.,
Claims App.) which is shown below.

This drawing (Figure 1) “is a front side perspective view” of the Appellant’s
pan. (Spec. ¶ 11, as amended on Sept. 27, 2019.)
As shown in the above drawing, the Appellant’s pan has four
sidewalls, four rounded corners, and a rim that extends around the upper
circumference formed thereby. Of particular concern in the present appeal is
the ornamental contribution of the features of the rim of the Appellant’s pan.
The rim of the Appellant’s pan can be talked about in terms of three
rim portions, namely a horizontal rim portion, a vertical rim portion, and a
curled rim portion. The horizontal rim portion extends outwardly from the
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Application 29/641,286

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upper ends of the sidewalls/corners, the vertical rim portion extends
upwardly from the distal edge of the horizontal rim portion, and the curled
rim portion curves outwardly from the top edge of the vertical portion.3
PRIOR ART DESIGNS
Name Evidence Date
Handi-Foil Pan Handi-Foil 13” x 9” Oblong
Aluminum Foil Disposable Cake
Pan with Clear Dome Lids - HFA
REF # 394-WDL (Pack of 12 Sets),
1–7
2017
Fit Pan Rectangular Disposable Aluminum
Foil Pan Take Out Food Containers
with Flat Board Lids, Steam Table
Baking Pans, 1–8
2017
REJECTION
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over the Handi-Foil Pan in view of the Fit Pan. (Final Action 2.)
OBVIOUSNESS
The ultimate inquiry in an obviousness analysis is “whether the
claimed design would have been obvious to a designer of ordinary skill who
designs articles of the type involved.” (Durling v. Spectrum Furniture Co.,
101 F.3d 100, 103 (Fed. Cir. 1996); see also In re Rosen, 673 F.2d 388, 390
(CCPA 1982).)

3 A “bottom perspective view” (Figure 2) and “side view[s]” (Figures 3–6)
of the Appellant’s pan likewise show the elevation and outward curving of
the curled rim portion. (Spec. ¶¶12–17, as amended on Sept. 27, 2019.)
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Application 29/641,286

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“When assessing the potential obviousness” of a design claim, an
initial step is to identify “something in existence” that has “design
characteristics of which are basically the same as the claimed design.”
(High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1311 (Fed.
Cir. 2013).)4 This assessment requires a discernment of the “visual
impression created by” the claimed design and a determination that the
“something in existence” creates “basically the same visual impression.”
(Durling, 101 F.3d at 103.) When a “side-by-side comparison” of two
designs “shows substantial differences,” this is indicative that the designs do
not have basically the same visual appearances. (Apple, Inc. v. Samsung
Electronics Co., Ltd., 678 F.3d 1314, 1330 (Fed. Cir. 2012).)
This obviousness inquiry “is a question of law based on underlying
factual findings.” (Spigen Korea Co., Ltd. v. Ultraproof, Inc., 955 F.3d
1379, 1383 (Fed. Cir. 2020).) And whether a prior art design “creates
‘basically the same’ visual impression” as the claimed design is an
“underlying” factual determination. (Id.; see also High Point Design, 730
F.3d at 1311; Apple, 678 F.3d at 1330; Campbell Soup Co. v. Gamon Plus,
Inc., 939 F.3d 1335, 1340 (Fed. Cir. 2019).)
Thus, in order for us to sustain an examiner’s obviousness rejection of
a design claim, factual findings, supported by the record, must establish that

4 A secondary prior art reference may be relied upon to “modify” this primary
reference. (Durling, 101 F.3d. at 103.) But a secondary prior art reference is
only introduced into the obviousness assessment after it has been established
that there is “something in existence” that creates basically the same visual
impression as the claimed design. (See id.)
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there is “something in existence” which creates basically the same visual
impression as the claimed design.
ANALYSIS
The Examiner’s obviousness rejection is premised upon the
Handi-Foil Pan being “something in existence” that has “design
characteristics” which are “basically the same as the claimed design.” (Final
Action 3.) According to the Examiner, these basically-the-same design
characteristics include the rim portions of the respective designs. (See id.)
The Examiner particularly finds that the rim of the Handi-Foil Pan, like the
rim of the Appellant’s pan, has a horizontal rim portion, a vertical rim
portion, and a curled rim portion. (See id. at 3, 5–6.) And the Examiner
provides the following “side-by-side comparison” to support this factual
finding. (Answer 8.)
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The above side-by-side comparison consists of an annotated drawing of the
Appellant’s pan on the right and an annotated drawing of the Handi-Foil Pan
on the left.
A lively debate running throughout the appeal papers pertains to
whether the rim of the Handi-Foil Pan actually has a vertical rim portion.
(See Advisory Action 2; Appeal Br. 6–9; Answer 7–10; Reply Br. 2–4.) For
the purposes of this appeal, we need not dwell on what can and what cannot
be called a vertical wall in the rim of the Handi-Foil Pan. What is important,
and what the Examiner’s side-by-side comparison reveals, is the differences
between the rim portions of the claimed design and the rim portions of the
prior art design.
When we look at the three arrows labeling the three rim portions in
the Examiner’s annotated drawing of the Appellant’s pan, they pinpoint a
plain demarcation therebetween. In the Appellant’s pan, we need not strain
our eyes to see where one rim portion ends and an adjacent rim portion
begins. Also, the relevant dimension (i.e., height) of the vertical rim portion
is similar in size to the relevant dimension (i.e., span) of the horizontal rim
portion so that neither dominates the other. Further, the elevation of the
curled rim portion, and its sharp segregation from the planar upper edge of
the vertical rim portion, calls attention to its bead-like shape.5

5 As mentioned above, Figures 2–6 further show the elevation and the
outward curving of the Appellant’s curled rim portion. These drawings also
show the sharp segregation between the vertical rim portion and the curled
rim portion.
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When we look at the three arrows labeling the three rim portions in
the Examiner’s annotated drawing of the Handi-Foil Pan, they do not tell the
same story. Inasmuch as the rim of the Handi-Foil Pan has a horizontal rim
portion, a vertical rim portion, and a curled rim portion, these rim portions
appear to gradually transition into each other. And even this transition is
difficult to detect in the Examiner’s above annotated drawing.
We share the Appellant’s sentiment (see Appeal Br. 9) that the
above-listed features of the rim portions of its pan are ornamental aspects
that could plausibly contribute to the overall visual impression of the
claimed design. For example, according to the Appellant, these aspects
collectively provide “aesthetically pleasing sight lines” creating “a ‘clean
look’ with defined separations and tiered features.” (Id.) Specifically, the
vertical rim portion “define[s] a capturing perimeter to the horizontal rim,”
and the elevated curled rim portion “presents a crown top sightline periphery
capturing both the horizontal and vertical rim walls.” (Id.)
We also share the Appellant’s sentiment (see Appeal Br. 6–7) that the
above-listed features of its rim portions are not apparent in the Examiner’s
annotated drawings of the Handi-Foil Pan. The question becomes, therefore,
whether these differences preclude the designs from having basically the
same overall visual appearance.
The Examiner does not directly dispute the Appellant’s description of
the ornamental contribution of its rim portions to the overall visual
appearance of the claimed design. The Examiner does not characterize the
described ornamental contribution as a slight difference which does not
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preclude a basically-the-same finding.6 And the Examiner does not maintain
that the rim portions of the Handi-Foil Pan make a comparable ornamental
contribution to the overall visual appearance of the prior art design. Rather,
the Examiner focuses on the finding that the Handi-Foil Pan, like the
Appellant’s pan, has a horizontal rim portion, a vertical rim portion, and a
curled rim portion. Indeed, the Examiner summarizes the Appellant’s
arguments as “stating that there is no vertical wall on the rim of Handi-Foil.”
(Answer 9.)
The trouble with the Examiner’s position is that the Appellant is not
arguing that the mere existence of the three rim portions makes a valuable
visual contribution to the overall visual appearance of the claimed design.
The Appellant is arguing that a valuable visual contribution is made by the
existence of these three rim portions in concert with “ornamental aspects”
that “distinctly segregates multiple portions of rim structure from one
another.” (Appeal Br. 9.) The Examiner does not adequately address the
presence/absence of these ornamental aspects in the prior art design and the
Examiner’s annotated drawings are of no help in this regard.
Consequently, the record lacks supported factual findings establishing
that there is “something in existence” that creates basically the same visual
impression as the claimed design. Thus, on the record before us, we cannot
sustain the Examiner’s obviousness rejection.

6 “[S]light differences” in design do not necessarily prohibit a “basically the
same” finding. (MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326,
1332–33 (Fed. Cir. 2014).)
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CONCLUSION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1 103 Handi-Foil Pan,
Fit Pan
1

REVERSED