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.)

Details:

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?