Thursday, July 12, 2012

BPAI reverses anticipation rejection using trademark registration to support inherency theory

Takeaway: During a reexamination appeal, the BPAI reversed an anticipation rejection involving a trademark registration. The rejection was based on a print advertisement for a product in conjunction with the trademark registration for that product. The trademark registration listed four goods, only one of which corresponded to the claim limitation at issue ("wire glass"). The Board found that since the registration listed goods other than the claimed variety of glass, the trademark in the ad was not evidence that the publication necessarily described the claim limitation at issue. Therefore, the Board reversed the anticipation rejection. (Anemostat Products v. O'Keefe's, Inc., BPAI 2011.)


Anemostat v. O'Keefe's, Inc.
Appeal 2011005771
Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016
Patent US 7,090,906 B2
Technology Center 3900
Decided  September 29, 2011

A patentee with an independent claim to a "fire resistant safety glass" appealed a § 102(b) rejection in a reexamination. The limitation at issue was "a piece of wire glass."

The publication used in the rejection was a print advertisement in a magazine. The ad identified the product as FireLite NT, and described the product as "an impact safety/fire-rated window glazing material. Product is made with abrasion-resistant 3M® Scotchshield® Ultra Film." Since the ad did not include the "wire glass" limitation, the Examiner relied on an inherency theory, based on a US trademark registration for FireLite NT. Specifically, the Examiner relied on the description of goods in the trademark registration, listed as "fire-rated and impact safety-rated glazing material for building windows, doors and partitions; namely sheet glass, wire glass, laminated glass, and multiple glass."

The Board reversed the Firelite NT rejection, finding that the trademark's description of goods was not enough to show that the advertised product necessarily included "a piece of wire glass" as claimed.  While the trademark showed that the product was used for one of four different glass products (sheet glass, wire glass, laminated glass, and multiple glass), it did not show that the product mentioned in the ad was wire glass rather than one of other three varieties of glass. The Board then cited In re Robertson for the proposition that "[i]nherency is not established by probabilities or possibilities. (In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)).

My two cents: I thought this was worth blogging about because it's unusual to find a trademark registration used in a rejection. (Although all kinds of unusual prior art shows up in reexamination).

Nothing wrong, in theory, with a rejection based on a trademark registration. In fact, this would have been a slam dunk rejection had the only good listed been the claimed "wire glass."

More interesting question: could the Examiner/requester have turned this into an obviousness rejection? With the ad being a primary reference used to teach a generic limitation "fire-rated and impact safety-rated glazing material" and the registration used to one show that the specific limitation "wire glass" was one of merely four options for the type of glass?


  1. Interesting but while one of ordinary skill is presumed to know the relevant art, is one of ordinary skill also presumed to know the descriptions of goods/services in trademark registrations? Why is a person of ordinary skill looking at TM registrations? The thing of it, why is an Examiner wasting time using a trademark registration instead of finding an actual patent/publication/etc. that discloses wire glass?
    An Examiner once cited a number of NRC regulations to me as allegedly disclosing elements of the claims. However, the issue always boils down to enablement and what is actually disclosed by the references. Moreover, what's the reasoning with rational underpinning being applied by the Examiner for the combination of the references? One practical reason for requiring that there be an actual determination of skill level by the Examiner is that the Examiner is then forced to be able to come up with reasoning that jibes with the skill level determination. And if it doesn't jibe, the applicant now has another tool that allows them to poke additional holes in the Examiner's flawed reasoning.

  2. >what's the reasoning with rational underpinning
    >being applied by the Examiner for the
    >combination of the references?

    Not sure if you're talking about my hypothetical obviousness rejection or the actual BPAI case. The actual rejection was a multiple-reference anticipation rejection, so no rationale-for-combining is necessary.

    >is [POSITA] also presumed to know the
    >descriptions of goods/services in trademark >registrations?

    Interesting question. But I'm not sure we even get to that question. We're talking about anticipation. There is no such determination of what POSITA knows for anticipation. A reference either is or is-not a reference under a particular prong of 102. "Out of my field" is irrelevant to anticipation.

    Do we add such a requirement when pulling in an additional references as evidence to support an anticipation? Don't think so.

    Even if we did, I believe the knowledge-of-a-POSITA extends to trademark registrations for to the "relevant art".

    Seems weird, but then again, why not? POSITAs know stuff that no real person would know. yet few would question an Examiner's use of the most obscure technical reference as evidence to support anticipation.

    Just thinking out loud here. Haven't thought this part through, and don't know of any relevant legal authority.

    >why is an Examiner wasting time using a
    >trademark registration instead of finding an
    >actual patent/publication/etc. that discloses
    >wire glass

    Well, in a reexam context, the Examiner simply adopts/refuses-to-adopt the Requester's position, right? [I think that is so ... I'm not a reexam expert.]

    So we really should ding the Requester, not the Examiner. I have no knowledge about the specifics of this case. But most reexam Requesters spend a lot of money on prior art searches, so if I had to speculate, I'd say this was the best the Requester could come up with.

    >[requirement for] actual determination of
    >skill level by the Examiner

    Ah, but such a requirement wouldn't help here, in the anticipation context.

  3. This is another example of the examiners, in this case from the CRU, the supposed cream of the crop, being completely and totally ignorant about evidence. They don't know what it is, and they wouldn't know how to evaluate it if they did. Send them all home.