[00:00:00] Speaker ?:
Okay.

[00:00:48] Speaker 05:
Okay, the next argued case is number 141577 in Ray Hardy.

[00:01:03] Speaker 05:
Mr. Seidman.

[00:01:04] Speaker 02:
May it please the court.

[00:01:06] Speaker 02:
On the counsel table, we brought in an exemplar of the claim design, which is right here.

[00:01:14] Speaker 02:
And we brought an exemplar of the Hardy

[00:01:18] Speaker 02:
reference, which is the purported primary reference against the claim design under 103.

[00:01:27] Speaker 02:
So we have two major contentions.

[00:01:30] Speaker 02:
And the first contention is that Hardy is not a proper primary reference against the claim design.

[00:01:39] Speaker 02:
And the major feature that is absent from the Hardy patent is inclined sidewalls.

[00:01:46] Speaker 02:
This is a

[00:01:47] Speaker 02:
an overall visual appearance.

[00:01:50] Speaker 02:
It's a critical feature of the claim design.

[00:01:53] Speaker 02:
And just as in, for example, the Apple Samsung case where the Fiddler tablet had a frame around the screen and the Apple claim design had no frame around the screen, the Fiddler frame was a critical feature, just as the absence of inclined sidewalls here or the inclined sidewalls here is a critical feature.

[00:02:18] Speaker 04:
What effect at all is there with the previous proceeding in which the parent application of the current application was involved?

[00:02:29] Speaker 04:
My recollection is that the same question of the primary reference came up.

[00:02:35] Speaker 02:
That's correct, Your Honor.

[00:02:37] Speaker 04:
Well, in that case... The board held and we affirmed, right?

[00:02:41] Speaker 04:
Correct.

[00:02:42] Speaker 04:
That the thing you're pointing to was an appropriate prior hunt reference.

[00:02:48] Speaker 02:
That is correct, but there was a major distinction in that this design, which is exactly what's claimed in the present application on appeal, in the parent, the rim, the lower rim was not claimed, the upper rim was not claimed, and the handle was not claimed.

[00:03:05] Speaker 02:
And the significance of that is that the presence in Hardy, the primary reference of an inner stacking rim, was not an issue in the earlier case.

[00:03:19] Speaker 02:
The inner stacking rim is important in Hardy and it's fully disclosed in claims because it allows the Hardy batches to be stacked one on top of the other.

[00:03:31] Speaker 02:
Functional.

[00:03:32] Speaker 02:
I'm sorry?

[00:03:32] Speaker 02:
Functional.

[00:03:34] Speaker 02:
Well, it's a characteristic feature of Hardy that is totally absent in the claim design.

[00:03:41] Speaker 04:
But you can't tell that by looking at it.

[00:03:46] Speaker 04:
I'm sorry?

[00:03:46] Speaker 04:
You can't tell the stacking capacity just by looking at it.

[00:03:51] Speaker 02:
Well, you can tell that there is a stacking rim on the bottom, Your Honor.

[00:03:55] Speaker 01:
Hardy doesn't show it's stacked, though, does it?

[00:03:58] Speaker 02:
Well, the patent doesn't show it's stacked, but there's many

[00:04:03] Speaker 02:
Other cases that this court has considered functional features of designs that didn't necessarily show, for example, in the Best Lock case, it was about a keyblade blank, and that's the only thing disclosed in that patent, but the court considered a mating lock that was not within the four corners of the document.

[00:04:25] Speaker 02:
The PhD case, similarly, had a label sheet

[00:04:30] Speaker 02:
And the alternate designs of that label sheet and how the lower thinner labels could be placed on that label sheet was in fact considered by the court.

[00:04:40] Speaker 02:
And those are all functional features.

[00:04:44] Speaker 02:
So I think it's entirely appropriate that the stackability of this case of this primary reference be considered.

[00:04:53] Speaker 02:
And that is exactly the reason that the prior holding is not relevant really to this holding.

[00:05:00] Speaker 04:
That's what I understood, that you were essentially relying on the stacking point to distinguish the previous case.

[00:05:11] Speaker 02:
Yes, to distinguish the previous case.

[00:05:12] Speaker 04:
So if we disagree with you, the stacking issue is in dispute.

[00:05:16] Speaker 04:
You and your adversary don't agree on that.

[00:05:18] Speaker 04:
That's right.

[00:05:19] Speaker 04:
And if we were to agree with them, then the basis for distinguishing the previous case would be significantly less, correct?

[00:05:28] Speaker 04:
Yes.

[00:05:29] Speaker 04:
That's where I'm trying to get at.

[00:05:30] Speaker 02:
But there's another reason the stacking feature is important.

[00:05:34] Speaker 02:
And that is the effect of the secondary references.

[00:05:39] Speaker 02:
Now the secondary references are ordinary plain baskets.

[00:05:43] Speaker 02:
One's a bicycle basket and the others are three stacked baskets with different proportions, different dimensions, different wire designs, if you will.

[00:05:56] Speaker 02:
But they all have inclined sidewalls.

[00:05:58] Speaker 02:
Now what happens when you incline the sidewalls of the primary reference, as suggested by the examiner and the board, is you render it incapable of stacking.

[00:06:10] Speaker 02:
If the open mouth is wider than the bottom, these will not stack upon each other.

[00:06:17] Speaker 02:
It defeats a major group.

[00:06:18] Speaker 04:
They stack, but it's in a different way because they collapse.

[00:06:23] Speaker 04:
Well, they nest.

[00:06:25] Speaker 02:
They nest.

[00:06:25] Speaker 02:
But in a nesting situation, as with the claim design, you lose all the internal storage capacity of the basket, whereas with a stack one on top of the other, you maintain the internal storage capacity.

[00:06:40] Speaker 01:
But again, the storage capacity question is functional, right?

[00:06:44] Speaker 02:
Yes, Your Honor.

[00:06:45] Speaker 02:
I mean, it's a purpose of the claim design.

[00:06:48] Speaker 02:
I wouldn't say, you know, everything about these baskets is functional.

[00:06:52] Speaker 02:
I mean, the sidewalls hold in things and the frames support the sidewalls.

[00:06:58] Speaker 02:
But that is not the issue.

[00:07:00] Speaker 02:
Functionality is not an issue in this case.

[00:07:03] Speaker 02:
And I would say the use, the purpose, the characteristics of the design

[00:07:09] Speaker 02:
of the primary reference is defeated if the sidewalls are inclined.

[00:07:15] Speaker 04:
A great deal turns on the stacking point in the case, both with regard to the secondary references as well as the primary reference.

[00:07:23] Speaker 02:
Well, I think that is a big point we try to make.

[00:07:26] Speaker 02:
But another point is that I think if you look at the rejection that the examiner and the board made and affirmed

[00:07:39] Speaker 02:
I think it can be more properly characterized as a utility patent type of rejection.

[00:07:48] Speaker 02:
They are taking the concept of inclined baskets in the secondary references and suggesting that it would have been obvious to incline the sidewalls of the primary reference.

[00:08:01] Speaker 02:
Now we don't claim to have invented the concept of inclined sidewalls.

[00:08:06] Speaker 02:
I mean, they're old.

[00:08:07] Speaker 02:
And if this was a utility patent case, I would not be before you.

[00:08:12] Speaker 02:
You know, I would, but it's not a utility patent case.

[00:08:15] Speaker 02:
It's a question of appearances.

[00:08:18] Speaker 02:
And if you look at the courts holding in, again, in the Apple Samsung case, they held that the secondary reference, the TC 1000 was not so related.

[00:08:30] Speaker 02:
And I put that in quotes because that's the test of Gladys.

[00:08:34] Speaker 02:
but it wasn't so related to the primary reference to Fiddler as to make them combinable.

[00:08:42] Speaker 02:
And they were both tablets and they both had flat glass, but there was no visual relationship between the primary and the secondary references so that they could rationally be combined.

[00:08:56] Speaker 02:
And that's at Apple Samsung 678, set third at 1331.

[00:09:02] Speaker 04:
Those are the visual appearances, it depends on how closely you're looking at the two items.

[00:09:11] Speaker 04:
In visual appearance, even the one with the angle, they are boxy or about the same shape.

[00:09:19] Speaker 02:
You mean the two of these?

[00:09:21] Speaker 02:
Yes.

[00:09:22] Speaker 04:
Are the wires the same?

[00:09:23] Speaker 02:
Well, there are a lot of things in common.

[00:09:26] Speaker 02:
The wires are the same.

[00:09:28] Speaker 02:
They both have upper and lower supports.

[00:09:30] Speaker 02:
The handles are obviously the same, excuse the language.

[00:09:34] Speaker 02:
But these walls are inclined.

[00:09:37] Speaker 02:
I know it's very tempting to look at the inclined walls of the secondary art and say it's obvious to incline these.

[00:09:45] Speaker 04:
But again, that's a... What would happen if the inclination was even sliter than the one you're holding?

[00:09:51] Speaker 02:
Well, if the inclination was an inclination,

[00:09:55] Speaker 02:
These are perfectly vertical.

[00:09:58] Speaker 02:
The sidewalls have hardened.

[00:10:00] Speaker 04:
But you could have an inclination that is very, very difficult for the human eye to see, especially like in the distance.

[00:10:08] Speaker 02:
This one right here?

[00:10:10] Speaker 04:
Yes, but I mean you could, is your argument that, well, your argument is this particular inclination makes it inappropriate.

[00:10:18] Speaker 02:
The appearance of that basket is not

[00:10:21] Speaker 04:
basically the same as the appearance of the primary.

[00:10:28] Speaker 02:
But the bottom is a lot smaller than the top.

[00:10:34] Speaker 02:
You can fit items into this sort of basket much more easily.

[00:10:38] Speaker 02:
It's intended

[00:10:40] Speaker 02:
intended for storage of small items.

[00:10:43] Speaker 04:
This one is intended for storage... Why do your items fit into an easier one?

[00:10:49] Speaker 02:
Because it's got a bigger opening at the top.

[00:10:52] Speaker 04:
Because the dimension of the top square... It's a function of how big it is at the top, not how big it is at the bottom.

[00:10:59] Speaker 04:
I would think it would be harder to put a great big thing like an anorak in it because the bottom is smaller.

[00:11:06] Speaker 02:
Well, when you're choosing a particular size of basket, not that size matters in a design patent, but when you're choosing a particular size, it is more convenient to have the top wider than the bottom because things can be withdrawn from it more easily.

[00:11:24] Speaker 02:
This basket was intended to hold file folders, not

[00:11:28] Speaker 02:
I'm not saying you can't, but it is just a little more difficult to dig into.

[00:11:36] Speaker 02:
I guess I'd like to reserve any time I have left for rebuttal.

[00:11:41] Speaker 05:
Thank you.

[00:11:42] Speaker 05:
Good morning.

[00:11:51] Speaker 03:
May I please record?

[00:11:54] Speaker 03:
In this case, the board properly determined that the claimed basket design at issue in this appeal was obvious over the prior art, namely the primary reference, another of Hardy's basket designs claimed in the 302 design patent, in combination with either of the secondary references, Pope or Glassenberg, that depicts similar baskets with tapered sidewalls.

[00:12:13] Speaker 04:
Now, during the decision asked, your primary, whether it's a suitable primary reference, that's a fact question?

[00:12:19] Speaker 04:
That's correct.

[00:12:20] Speaker 04:
And so substantial evidence is our review standard?

[00:12:22] Speaker 03:
That's correct.

[00:12:24] Speaker 03:
And in this case, the board and the examiner set forth several design characteristics.

[00:12:29] Speaker 04:
How are we supposed to review that?

[00:12:31] Speaker 04:
For example, take the inclined sides of the primary reference and assume that they were even more angular, that the bottom was a square and say it was only two inches square.

[00:12:44] Speaker 04:
So you had really severe inclination.

[00:12:49] Speaker 03:
Well, the primary reference doesn't have.

[00:12:51] Speaker 04:
Take the case of where you have even less inclination than this.

[00:12:54] Speaker 04:
What I'm trying to get at is what's the standard that we're supposed to use to decide where substantial evidence fits?

[00:13:01] Speaker 04:
Substantially more inclined sides than those.

[00:13:04] Speaker 04:
If it's been with a two inch square at the bottom, I think everybody would say that's not a sufficient primary reference.

[00:13:12] Speaker 03:
If the claimed design had further inclined walls,

[00:13:19] Speaker 03:
If the claimed design had further, perhaps, perhaps.

[00:13:28] Speaker 03:
I mean, that's not the case.

[00:13:30] Speaker 03:
What we have is we have the wall.

[00:13:31] Speaker 04:
What we're trying to decide is whether an exemplar is a good primary reference for what's being claimed, right?

[00:13:38] Speaker 03:
Right.

[00:13:38] Speaker 04:
And what I'm trying to say is I'm just struggling with how we review for substantial levels gradations in this particular art of the angles.

[00:13:47] Speaker 03:
Well I think in this case you look to what the board and the examiner said was the overall visual appearance of the primary reference.

[00:13:57] Speaker 01:
They have to look virtually the same.

[00:14:01] Speaker 03:
They have to look basically the same.

[00:14:04] Speaker 03:
So the test is basically the same and you look to the overall visual impression of it.

[00:14:10] Speaker 03:
So you look to all the different design characteristics and how they work together to create an overall effect.

[00:14:17] Speaker 03:
Here, the board and the examiner listed at least five or six different design characteristics, including the mesh design, the heavy wire rims, the semi-circular openings that are handled, the heavy wire rims around those,

[00:14:33] Speaker 03:
the heavy wire rims around the bottom as well and the fact that they're both square, have square openings at the top and are square shaped baskets.

[00:14:41] Speaker 01:
So let's get to the secondary references because you can see that the primary reference wouldn't be enough for a finding of Robertson, correct?

[00:14:51] Speaker 03:
The primary reference alone, you need secondary references, that's correct.

[00:14:55] Speaker 01:
It's something with angles.

[00:14:57] Speaker 03:
You need something with angles, that's correct.

[00:14:59] Speaker 01:
But the problem is that, for me, is the discussion that both the examiner and the board had was, and cryptic is a nice, it's being generous.

[00:15:11] Speaker 01:
I mean, they basically said, you would have known.

[00:15:13] Speaker 01:
You would have just taken these sidewalls from these other things and put them on here.

[00:15:18] Speaker 01:
But that's not really the test.

[00:15:20] Speaker 01:
The test is, what about the overall appearance of those other items?

[00:15:25] Speaker 01:
would motivate you to combine them.

[00:15:29] Speaker 01:
And they never really did lay out the proper test, did they?

[00:15:32] Speaker 03:
I disagree.

[00:15:33] Speaker 03:
I mean, I think that the examiner and the board took the first step of that test, which is to determine whether or not the secondary references here, the wire mesh baskets of Pope and Glassenberg, whether or not they are so related to the primary reference.

[00:15:50] Speaker 03:
and here uh... because they're all liar about it component that they've had well there's a component here that had angle i've also therefore and because it's a basket you would combine but that's not the right well in this case uh... whether something is so related in they're all liar basket so they are so related to each other this court has said i think uh... in the m r c innovations case

[00:16:16] Speaker 03:
When they were talking about the so-related test, they said you look to see if something is sufficiently related or closely akin to the primary reference.

[00:16:25] Speaker 01:
What's the explanation that either the examiner or the board gave as to why they are so related?

[00:16:31] Speaker 03:
The examiner, they all mentioned that they were wire baskets.

[00:16:36] Speaker 03:
And so they are all the type of article that the primary reference is.

[00:16:41] Speaker 03:
And so because they are all wire baskets, they are all so related.

[00:16:44] Speaker 03:
They didn't go out and look at lampshades or something like that that would have similar designs to it.

[00:16:49] Speaker 03:
They looked within the analogous art.

[00:16:50] Speaker 03:
They looked within these wire baskets and found within that art baskets that looked like

[00:16:58] Speaker 03:
the claimed design.

[00:17:00] Speaker 03:
That had the angled sidewalls as the claimed design and said that because they were all wire baskets, they were so related such that the ornamental design, and they were specific to say that it was the ornamental design of the tapered sidewalls, would suggest that application to the primary reference here.

[00:17:23] Speaker 03:
the square basket.

[00:17:27] Speaker 01:
I think that you also have to look at the appearance as well.

[00:17:39] Speaker 03:
I think you just can't go out and pull

[00:17:42] Speaker 03:
any wire basket i think that you'd use them at apple they were talking about two tablets and they said they weren't so related that's correct so but i think that can't be enough but that was the first step and then the examiner also said that the angled sidewalls look are similar to that of the claimed design as well

[00:18:11] Speaker 04:
What significance do you attach to the previous ruling on the parent application?

[00:18:18] Speaker 03:
I think that the previous case with the parent application is, although it's not precedential for this court, I think it's very persuasive.

[00:18:26] Speaker 03:
It's the same prior art.

[00:18:28] Speaker 03:
The claim design has actually more design characteristics in common with the primary reference in this case than in the first case.

[00:18:40] Speaker 03:
in the parent case, because in that case, the claims disclaimed the top portion of this.

[00:18:46] Speaker 03:
They disclaimed the wire rim, they disclaimed the handle, they disclaimed the heavy rim around the bottom.

[00:18:53] Speaker 03:
Here, in this case, we have a primary reference that has at least three more design characteristics that lend to the overall visual appearance

[00:19:04] Speaker 01:
uh... to be basically the same so if you overturn this law that says rule thirty-six doesn't decide anything.

[00:19:11] Speaker 01:
Don't we?

[00:19:12] Speaker 03:
Well, that's why I say it's not presidential.

[00:19:14] Speaker 01:
I still think that it's not only not presidential, it doesn't determine anything.

[00:19:19] Speaker 01:
It's not even persuasive for us.

[00:19:21] Speaker 01:
We're not allowed to consider it as having made any determination as any legal or factual issue.

[00:19:26] Speaker 03:
Well, I think because in this case you have exactly the same

[00:19:31] Speaker 03:
prior art and you would end up with a paradoxical case or situation where you have a primary reference that has less design characteristics in common with the claimed design as being non-patentable, whereas here you would have a primary reference with even more

[00:19:58] Speaker 03:
design characteristics in common, namely the handles, the wire rim around the top and the wire rim around the bottom, should be non-patentable.

[00:20:07] Speaker 03:
And that's both incongruous and paradoxical with the result of the case with that parent.

[00:20:13] Speaker 01:
But that's what can happen when decisions get rolled 36, right?

[00:20:16] Speaker 03:
Well, I think, again, in this case, because the issues are pretty much exactly the same.

[00:20:22] Speaker 03:
They line up almost exactly the same.

[00:20:25] Speaker 03:
So I think that they still should be

[00:20:28] Speaker 03:
Again, persuasive, even though... What's your take on the stacking issue?

[00:20:36] Speaker 03:
The take on the stacking issue is, I think Council for Hardy never argued that, or did not argue that the stacking rim in any way affected the overall visual appearance of the claimed, of the

[00:20:57] Speaker 03:
the primary reference.

[00:20:59] Speaker 03:
So because it doesn't affect the appearance of the primary reference, it really has no weight in the design patent context.

[00:21:10] Speaker 03:
They never made that argument during prosecution.

[00:21:14] Speaker 03:
The only difference is when they were talking about the aesthetics was that there was the tapered sidewall.

[00:21:19] Speaker 03:
And that's really what they relied on, was just the angle of the sidewall.

[00:21:21] Speaker 03:
They did not point to the stacking room at all.

[00:21:23] Speaker 03:
The only time they pointed to the stacking room was when they were talking about the functionality.

[00:21:27] Speaker 03:
of it.

[00:21:28] Speaker 03:
The functionality of stacking is not relevant in this case.

[00:21:34] Speaker 03:
The design patent doesn't show stacked patents.

[00:21:38] Speaker 03:
The intended use of a product is not something that should be looked at when determining the scope of a design patent.

[00:21:47] Speaker 03:
You look only to appearances, not to the uses.

[00:21:50] Speaker 01:
Would you agree with me that in the prior case the decision, the board's decision was a lot more detailed as it relates to consideration of secondary references.

[00:22:00] Speaker 01:
It didn't simply say, okay, someone would have figured this out and put it together, which is essentially what the examiner here said.

[00:22:08] Speaker 03:
I think there probably was a little more discussion in the prior case than in this case.

[00:22:14] Speaker 03:
But in this case...

[00:22:18] Speaker 01:
essentially one concrete statement that says it would have been obvious to a designer of ordinary skill in the art at the time of the invention to modify the basket so as to have sidewalls that taper inwardly as taught by Pope or Glassenberg.

[00:22:36] Speaker 01:
That's it.

[00:22:37] Speaker 03:
It would have been obvious.

[00:22:38] Speaker 03:
Well, also within the final rejection on page A78,

[00:22:42] Speaker 03:
of the record.

[00:22:44] Speaker 03:
The examiner did say, it's the examiner's decision that both Pope and Blassenberg each teach trapezoidal sidewalls and both contain the top opening having dimensions much larger than the bottom, much like the applicant's design.

[00:22:55] Speaker 03:
So the examiner did look to the appearance of the baskets and did, in this case, say that it did find a similarity visually.

[00:23:08] Speaker 05:
Did the board adopt the examiner's analysis?

[00:23:10] Speaker 03:
That's correct.

[00:23:11] Speaker 03:
The board did adopt the examiner's analysis.

[00:23:13] Speaker 05:
What's really been confusing about all of this is that a closer primary reference to something like a pole, where the shape, the general shape is the same, except that then when you start drawing the distinctions, the wire top, the handles, you have that diamond-shaped mesh.

[00:23:36] Speaker 05:
Then you have greater distinctions.

[00:23:38] Speaker 05:
So what I've been

[00:23:40] Speaker 05:
hustling over as I listen to all of this is you pick a primary reference which in fact is a different shape and then you have to combine it with other things in order to get the taper.

[00:23:54] Speaker 05:
Is it error for the board, for the examiner?

[00:23:59] Speaker 05:
Not to select a primary reference whose overall appearance according to the law of design patents is more similar than the primary reference

[00:24:09] Speaker 05:
that was selected?

[00:24:11] Speaker 03:
No, I don't think so, because I think in this case, all of those other design characteristics that the board and the examiner identified, the type of mesh, the heavy rim, the wire mesh on the bottom, the handles.

[00:24:26] Speaker 05:
But in isolation, until you have the tapered shape, they're not applicable.

[00:24:32] Speaker 03:
No, I think it's still basically the same design.

[00:24:36] Speaker 03:
I think the examiner and the board both

[00:24:39] Speaker 03:
found that because all of these other design characteristics were the same, that the presence or absence of this slight tapered sidewall didn't make those two things to be visually different enough so that they wouldn't be basically the same.

[00:24:53] Speaker 05:
And this is an obvious- Well, you didn't have to draw on the secondary references.

[00:24:56] Speaker 03:
That's correct.

[00:24:57] Speaker 03:
This is an obviousness analysis.

[00:25:00] Speaker 03:
So there has to be some difference between the primary reference

[00:25:04] Speaker 03:
and the claim design.

[00:25:06] Speaker 03:
And here the difference is that tapered sidewall and the examiner went out and found baskets with the same type of taper.

[00:25:14] Speaker 03:
It's not like the examiner didn't go out and just say, find references that just alluded to tapered sidewalls or angled sidewalls, but a basket could have angled sidewalls or did not find a basket where the sidewalls were angled outwardly or were concave or curved.

[00:25:31] Speaker 03:
They found a design that they said looked like the angled sidewalls of the claimed design and then applied that to the primary reference to get the combination that renders that obvious.

[00:25:46] Speaker 05:
Is that what's called hindsight?

[00:25:48] Speaker 03:
No, I don't believe so.

[00:25:49] Speaker 03:
I think in this case, it can't be hindsight because they did make the determination that the baskets of Pope and Glassenberg were so related

[00:25:58] Speaker 03:
to the primary reference.

[00:26:00] Speaker 03:
And so because of this relation between them, the ornamental designs in one basket would be suggested in the primary design itself.

[00:26:09] Speaker 03:
So because they made that finding, no, they did not rely on hindsight here.

[00:26:17] Speaker 04:
When you're going about trying to answer this overall impression, you really are supposed to look at all of the similarities or the differences together, right?

[00:26:28] Speaker 04:
For example, I'm sitting here and I'm looking and I say, well, is that square box a good primary reference in one of the angles?

[00:26:36] Speaker 04:
Well, if you look at the cutouts, and if you look at just the square top, that sort of says, well, they're the same.

[00:26:43] Speaker 04:
And your essential argument, I think, is the bits and the pieces is that there are enough other things going on that are the same.

[00:26:50] Speaker 04:
That tends to overwhelm the factor that may be different.

[00:26:56] Speaker 04:
Where the factor that's different is not extreme.

[00:26:59] Speaker 03:
Not exactly, because you can't focus on the individual elements.

[00:27:02] Speaker 03:
You have to look at how all of them interplay with each other and combine to create the overall visual effect.

[00:27:08] Speaker 03:
And here the board and the examiner found that all of those elements that they identified, they didn't look at them individually, they just identified them individually.

[00:27:16] Speaker 03:
They said they together combined to create an overall visual appearance.

[00:27:21] Speaker 03:
that is basically the same as the claim design.

[00:27:24] Speaker 04:
What I'm trying to get at is I'm just not certain how you do it.

[00:27:26] Speaker 04:
For example, if those scoops, the cutouts, were, say, both on the primary reference and on the applicant's design, were very severe.

[00:27:38] Speaker 04:
So like 2 thirds of the side of the basket was cut out, that would strike your eye really very quickly and would tend to overwhelm a difference of a slight angular difference in the side, I would think.

[00:27:50] Speaker 03:
Well, I would submit that the heavy wire designs and both of the semi-circular openings on either side of the basket with the heavy wire rims, the heavy wire rim around the bottom, the same mesh design between them and the square opening, they all combine to create the same visual impression.

[00:28:13] Speaker 03:
Again, you may be falling into the trap of identifying a single

[00:28:18] Speaker 03:
difference and elevating that difference above the overall visual impression or appearance.

[00:28:26] Speaker 03:
And here the board and the examiner avoided doing that and looked at the overall

[00:28:36] Speaker 03:
visual effect and found that they were basically the same and therefore properly founded as a Rosen reference.

[00:28:41] Speaker 04:
Do we know what the exact angular difference is between the right angle on the primary reference and the patent?

[00:28:51] Speaker 03:
I don't.

[00:28:52] Speaker 03:
And again, that is a commercial embodiment.

[00:28:55] Speaker 03:
I mean, that's not the drawing in the design patent itself.

[00:29:00] Speaker 03:
But no, I don't know what the actual angle is.

[00:29:04] Speaker 03:
But again, I think

[00:29:06] Speaker 03:
One designer of ordinary skill would be charged with the knowledge of knowing how to change, to have slightly change the angles of those walls.

[00:29:17] Speaker 03:
As this court said, an Inray Lamb, and I think an Inray Carter as well.

[00:29:21] Speaker 03:
And just one quick last point.

[00:29:25] Speaker 03:
We've spoken several times about the Apple v. Samsung case.

[00:29:28] Speaker 03:
I think in that case, there were a significant number of differences that the court identified between the primary reference and the claim design.

[00:29:36] Speaker 03:
Here, the only differences that Counselor Hardy are talking about are the angled sidewalls and its effect on the overall appearance.

[00:29:51] Speaker 03:
there's really only one big major difference here.

[00:29:54] Speaker 03:
And one difference here is that those sidewalls, whereas in the application, there's a much greater number.

[00:30:00] Speaker 05:
Thank you.

[00:30:10] Speaker 02:
They did it again.

[00:30:10] Speaker 02:
It's not, it's not just the angle sidewalls.

[00:30:16] Speaker 02:
is the absence in the claimed design of a stacking rim.

[00:30:22] Speaker 02:
That is one of the major points we're trying to make.

[00:30:26] Speaker 02:
In none of the characterizations by the examiner or the board did they ever mention the stacking rim.

[00:30:36] Speaker 02:
They characterized this design as mesh, as square, with the handle, with the support rims.

[00:30:43] Speaker 02:
They never once mentioned the stacking rim.

[00:30:46] Speaker 02:
So it was, it was that that led them, you know, to conclude that they're basically the same, just as Mr. Rosilla did.

[00:30:56] Speaker 02:
Another point I'd like to make is I agree that the examiner and the board chose a poor primary reference.

[00:31:05] Speaker 02:
It is a cubicle box against an inclined sidewall basket.

[00:31:12] Speaker 01:
Well, the assumption always is that there is some difference between the primary reference and the application, because you wouldn't have to look at secondary references.

[00:31:21] Speaker 02:
Right, but in this case, I think it can be surmised that they followed the formula of the first case.

[00:31:28] Speaker 02:
They applied the same art, the same logic, and the same rejection.

[00:31:32] Speaker 02:
When you look at the secondary references to Popeng,

[00:31:37] Speaker 02:
The examiner and the board did not consider or mention the size of those baskets, which are vastly different from these two, the aspect ratio,

[00:31:48] Speaker 02:
the length and the width of those two baskets.

[00:31:51] Speaker 02:
They didn't consider the use of the baskets.

[00:31:54] Speaker 02:
One of them was on a bicycle and the other was three stacked in a rack.

[00:31:58] Speaker 02:
They didn't consider that the wires were vastly different in those two references.

[00:32:04] Speaker 05:
The limitations, the size and so on are not limitations in your claim.

[00:32:09] Speaker 05:
Is that right?

[00:32:11] Speaker 02:
Well, the aspect ratio would be the fact that it has a square opening at the top and the square bottom.

[00:32:17] Speaker 02:
and trapezoidal size, that is certainly a limitation.

[00:32:20] Speaker 02:
Now this basket could be as big as this room, and if it had the same proportions, it would not matter.

[00:32:27] Speaker 02:
I agree with you.

[00:32:28] Speaker 02:
But the various ratios of length to width to height do matter and are a limitation in our claim.

[00:32:37] Speaker 02:
So my point about the fact

[00:32:39] Speaker 02:
that the examiner and the board did not consider any of these characteristics of the secondary references to Pope and Glassenburg shows that they are not so related.

[00:32:52] Speaker 02:
And they don't have to be related to the plain design.

[00:32:56] Speaker 02:
The relatedness has to bear on the primary reference.

[00:33:01] Speaker 02:
So the secondary references and the primary reference have to be so related that they are combinable.

[00:33:10] Speaker 02:
And the combination has to meet the claim, or at least render it obvious.

[00:33:18] Speaker 02:
So I think that those are the points I wanted to make.

[00:33:26] Speaker 02:
If you don't have any further questions.

[00:33:28] Speaker 04:
Well made.

[00:33:29] Speaker 02:
Thank you very much.