Carlson, In re

• Citation: 25 USPQ2d 1207,983 F.2d 1032
• Decision Date: 16 December 1992
• Docket Number: No. 92-1248,92-1248
• Parties: In re Bradley C. CARLSON.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1032

983 F.2d 1032

25 U.S.P.Q.2d 1207

In re Bradley C. CARLSON.

No. 92-1248.

United States Court of Appeals,

Federal Circuit.

Dec. 16, 1992.

As Revised on Petition for Rehearing Feb. 1, 1993.

Malcolm L. Moore, Moore & Hansen, of Minneapolis, Minn., argued for appellant. With him on the brief was Chad A. Klingbeil.

Jameson Lee, Associate Sol., Office of the Sol., of Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were John W. Dewhirst, Richard E. Schafer, Albin F. Drost and Lee E. Barrett.

Before NIES, Chief Judge, LOURIE and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Bradley C. Carlson appeals from the January 9, 1992 decision of the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), Appeal No. 91-2823, affirming the examiner's rejection in reexamination proceeding No. 90/001,935 of the claim of U.S. Design Patent No. 289,855 (Des. 289,855) as unpatentable under 35 U.S.C. § 103 (1988). We affirm.

I

The two issues raised in this appeal are whether the design protected by a German Geschmacksmuster constitutes an "invention ... patented ... in ... a foreign country" within the meaning of 35 U.S.C. § 102(a) (1988) and thus may be considered prior art, and whether Des. 289,855 is unpatentable under 35 U.S.C. § 103 (1988) as obvious in light of the pertinent prior art.

The application that culminated in issuance of Des. 289,855 on May 19, 1987 was filed with the PTO by Carlson on November 19, 1984. The claim of Des. 289,855 covers the ornamental design for a dual compartment bottle as depicted in the six figures included in the design patent.

On April 6, 1990, the PTO granted a request for reexamination of Des. 289,855 filed by Revlon, Inc. and Smiletote, Inc., whom Carlson had accused of infringing Des. 289,855. During the reexamination, several references were considered which had not been before the examiner during prosecution of the initial application. The new references were (i) German Geschmacksmuster No. 4244, issued to Firma Frankenwald-Presserei Horst Rebhan on May 9, 1984; (ii) U.S. Design Patent No. 86,749, issued to Salvatore Scuito on April 12, 1932, and entitled "Design for a Combined Flask and Drinking Glass Holder" (Scuito); and (iii) a magazine article entitled "News in Packaging," Drug & Cosmetic Industry (July 1978) (Redken article), illustrating the type of bottle cap used in Des. 289,855.

A Geschmacksmuster is a design registration obtained by an applicant from the German government after performing certain registration procedures. Professor Chisum, in a nutshell, thus describes the registration process in effect in 1984:

[A] person may register an industrial design or model by depositing with a local office an application with a drawing, photograph or sample of the article. Registration is effective on deposit, and lists of registered designs are published a short time after registration.

1 Donald S. Chisum, Patents § 3.06, at 3-107 (1992) (footnote omitted). The local office of deposit of a Geschmacksmuster in a city is the Amtsgericht, which is the local courthouse or seat of government of that city. The published list, which discloses certain particulars of each registration, is contained within the Bundesanzeiger, or Federal Gazette. The information typically disclosed in the Bundesanzeiger, with respect to a registered design, consists of a general description of the deposited design and the class of articles deposited, identifying numbers of the deposited designs, the name and location of the registrant, the date and time of registration, and the term of protection. In addition, the city location of the deposited design is also known because the published list is organized under city headings.

Certified copies of Geschmacksmuster are available from the Amtsgericht in which the registered designs are deposited. Such copies typically include the same information regarding the Geschmacksmuster as provided in the Bundesanzeiger, supra, including the city of deposit, and a copy of the drawing or photograph deposited. In the case of deposited sample articles, certified copies of Geschmacksmuster contain photographs of the sample articles.

The Geschmacksmuster in this case embraces three different bottle designs, Nos. 3168-3170. Only Model No. 3168 is pertinent to the design claimed in Des. 289,855. That model is a bottle design consisting of two attached container portions divided by a striking, asymmetrical zig-zag line of demarcation. Each container portion has an externally threaded neck with an associated screw-on cap. As translated, both the Bundesanzeiger publication referring to the Geschmacksmuster and the certified copy of the Geschmacksmuster state, in relevant part: "An open package with plastic or synthetic bottles with stoppers.... Model for plastic products." The description as "open" signifies that the deposited materials are available for public inspection. In addition, the certified copy of the Geschmacksmuster, which was supplied to the examiner as relevant prior art, includes a series of photographs of the three deposited designs taken from various orientations. The Bundesanzeiger identifies the German city of Coburg, Bavaria as the location of the registered design.

Scuito depicts an ornamental design for a combined flask and drinking glass holder. The flask and drinking glass are adjacent to one another and within a smooth-walled holder with a flat, oval base and smooth, plain walls equal in height to the body portions of the flask and glass. Both designs incorporate threaded portions on the receptacles' extremities, presumably to facilitate capping. The overall design disclosed by Scuito, however, is asymmetrical in that the necks of the adjacent receptacles are of different heights.

The final reference in the prior art, the Redken article, illustrates the type of bottle cap used by Carlson in his bottle design, and demonstrates the cap's existence in the art prior to the date of Carlson's invention.

II

Upon reexamination, the examiner rejected Carlson's argument that the Geschmacksmuster should not qualify as prior art under section 102(a), and found that the design protected by Des. 289,855 would have been obvious under section 103. Because the Geschmacksmuster was issued less than twelve months prior to the date of Carlson's application, 35 U.S.C. § 102(b) (1988) is inapplicable.

On appeal, the Board cited as its guide and authority In re Talbott, 443 F.2d 1397, 170 USPQ 281, 58 C.C.P.A. 1374 (1971) (German Geschmacksmuster constitutes a "foreign patent" for purposes of 35 U.S.C. § 102(d) (1988)), and In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978) (no reason to distinguish between sections 102(a) and 102(d) in determining what constitutes a "foreign patent"). Based on those cases, the Board concluded that a Geschmacksmuster constitutes a patent for purposes of section 102(a). Consequently, the Board held that the Geschmacksmuster was pertinent prior art, and affirmed the examiner's conclusion that Des. 289,855 would have been obvious over the Geschmacksmuster in light of Scuito and the Redken article. Carlson timely appealed the Board's decision to this court.

III

Interpretation of statutory terms is a question of law which this court reviews de novo. Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 906 F.2d 1568, 1572, 15 USPQ2d 1359, 1362 (Fed.Cir.1990); Chaparral Steel Co. v. United States, 901 F.2d 1097, 1100 (Fed.Cir.1990).

Assuming no other bar to patentability, a person is entitled to a patent under U.S. law unless the same invention was patented by another person in a foreign country prior to the invention thereof by the U.S. applicant. 35 U.S.C. § 102(a) (1988). The potential bar thus created by the existence of a patent issued in a foreign country gives rise to the availability of such a foreign patent as a prior art reference for the purpose of determining the validity of the claims in a U.S. patent or pending patent application. See Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173, 224 USPQ 520 (1984); In re Zimmer, 387 F.2d 990, 991, 156 USPQ 252, 253, 55 C.C.P.A. 817 (1968).

A further bar to patentability arises if an applicant for a U.S. patent has been granted a patent in a foreign country on the same invention more than twelve months prior to the date the patent application is filed in the United States. 35 U.S.C. § 102(d) (1988).

The precise words of section 102 read, in pertinent part:

A person shall be entitled to a patent unless--

(a) the invention was ... patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

. . . . .

(d) the invention was first patented ... by the applicant ... in a foreign country prior to the date of the application for patent in this country on an application for patent ... filed more than twelve months before the filing of the application in the United States....

35 U.S.C. § 102 (1988). With respect to design patents, however, Congress has provided that the time bar in section 102(d) is six months. 35 U.S.C. § 172 (1988).

In In re Talbott, our predecessor court decided, as a matter of first impression, that a design protected by a Geschmacksmuster qualifies under section 102(d) as an invention patented in a foreign country for purposes of applying the statutory time bar against an application for a U.S. design patent covering the same subject matter. 443 F.2d at 1398-99, 170 USPQ at 282. The court rejected the argument that a Geschmacksmuster should not be deemed to fall within section 102(d) because the copyright nature of the rights protected by the Geschmacksmuster is substantially different from the rights inherent in a U.S. design patent. Id., 443 F.2d at 1398-99, 170 USPQ at...