2019004511 (P.T.A.B. Jul. 10, 2020)

Honda Motor Co., Ltd.

Patent Trials and Appeals BoardJul 10, 2020

2019004511 (P.T.A.B. Jul. 10, 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. 29/543,707 10/27/2015 Derek Zurian 037110.00384 1093 139525 7590 07/10/2020 Arent Fox LLP and Honda Patent & Technologies North America, LLC 1717 K Street, NW Washington, DC 20006-5344 EXAMINER MCLEAN, CHRISTIAN P ART UNIT PAPER NUMBER 2923 NOTIFICATION DATE DELIVERY MODE 07/10/2020 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): PATENTDOCKET@ARENTFOX.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DEREK ZURIAN, DAMON SCHELL, TAKASHI HAMADA, and LILI MELIKIAN ____________ Appeal 2019-004511 Application 29/543,707 Technology Center 2900 ____________ Before KEN B. BARRETT, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals the Examiner’s rejection under 35 U.S.C. § 103 of the single design claim (claim 1) pending in this application. We REVERSE.2 1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest is the Assignee, HONDA MOTOR CO., LTD.” (Appeal Br 2.) 2 We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a) and 171(a). Appeal 2019-004511 Application 29/543,707 2 THE CLAIMED DESIGN The Appellant claims an “ornamental design for a rear bumper.” (Appeal Br., Claims App., capitalization omitted.) The Appellant’s bumper has, in the Examiner’s words, a “central fascia board,” “two side fenders,” and a “notch” which “partially detach[es]” the central fascia board from the side fenders. (Final Action 2; see also Ans. 13.) These features of the Appellant’s bumper are labeled in our annotated drawings below. Figure 5 front view Figure 7 side view central fascia board side fenders notch side fender central fascia board notch Appeal 2019-004511 Application 29/543,707 3 REJECTION The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable over Chen,3 in view of Iida4 and Nakagawa.5 (Final Action 2.) OBVIOUSNESS An obviousness rejection of a design claim can be premised upon a determination that a designer of ordinary skill in the art would have modified a primary reference in view of the teachings of a secondary reference. (See Durling v. Spectrum Furniture Co., Inc. 101 F.3d. 100, 103 (Fed. Cir. 1996).)6 But such a determination does not, in and of itself, render a design claim obvious over the prior art. It must also be established that the proposed combination of the prior art “creates the same overall visual appearance as the claimed design” in the eyes of an “ordinary observer.” (See Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329–30 (Fed. Cir. 2012).) 3 US D738,267 S, issued September 8, 2015. 4 US D719,065 S, issued December 9, 2014. “Iida” is the second-listed inventor in this patent. 5 US D746,188 S, issued December 29, 2015. 6 The primary reference must be “a something in existence, the design characteristics of which are basically the same as the claimed design.” (In re Rosen, 673 F.3d 388, 391 (C.C.P.A. 1982).) For the purposes of this appeal only, we assume that the primary reference (Chen) is a proper Rosen reference. The secondary reference must be “so related” to the primary reference “that the appearance of certain ornamental features in one would suggest the application of those features to the other.” (Durling, 101 F.3d. at 103.) For the purpose of this appeal only, we assume that the secondary references (Iida and Nakagawa) are so related to the primary reference. Appeal 2019-004511 Application 29/543,707 4 ANALYSIS The Examiner’s obviousness rejection is premised upon a determination that a designer of ordinary skill in the art would have modified the primary reference, Chen, in view of the teachings of the secondary reference, Iida. (See Final Action 2–3.) As for the primary reference, the Examiner finds that Chen discloses a bumper that has a “central fascia board” and “two side fenders” (Final Action 2), which are labeled in our annotated drawings below. Chen Figure 2 Chen Figure 3 “The [E]xaminer acknowledges that a notch is not present” in Chen’s bumper (Final Action 4) and that “[t]he claimed design differs from Chen” in this regard (id. at 3). However, the Examiner determines that “[i]t would have been obvious to a designer of ordinary skill in the art to modify [Chen’s ide fender tral fascia board no notch Appeal 2019-004511 Application 29/543,707 5 bumper] by partially detaching the lower horizontal fascia board” as taught by Iida. (Id.) Iida discloses a design in which notches are situated in the vicinity of fender-adjacent regions of a bumper. (See Iida, Figs. 2, 4, 5.) And, according to the Examiner, these notches partially detach Iida’s fascia board from its side fenders. (See Ans. 14.) Thus, in the Examiner’s proposed combination of the prior art, Chen’s bumper is modified to include Iida’s notches. The Appellant argues that such a combination would not create a bumper having the same overall visual appearance as the claimed design. (See Appeal Br. 15.) We are persuaded by the Appellant’s position. As pointed out by the Appellant, the visual contribution of the Appellant’s notches to the bumper’s overall appearance differs from that of Iida’s notches. (See Appeal Br. 15.) These dissimilar visual contributions are effectively portrayed in the Examiner’s drawings (see Ans. 15) reproduced below. Appellant Iida As the Appellant points out, and the Examiner’s drawings show, the Appellant’s notch presents itself as a narrow “slot” in the side view, while Iida’s notch presents itself as a much wider “triangular wedge.” (Appeal Appeal 2019-004511 Application 29/543,707 6 Br. 15.) As such, we disagree with the Examiner’s characterization of these dissimilarities as “nominal,” “minute details,” and/or “small variations.” (Ans. 14.) Indeed, the Examiner’s drawings demonstrate that Iida’s triangular-wedge-shaped notches are visually-dominant features which are noticeably absent in the Appellant’s bumper. Consequently, if Chen’s bumper is modified to include Iida’s notches, it follows that this so-modified bumper would possess visually-dominant notches having triangular-wedge shapes.7 And the Examiner does not sufficiently explain why these visually-dominant features, noticeably absent in the Appellant’s bumper, would not preclude Chen’s modified bumper from having the same overall appearance as the claimed design. Thus, on the record before us, we cannot sustain the Examiner’s rejection under 35 U.S.C. § 103. CONCLUSION Rejected 35 U.S.C. References/ Basis Affirmed Reversed 1 § 103 Chen, Iida, Nakagawa 1 REVERSED 7 Insofar as the contour/curvature of Chen’s bumper (either as disclosed or as modified by Nakagawa’s teachings) would somehow diminish the visual dominance of these triangular-wedge-shaped notches, the Examiner does not adequately address why this is so.