filed: august 7, 2013 filed on behalf of: sensio, inc...

Paper No. Filed: August 7, 2013

Filed on behalf of: Sensio, Inc. By: Kathleen A. Daley Elizabeth D. Ferrill

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4000 Facsimile: 202-408-4400 E-mail: [email protected]

[email protected]

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SENSIO INC. Petitioner

v.

SELECT BRANDS, INC. Patent Owner

Patent D675,864

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D675,864

- i -

Table of Contents

Table of Authorites .................................................................................................... v

I. Introduction ...................................................................................................... 1

II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 1

III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103 ............................ 2

IV. Grounds for Standing ....................................................................................... 2

V. Identification of Challenge .............................................................................. 2

VI. Background ...................................................................................................... 4

VII. Claim Construction .......................................................................................... 6

VIII. The Applicable Legal Standards...................................................................... 8

A. Anticipation ........................................................................................... 8

B. Obviousness ........................................................................................... 9

IX. Detailed Explanation of Grounds for Unpatentability Under the Broadest Reasonable Construction ................................................................ 10

A. Ground 1: The Claim Is Anticipated Under § 102(a) by Shi ’429 (Ex. 1002) .................................................................................... 11

B. Ground 2: The Claim Is Obvious Under § 103(a) Over Shi ’429 (Ex. 1002) ............................................................................................ 13

C. Ground 3: The Claim Is Anticipated Under § 102(a) by Shi ’889 (Ex. 1004) .................................................................................... 15

D. Ground 4: The Claim Is Obvious Under § 103(a) Over Shi ’889 (Ex. 1004) ............................................................................................ 17

E. Ground 5: The Claim Is Anticipated Under § 102(a) by Lu ’763 (Ex. 1006) ............................................................................................ 18

F. Ground 6: The Claim Is Obvious Under § 103(a) Over Lu ’763 (Ex. 1006) ............................................................................................ 21

- ii -

G. Ground 7: The Claim Is Anticipated Under § 102(b) by Shi ’547 (Ex. 1008) .................................................................................... 21

H. Ground 8: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) ............................................................................................ 24

I. Ground 9: The Claim Is Anticipated Under § 102(b) by Shi ’269 (Ex. 1010) .................................................................................... 25

J. Ground 10: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) .................................................................................... 27

K. Ground 11: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Perkins ’654 (Ex. 1014) .......................... 29

L. Ground 12: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Shi ’110 (Ex. 1015) ................................ 32

M. Ground 13: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Perkins ’654 (Ex. 1014) .......................... 35

N. Ground 14: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Shi ’110 (Ex. 1015) ................................ 38

X. Conclusion ..................................................................................................... 41

Appendix - List of Exhibits Certificate of Service

- iii -

Table of Authorities

Page(s) FEDERAL CASES

Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) ............................................................................ 9

Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) ............................................................................ 6

Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) ..................................................................... passim

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) .......................................................................... 6, 8

In re Borden, 90 F.3d 1570 (Fed. Cir. 1996) .............................................................................. 9

In re Carter, 673 F.2d 1378 (C.C.P.A. 1982) .................................................................... 14, 26

In re Lamb, 286 F.2d 610 (C.C.P.A. 1961) .....................................................................passim

In re Nalbandian, 661 F.2d 1214, (C.C.P.A. 1981) ........................................................................... 9

In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) .............................................................................. 9

In re Stevens, 173 F.2d 1015 (C.C.P.A. 1949) .................................................................. passim

International Seaway Trading Copr. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ...................................................................passim

KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................................................................ 10

Titan Titan Tire Corp. v. Goodyear Tire & Rubber Co, 566 F.3d 1372 (Fed. Cir. 2009) .......................................................................... 10

- iv -

FEDERAL STATUTES

35 U.S.C. § 102 .................................................................................................passim

35 U.S.C. § 103 .................................................................................................passim

Leahy-Smith America Invents Act Technical Corrections, Pub. L. No. 112-274, § 1(d)(1), 126 Stat. 2456 (2013) ........................................ 2

FEDERAL REGULATIONS

37 C.F.R. § 1.152 ....................................................................................................... 6

37 C.F.R. § 1.104 ....................................................................................................... 7

37 C.F.R. § 42.8 ......................................................................................................... 1

37 C.F.R. § 42.15 ....................................................................................................... 2

37 C.F.R. § 42.100 ..................................................................................................... 6

37 C.F.R. § 42.103 ..................................................................................................... 2

37 C.F.R. § 42.104 ..................................................................................................... 2

1

I. Introduction

Sensio Inc. (“Petitioner”) requests inter partes review of the claim of U.S.

Design Patent No. D675,864 (“the ’864 patent”) (Ex. 1021), assigned on its face to

Select Brands, Inc. (“Patent Owner”). This Petition shows by a preponderance of

the evidence that there is a reasonable likelihood that Petitioner will prevail on the

’864 patent based on prior art that anticipates or makes obvious the ’864 patent.

The ’864 patent should be found unpatentable and canceled.

II. Mandatory Notices Under 37 C.F.R. § 42.8

Real Party-in-Interest: Sensio Inc. is the real party-in-interest.

Related Matters: The Patent Owner has sued Petitioner, alleging

infringement of the ’864 patent. Select Brands, Inc. v. Sensio, Inc., 13-cv-2018

KHV/GLR (D. Ka). The ’864 patent claims priority to the filing date of U.S.

Design Patent No. D669,731 (“the ’731 patent”) (Ex. 1001).1

Lead and Back-Up Counsel and Service Information:

Lead Counsel Back-Up Counsel Kathleen A. Daley (Reg. No. 36,116) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4098 Facsimile: 202-408-4400

Elizabeth D. Ferrill (Reg. No. 58,415) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4445 Facsimile: 202-408-4400

1 A petition for inter partes review has also been filed on the ’731 patent.

2

E-mail: [email protected]; [email protected]

E-mail: [email protected]; [email protected]

III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103

The required fees are submitted herewith. If any additional fees are due at

any time during this proceeding, the Office is authorized to charge such fees to

Deposit Account No. 06-0916.

IV. Grounds for Standing

Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’864 patent is

available for inter partes review, and Petitioner is not barred or estopped from

requesting inter partes review of the ’864 patent on the grounds identified.2

V. Identification of Challenge

Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review

based on the following prior art that was not cited during prosecution:

2 Although the ’864 patent issued on February 12, 2013, it is available for inter

partes review. See Leahy-Smith America Invents Act Technical Corrections, Pub.

L. No. 112-274, § 1(d)(1), 126 Stat. 2456 (2013).

3

Exhibit Description Publication/ Issue Date

Ex. 1002 CN 101695429 A to Shi et al. (“Shi ’429”) Apr. 21, 2010

Ex. 1003 Certified English Translation of Shi ’429

Ex. 1004 Chinese Design Registration CN301282889 to Shi (“Shi ’889”)

July 14, 2010


Ex. 1006 Chinese Design Registration CN301383763 to Lu (“Lu ’763”)

Nov. 17, 2010

Ex. 1007 Certified English Translation of Lu ’763

Ex. 1008 Chinese Design Registration CN301010547 to Shi (“Shi ’547”)

Sept. 16, 2009


Ex. 1010 CN 101564269 A to Shi (“Shi ’269”) Oct. 28, 2009


Ex. 1012 Reserved

Ex. 1013 Reserved

Ex. 1014 U.S. Design Patent No. D590,654 to Perkins (“Perkins ’654”), filed Dec. 8, 2008

Apr. 21, 2009

Ex. 1015 CN 101862110 to Shi et al. (“Shi ’110”) Oct. 20, 2010


Petitioner requests inter partes review based on the following grounds:

Ground Description 1 Anticipated under § 102(a) by Shi ’429 (Ex. 1002)

2 Obvious under § 103(a) over Shi ’429 (Ex. 1002)

3 Anticipated under § 102(a) by Shi ’889 (Ex. 1004)


5 Anticipated under § 102(a) by Lu ’763 (Ex. 1006)

6 Obvious under § 103(a) over Lu ’763 (Ex. 1006)

7 Anticipated under § 102(b) by Shi ’547 (Ex. 1008)


9 Anticipated under § 102(b) by Shi ’269 (Ex. 1010)

4

Ground Description 10 Obvious under § 103(a) over Shi ’269 (Ex. 1010)

11 Obvious under § 103(a) over Shi ’547 (Ex. 1008) in view of Perkins ’654 (Ex. 1014)

12 Obvious under § 103(a) over Shi ’547 (Ex. 1008) in view of Shi ’110 (Ex. 1015)

13 Obvious under § 103(a) over Shi ’269 (Ex. 1010) in view of Perkins ’654 (Ex. 1014)

14 Obvious under § 103(a) over Shi ’269 (Ex. 1010) in view of Shi ’110 (Ex. 1015)

Section VII explains how the claim should be construed and Section IX

explains how each claim element is found in the prior art.

VI. Background

The application for the ’864 patent was filed on August 8, 2012,3 and is

entitled “Multiple Crock Buffet Server.” The application contained a single claim

and seven figures and claimed priority to the then-pending U.S. Patent Application

No. 29/383,204, filed on January 13, 2011. The application was allowed on

October 19, 2012. At no point did applicants submit an Information Disclosure

Statement. The ’864 patent issued on February 12, 2013. On May 8, 2013,

Applicants submitted a request for Certificate of Correction with replacement

drawings figures 1 to 7, submitting that “[t]he drawing sheets from the issued

3 Because the application for the ’864 patent was filed prior to the effective date of

the America Invents Act (“AIA”), the pre-AIA statutes apply here.

5

patent all include figures and text with blurred lines that make the depicted design

difficult to view.” (May 8, 2013 Request for Certificate of Correction.) That same

day, the PTO issued a Certificate of Correction. (Ex. 1023.)

The day the ’864 patent issued, as a prelude to litigation, the Patent Owner

sent a letter to counsel for the Petitioner identifying the ’864 patent, which the

Patent Owner said is “directed to a multiple crock buffet server,” and asserting that

the Petitioner’s products infringe the ’864 patent. (Ex. 1018.) In that letter, the

Patent Owner identified nineteen of Petitioner’s Bella brand slow cooker model

numbers, that, according to the Patent Owner, have “features that appear to be

identical to those disclosed and claimed in the D’864 patent.” (Id.) Of the

nineteen different model numbers identified as being identical to the claimed

design, seven models contain round bowl inserts in the buffet server. (Ex. 1022.)

The Patent Owner subsequently filed suit against Petitioner in the U.S. District

Court for the District of Kansas, alleging that the Petitioner infringes the ’864

patent, and the related ’731 patent, by making and selling “multiple crock servers

that infringe upon the designs of and embody the subject matter claimed.” (Ex.

1020 at 2.) The Patent Owner included its February 12, 2012 letter (Ex. 1018)

with the complaint.

6

VII. Claim Construction

A claim subject to inter partes review receives the “broadest reasonable

construction in light of the specification of the patent in which it appears.”

37 C.F.R. § 42.100(b). The scope of the ’864 patent is defined by the solid lines

depicted of the replacement figures 1-7 of the patent, submitted with the Certificate

of Correction, in conjunction with their descriptions. See, e.g., Egyptian Goddess,

Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R. § 1.152);

see also Contessa Food Prods, Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed.

Cir. 2002). “Given the recognized difficulties entailed in trying to describe a

design in words, the preferable course ordinarily will be [to not] attempt to

‘construe’ a design patent claim by providing a detailed verbal description of the

claimed design.” Egyptian Goddess, 543 F.3d at 679. But, the Federal Circuit said

that it would be “helpful to point out . . . various features of the claimed design as

they relate to the . . . prior art.” Id. at 680.

According to the specification, the figures 1-7 cover “a multiple crock buffet

server.” (’864 at description of figure 1.) The specification affirmatively

disclaims: the heated server base unit housing; server control knobs; insert lids

received by the bowl inserts; liners that receive the bowl inserts; outer handle

surfaces of each bowl insert; and the radial groove (i.e., spoon-rest notch) of each

bowl insert. (’864 specification, see also figures 1-7.)

7

As annotated below, figures 1 to 7 (reproduced from the Certificate of

Correction, Ex. 1025) depict a portion of three curved bowl-insert rims, having a

particular profile:

Fig. 1 (front perspective view)

Fig. 3 (top view)

Fig. 4 (enlarged

front view)

The claimed design does not include the outer handles or the “notch” for

resting a spoon.

While the figure description refer to “oval” lids and “oval” liners, the Patent

Owner, in its pre-filing letter to Petitioner, asserted that seven different models of

buffet servers each having round server bowls infringe the ’864 patent and have

features that are “identical” to those disclosed and claimed in the ’864 patent. (Ex.

1018.) In other words, the Patent Owner has clearly construed the ’864 patent as

covering slow cookers with both round and oval server bowls. This constitutes an

admission by the Patent Owner regarding the scope and thus patentability of the

’864 patent. The PTO can, and Petitioner submits should, use such this admission

by the Patent Owner in determining patentability. See 37 C.F.R. § 1.104(c)(3).

8

As a result, under the broadest reasonable construction, the claimed design

of the ’864 patent covers portions of the curved rim of three bowl inserts (not

including those portions of the rim containing the outer handles or the notch), as

shown above. Stated more specifically, the claim covers: (1) portions of the

curved rims of three bowl inserts; and (2) rims having the profile shown below, in

which the side of the rim slightly protrudes on the top (dot-dash line), with a

rounded top edge (larger dashed circle) and a less rounded bottom edge (smaller

dashed circle).

VIII. The Applicable Legal Standards

A. Anticipation

The ordinary observer test is the sole test for determining anticipation of a

design patent under 35 U.S.C. § 102. Int’l Seaway Trading Copr. v. Walgreens

Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). This test considers whether an

ordinary observer, familiar with the prior art, would be deceived into believing

9

that, taken as a whole, the prior art reference and the claimed design are the same.

Egyptian Goddess, 534 F.3d at 675, 681.

B. Obviousness

“In the design patent context, the ultimate inquiry under section 103 is

whether the claimed design would have been obvious to a designer of ordinary

skill who designs articles of the type involved.” Durling v. Spectrum Furniture

Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390

(C.C.P.A. 1982)); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329

(Fed. Cir. 2012). This inquiry “focuses on the visual impression of the claimed

design as a whole and not on selected individual features.” In re Borden, 90 F.3d

1570, 1574 (Fed. Cir. 1996). In this case, the designer of ordinary skill would be

someone with background and training in the design of small kitchen appliances,

who is presumed to have knowledge of the prior art slow cookers. See In re

Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A. 1981).

Next, the Federal Circuit uses a two-step obviousness determination process

for design patents. See Apple, 678 F.3d at 1329-31. First, “one must find a single

reference, ‘a something in existence, the design characteristics of which are

basically the same as the claimed design.’” Durling, 101 F.3d at 103. Second,

“other references may be used to modify [the primary reference] to create a design

that has the same overall visual appearance as the claimed design.” Id. The

10

secondary references may be used to modify the primary reference if the two are

“so related to the primary reference that the appearance of certain ornamental

features in one would suggest that application of those features to the other.”

Borden, 90 F.3d at 1575.

The hypothetical reference, created through the combination of the primary

and secondary references, and the claimed design are then analyzed using the

ordinary observer test. Int’l Seaway, 589 F.3d at 1241. The touchstone is the

similarity of overall appearance; small differences are inconsequential. “[T]he

mere fact that there are differences over the prior art structures is not alone

sufficient to justify a holding that the design is patentable.” In re Lamb, 286 F.2d

610, 611 (C.C.P.A. 1961); see also KSR International Co. v. Teleflex, Inc., 550

U.S. 398, 401 (2007) (stating that “a combination of familiar elements according to

known methods is likely to be obvious when it does no more than yield predictable

results”); Titan Titan Tire Corp. v. Goodyear Tire & Rubber Co, 566 F.3d 1372,

1385 (Fed. Cir. 2009) (stating that “it is not obvious that the Supreme Court

necessarily intended to exclude design patents from the reach of KSR”).

IX. Detailed Explanation of Grounds for Unpatentability Under the Broadest Reasonable Construction

This Petition explains that the ’864 patent is invalid on multiple grounds.

The references presented by Petitioner provide visual disclosures that were not

considered by the Office during prosecution. The references and grounds are also

11

not cumulative to each other given the different disclosures of the references. A

reasonable examiner would consider these references to be important in deciding

whether the claims are patentable, and this Petition demonstrates a reasonable

likelihood that the Petitioner will prevail.

A. Ground 1: The Claim Is Anticipated Under § 102(a) by Shi ’429 (Ex. 1002)

Shi ’429 discloses the same overall visual impression as the claimed design,

and, as result, the claim is anticipated by Shi ’429 under 35 U.S.C. § 102(a). (Ex.

1002 at 6-8.) Shi ’429 is a Chinese utility patent application, filed on October 10,

2009 and published on April 21, 2010, prior to the priority date of the ’864 patent.

(Ex. 1003 at 1.) Therefore, Shi ’429 is a prior art printed publication under 35

U.S.C. § 102(a).

Shi ’429 has virtually an identical overall visual appearance to the ’864

patent:

12

Shi ’429 ’864

As shown below, Shi ’429 discloses the same three curved rims and the

same rim profile as the claim:

13

Shi ’429 with Figure 3 of the ’864 Patent Overlaid (in white)

When considered in the context of the ordinary observer test, an ordinary

observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015) would be

deceived into believing that, taken as a whole, Shi ’429 is the same as the claimed

design. Thus, the claim is anticipated under 35 U.S.C. § 102(a) and the Petitioner

has established a reasonable likelihood that it will prevail on this ground of

rejection.

B. Ground 2: The Claim Is Obvious Under § 103(a) Over Shi ’429 (Ex. 1002)

In the alternative, Shi ’429 discloses the same overall visual impression as

the claimed design and, in view of the common knowledge of a designer having

ordinary skill in the art, any differences are de minimus and not sufficient to justify

a finding that the design is patentable. As a result, the claim is obvious under 35

14

U.S.C. § 103(a) over Shi ’429.

Shi ’429 is a suitable primary reference, because Shi ’429 discloses a slow

cooker with “basically the same design characteristics” as the claimed design.

Durling, 101 F.3d at 103. Indeed, Shi ’429 is so similar to the claimed design, that

no secondary reference is necessary.

To the extent that there are viewed to be any disclosure not plainly evident

from Shi ’429 (e.g., incomplete side view of figure 2 or any minor differences in

proportion of the curved rims), Shi ’429 readily suggests to these minor alterations

to one of ordinary skill to arrive at a hypothetical reference. See In re Carter, 673

F.2d 1378, 1380 (C.C.P.A. 1982); see also In re Stevens, 173 F.2d 1015, 1015-16

(C.C.P.A. 1949) (“obvious changes in . . . proportioning” involve “ordinary skill

only”). Finally, considering this hypothetical Shi ’429 reference, the ordinary

observer would be deceived into believing that the hypothetical Shi ’429 is the

same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Application of

such ordinary skill does not make the claimed design patentable over Shi ’429.

Stevens, 173 F.2d at 1015-16.

Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’429, and

the Petitioner has established a reasonable likelihood that it will prevail on this

ground of rejection.

15

C. Ground 3: The Claim Is Anticipated Under § 102(a) by Shi ’889 (Ex. 1004)

Shi ’889 discloses the same overall visual impression as the claimed design,

and, as a result, the claim is anticipated by Shi ’889 under 35 U.S.C. § 102(a). (Ex.

1003.) Shi ’889 is a Chinese design registration, filed on October 10, 2009 and

published on July 14, 2010, prior to the priority date of the ’864 patent. (Ex. 1004

at 1.) Therefore, Shi ’889 is a prior art printed publication under 35 U.S.C.

§ 102(a). Shi ’889 appears to be the companion design registration to Shi ’429

(Ex. 1002). Although similar to Shi ’429, because Shi ’889 discloses all six views

of the design, it is not cumulative of Shi ’429.

Shi ’889 has virtually an identical overall visual appearance to the ’864

patent:

16

Shi ’889 ’864

As shown below, Shi ’889 discloses the same portions of three curved rims

and the same rim profile as the claimed design:

Shi ’889 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)

17


observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015), would be

deceived into believing that, taken as a whole, Shi ’889 is the claimed design.

Indeed, even minor variations between the claimed design and Shi ’889 does not

preclude a finding of anticipation because these variations, if any, do not change

the overall visual impression of the products at issue. Int’l Seaway, 589 F.3d at

1243. Thus, the claim is anticipated under 35 U.S.C. § 102(a), and the Petitioner

has established a reasonable likelihood that it will prevail on this ground of

rejection.

D. Ground 4: The Claim Is Obvious Under § 103(a) Over Shi ’889 (Ex. 1004)

To the extent that any minor differences are alleged between Shi ’889 and

the claimed design defeating anticipation under § 102(a), Shi ’889 discloses the

same overall visual impression as the claim and in view of the common knowledge

of a designer having ordinary skill in the art, any differences are de minimus and

not sufficient to justify a finding that the design is patentable under § 103(a). Shi

’889 is a suitable primary reference, because Shi ’889 discloses a slow cooker with

“basically the same design characteristics” as the claimed design. Durling, 101

F.3d at 103. Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi

’889, and the Petitioner has established a reasonable likelihood that it will prevail

on this proposed ground of rejection.

18

E. Ground 5: The Claim Is Anticipated Under § 102(a) by Lu ’763 (Ex. 1006)

Lu ’763 discloses the same overall visual impression as the claimed design

and, as result, the claim is anticipated by Lu ’763 under 35 U.S.C. § 102(a). (Ex.

1006.) Lu ’763 is a Chinese design registration, filed on June 23, 2010 and

published on November 17, 2010, prior to the priority date of the ’864 patent. (Ex.

1007 at 1.) Therefore, Lu ’763 is a prior art printed publication under 35 U.S.C.

§ 102(a). Because the disclosure of Lu ’763 is not the same as the other references

cited herein, it is not cumulative.

Focusing on portions of the design claimed in the ’864 patent, Lu ’763 has

virtually an identical overall visual appearance:

19

Lu ’763 ’864

Lu ’763 has a similar thick rim profile with rounded edges to the claimed

design. As shown below, Lu ’763 also discloses the same portions of the three

curved rims as the claimed design:

20

Lu ’763 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)


observer familiar with the relevant prior art (see, e.g., Exs. 1002-1016), would be

deceived into believing that, taken as a whole, Lu ’763 is the same as the claimed

design. Even minor variations between the claimed design and Lu ’763 does not

preclude a finding of anticipation because these variations, if any, do not change

the overall visual impression of the products at issue. Int’l Seaway, 589 F.3d at

1243. Thus, the claim is anticipated under 35 U.S.C. § 102(a) and the Petitioner

has established a reasonable likelihood that it will prevail on this proposed ground

of rejection.

21

F. Ground 6: The Claim Is Obvious Under § 103(a) Over Lu ’763 (Ex. 1006)

To the extent that any minor differences are alleged between Lu ’763 and the

claimed design defeating anticipation under § 102(a), Lu ’763 discloses the same

overall visual impression as the claim and, in view of the common knowledge of a

designer having ordinary skill in the art, any differences are de minimus and not

sufficient to justify a finding that the design is patentable under § 103(a). Lu ’763

is a suitable primary reference, because Lu ’763 discloses a slow cooker with

“basically the same design characteristics” as the claimed design. Durling, 101

F.3d at 103. Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Lu ’763

and, the Petitioner has established a reasonable likelihood that it will prevail on

this proposed ground of rejection.

G. Ground 7: The Claim Is Anticipated Under § 102(b) by Shi ’547 (Ex. 1008)

Shi ’547 discloses the same overall visual impression as the claimed design

and, as result, the claim is anticipated by Shi ’547 under 35 U.S.C. § 102(b). (Ex.

1008.) Shi ’547 is a Chinese design registration, filed on May 7, 2008 and

published on September 16, 2009, more than a year before the priority date of the

’864 patent. (Ex. 1009 at 1.) Therefore, Shi ’547 is a prior art printed publication

under 35 U.S.C. § 102(b). Because the disclosure of Shi ’547 is not the same as

the other references cited herein, it is not cumulative.

22

As discussed above, in a February 12, 2013 letter to the Petitioner asserting

infringement, the Patent Owner alleged that seven different slow cooker models,

all with round serving bowls, “appear to be identical” to the slow cooker products

“disclosed and claimed in the D’864 patent.” (Ex. 1018.) Over three months

earlier, the Patent Owner had made the same infringement allegations, asserting

that seven different slow cooker models with round serving bowls “have features

appear to be identical to those disclosed and claimed in the D’731.” (Ex. 1017.)

To make such an such infringement allegation, the Patent Owner’s position had to

be that an ordinary observer observing a buffet server with round serving bowls

would be deceived into thinking that it was the same as the patented design.

Presumably the Patent Owner gave the accused designs more attention than an

ordinary observer when saying that they are “identical” to and infringe the ’864

patent. The PTO should not ignore this admission by the Patent Owner that the

’864 patent covers buffet servers with curved server bowls, including round bowls,

and that an ordinary observer would be deceived into thinking that a buffet server

with round server bowls is the same as the claimed design.

Focusing on portions of the design claimed of the ’864 patent, and as

confirmed by the Patent Owner’s admission, Shi ’547 has virtually an identical

overall visual appearance:

23

Shi ’547 ’864

Shi ’547 also discloses a very similar rim profile with rounded edges as the

’864 patent. Further, Shi ’547 discloses the same portions of the three curved rims:

Shi ’547 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)

When considered in the context of the ordinary observer test, it is clear that

an ordinary observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015),

24

would be deceived into believing that, taken as a whole, Shi ’547 is the same as the

claimed design. Minor variations between the claimed design and Shi ’547 does

not preclude a finding of anticipation because these variations, if any, do not

change the overall visual impression of the products at issue. Int’l Seaway, 589

F.3d at 1243. And, as discussed above, the Patent Owner’s infringement

allegations amount to an admission that an ordinary observer would be deceived if

there are variations in between the claimed design and a buffet server with round

bowls. Thus, the claim is anticipated under 35 U.S.C. § 102(b), and the Petitioner


of rejection.

H. Ground 8: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008)

To the extent that any minor differences are alleged between Shi ’547 and

the claimed design defeating anticipation under § 102(a), Shi ’547 discloses the

same overall visual impression as the claimed design and in view of the common

knowledge of a designer having ordinary skill in the art, any differences are de

minimus and not sufficient to justify a finding that the design is patentable under

§ 103(a). Indeed, the Patent Owner’s assertion that a similar buffet server with

round serving bowl is identical to the claimed design and infringes the claimed

design, shows that any differences are de minimus. Shi ’547 is a suitable primary

reference, because Shi ’547 discloses a slow cooker with “basically the same

25

design characteristics” as the claimed design. Durling, 101 F.3d at 103. Thus, the

claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547, and the Petitioner


of rejection.

I. Ground 9: The Claim Is Anticipated Under § 102(b) by Shi ’269 (Ex. 1010)

Shi ’269 discloses the same overall visual impression as the claimed design

and, as result, the claim is anticipated by Shi ’269 under 35 U.S.C. § 102(b). (Ex.

1010 at 6-7.) Shi ’269 is a public disclosure of a Chinese patent application, filed

on May 7, 2009 and published on October 28, 2009, more than one year prior to

the priority date of the ’864 patent. (Ex. 1011 at 1.) Therefore, Shi ’269 is a prior

art printed publication under 35 U.S.C. § 102(b). Because the disclosure of Shi

’269 is not the same as the other references cited herein, it is not cumulative.

As confirmed by the Patent Owner’s admission that the claimed design

covers curved server bowls (both oval and round), Shi ’269 has virtually an

identical overall visual appearance as the ’864 patent, as shown in the annotated

figures:

26

Shi ’269 ’864

Shi ’269 discloses the same portions of the three curved rims as the claimed

design and has a thick rim profile with a rounded edges, wherein the upper rim

extends protrudes slightly.

27

Shi ’269 with Figure 3 of the ’864 Patent Overlaid (in black)

When considered in the context of the ordinary observer test, it is clear that

an ordinary observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015),

would be deceived into believing that, taken as a whole, Shi ’269 is the same as the

claimed design. Indeed, as discussed above, the Patent Owner’s infringement

allegations amount to an admission that an ordinary observer would be deceived if

there are variations between the claimed design and a buffet server with round

bowls. Thus, the claim is anticipated by Shi ’269 under 35 U.S.C. § 102(b), and the

Petitioner has established a reasonable likelihood that it will prevail on this

proposed ground of rejection.

J. Ground 10: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010)

In the alternative, Shi ’269 discloses the same overall visual impression as

the claimed design and in view of the common knowledge of a designer having

ordinary skill in the art, any differences are de minimus and not sufficient to justify

28

a finding that the design is patentable. Indeed, the Patent Owner’s assertion that a

similar buffet server with round serving bowl is identical to the claimed design and

infringes the claimed design, shows that any differences are de minimus. As a

result, the claim is invalid as obvious under 35 U.S.C. § 103(a) over Shi ’269.


cooker with “basically the same design characteristics” as the claimed design,

under its broadest reasonable construction. Durling, 101 F.3d at 103. Indeed, Shi

’269 is so similar to the claimed design, that no secondary reference is necessary.

To the extent that there are viewed to be any disclosure not plainly evident

from Shi ’269 (e.g., incomplete views in figures 2 and 3 or any minor differences

in proportion of portions of the curved rims), Shi ’269 readily suggests to these

minor alternations to one of ordinary skill to arrive at a hypothetical reference. See

Carter, 673 F.2d at 1380; see also Stevens, 173 F.2d at 1015-16. Finally,

considering this hypothetical Shi ’269 reference, the ordinary observer would be

deceived into believing that the hypothetical Shi ’269 is the same as the claimed

design. Int’l Seaway, 589 F.3d at 1240-41. Application of such ordinary skill

does not make the claimed design patentable over Shi ’269. Stevens, 173 F.2d at

1015-1016.

Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’269, and

the Petitioner has established a reasonable likelihood that it will prevail on this

29

proposed ground of rejection.

K. Ground 11: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Perkins ’654 (Ex. 1014)

Shi ’547 in view of Perkins ’654 discloses the same overall visual

impression as the claimed design. Any differences are de minimus and not

sufficient to justify a finding that the design is patentable. As a result, the claim is

invalid as obvious under 35 U.S.C. § 103(a) over Shi ’547 in view of Perkins ’654.

As explained in Section IX.G, Shi ’547 is prior art printed publication under

35 U.S.C. § 102(b). Perkins ’654 is a U.S. Design Patent, filed on Dec. 8, 2009

and published on Apr. 21, 2009, more than one year prior to the prioity date of the

’864 patent. (Ex. 1014 at 1.) Therefore, Perkins ’654 is also a prior art printed

publication under 35 U.S.C. § 102(b).

Shi ’547 is a suitable primary reference, because it discloses a slow cooker

with “basically the same design characteristics” as the claimed design, under its

broadest reasonable construction. Durling, 101 F.3d at 103. Although Petitioner

argues that Shi ’547 needs no secondary reference, if one is necessary, then Perkins

’654 can be used to modify Shi ’547 to create a design possessing the same overall

visual appearance as the claimed design. Id. Perkins ’654 is an appropriate

secondary reference in this instance because it is also a contemporaneous slow

cooker design, making it “so related” to Shi ’547 that Perkins ’654 would suggest

the application of its oval-shaped bowl rims to the set of three round-shaped rims

30

in Shi ’547 to arrive at a hypothetical Shi ’547-Perkins ’654 reference consisting of

three oval-shaped bowl inserts. Moreover, the similarity in rim profile of Shi ’547

and Perkins ’654 would further suggest the modification of Shi ’547 with the oval-

shaped rim of Perkins ’654. Perkins ’654 is not cumulative because, when

combined with Shi ’547, the disclosure of the resulting hypothetical reference is

not the same as any other reference cited herein.

31

Shi ’547

Perkins ’654

’864

Second, considering this Shi ’547-Perkins ’654 reference, the ordinary

observer would be deceived into believing that the Shi ’547-Perkins ’654 is the

same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining

small differences between the Shi ’547-Perkins ’654 reference and the claimed

design are inconsequential and not sufficient to justify a holding that the claimed

32

design is patentable. Lamb, 286 F.2d at 611.

Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547 in

view of Perkins ’654, and the Petitioner has established that there is a reasonable

likelihood that it will prevail on this proposed ground of rejection.

L. Ground 12: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Shi ’110 (Ex. 1015)

Shi ’547 in view of Shi ’110 discloses the same overall visual impression as

the claimed design. Any differences are de minimus and not sufficient to justify a

finding that the design is patentable. As a result, the claim is obvious under 35

U.S.C. § 103(a) over Shi ’547 in view of Shi ’110.

As explained in Section IX.H., Shi ’547 is prior art printed publication under

35 U.S.C. § 102(b). Shi ’110 is a Chinese invention patent application, filed on

January 28, 1010 and published on October 20, 2010, before the priority date of the

’864 patent. (Ex. 1015 at 1.) Therefore, Shi ’110 is also prior art printed

publication under 35 U.S.C. § 102(a).



under its broadest reasonable construction. Durling, 101 F.3d at 103. Although

Petitioner argues that Shi ’547 needs no secondary reference, if one is necessary,

then Shi ’110 can be used to modify Shi ’547 to create a design possessing the

same overall visual appearance as the claimed design. Id. Shi ’110 is an

33

appropriate secondary reference in this instance because it is also a

contemporaneous slow cooker design, making it “so related” to Shi ’547 that Shi

’110 would suggest the application of its oval-shaped bowl insert to the set of three

round-shaped bowls in Shi ’547 to arrive at a hypothetical Shi ’547-Shi ’110

reference consisting of three oval-shaped bowl inserts. Moreover, the similarity in

rim profile of Shi ’547 and Shi ’110 would further suggest the modification of Shi

’547 with the oval-shaped bowl of Shi ’110. The resulting hypothetical reference

is not culmulative because it is not the same as any other reference cited herein.

34

Shi ’547

Shi ’110

’864

35

Second, considering this Shi ’547-Shi ’110 reference, the ordinary observer

would be deceived into believing that the Shi ’547-Shi ’110 is the same as the

claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining small

differences between the Shi ’547-Shi ’110 reference and the claimed design are

inconsequential and not sufficient to justify a holding that the claimed design is

patentable. Lamb, 286 F.2d at 611.

Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547 in

view of Shi ’110, and the Petitioner has established a reasonable likelihood that it

will prevail on this proposed ground of rejection.

M. Ground 13: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Perkins ’654 (Ex. 1014)

Shi ’269 in view of Perkins ’654 discloses the same overall visual

impression as the claimed design. Any differences are de minimus and not

sufficient to justify a finding that the design is patentable. As a result, the claim is

obvious under 35 U.S.C. § 103(a) over Shi ’269 in view of Perkins ’654. As

explained in Sections IX.I. and IX.K., Shi ’269 and Perkins ’654 are a prior art

printed publication under 35 U.S.C. § 102(b).





36

then Perkins ’654 can be used to modify Shi ’269 to create a design possessing the

same overall visual appearance as the claimed design. Id. Perkins ’654 is an


contemporaneous slow cooker design, making it “so related” to Shi ’269 that

Perkins ’654 would suggest the application of its oval-shaped rim to the set of

three round-shaped bowls in Shi ’269 to arrive at a hypothetical Shi ’269-Perkins

’654 reference consisting of three oval-shaped bowls inserts. Moreover, the

similarity in rim profile of Shi ’269 and Perkins ’654 would further suggest the

modification of Shi ’269 with the oval-shaped rim of Perkins ’654. The Shi ’269-

Perkins’654 reference is not cumulative because the disclosure of the hypothetical

reference is not the same as other references cited herein.

37

Shi ’269

Perkins ’654

’864

Second, considering this Shi ’269-Perkins ’654 reference, the ordinary

observer would be deceived into believing that the Shi ’269-Perkins ’654 is the

same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining

38

small differences between the Shi ’269-Perkins ’654 reference and the claimed

design are inconsequential and not sufficient to justify a holding that the claimed

design is patentable. Lamb, 286 F.2d at 611. Thus, the claim is obvious under 35

U.S.C. § 103(a) based on Shi ’269 in view of Perkins ’654, and the Petitioner has

established a reasonable likelihood that it will prevail on this proposed ground of

rejection.

N. Ground 14: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Shi ’110 (Ex. 1015)

Shi ’269 in view of Shi ’110 discloses the same overall visual impression as

the claimed design. Any differences are de minimus and not sufficient to justify a

finding that the design is patentable. As a result, the claim is obvious under 35

U.S.C. § 103(a) over Shi ’269 in view of Shi ’110. As explained in Sections IX.I.

and IX.L., Shi ’269 is a prior art printed publication under 35 U.S.C. § 102(b) and

Shi ’110 is prior art printed publication under 35 U.S.C. § 102(a).





then Shi ’110 can be used to modify Shi ’269 to create a design possessing the

same overall visual appearance as the claimed design. Id. Shi ’110 is an


39

contemporaneous slow cooker design, making it “so related” to Shi ’269 that Shi

’110 would suggest the application of its oval-shaped bowl insert to the set of three

round-shaped bowls in Shi ’269 to arrive at a hypothetical Shi ’269-Shi ’110

reference consisting of three oval-shaped bowl inserts. Moreover, the similarity in

rim profile of Shi ’269 and Shi ’110 would further suggest the modification of Shi

’269 with the oval-shaped bowl of Shi ’110. The resulting hypothetical reference is

not culmulative because it is not the same as any other reference cited herein.

40

Shi ’269

Shi ’110

’864

Second, considering this Shi ’269-Shi ’110 reference, the ordinary observer

would be deceived into believing that the Shi ’269-Shi ’110 is the same as the

claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining small

Appendix - List of Exhibits

Exhibit No.

Description

Ex. 1001 U.S. Design Patent No. D669,731 to Endres et al.

Ex. 1002 CN 101695429 A to Shi et al.


Ex. 1004 Chinese Design Registration CN301282889 to Shi


Ex. 1006 Chinese Design Registration CN301383763 to Lu

Ex. 1007 Certified English Translation of Lu ’763

Ex. 1008 Chinese Design Registration CN301010547 to Shi


Ex. 1010 CN 101564269 A to Shi


Ex. 1012 Reserved

Ex. 1013 Reserved

Ex. 1014 U.S. Design Patent No. D590,654 to Perkins

Ex. 1015 CN 101862110 to Shi et al.


Ex. 1017 Letter from S. Brown to E. Manzo, dated October 31, 2012, re: U.S. Design Patent No. D669,731/Sensio Inc.’s Triple Oval Slow Cooker

Ex. 1018 Letter from S. Brown to E. Manzo, dated February 12, 2012, re: U.S. Design Patent No. D675,864/Sensio Inc.’s Triple Oval Slow Cooker

Ex. 1019 Reserved

Ex. 1020 Complaint, Select Brands, Inc. v. Sensio Inc., 13-cv-2108 (D. Kan. filed Mar. 1, 2013)

Ex. 1021 U.S. Design Patent No. D675,864 to Endres et al.

Ex. 1022 Declaration of Lisa Mac Ennis, dated June 28, 2013

Ex. 1023 Certificate of Correction for D675,864

filed: august 7, 2013 filed on behalf of: sensio, inc...

Documents