in Re: Justin Samuels, Samuel Rockwell v. Arctic Cat, Inc., 882 F.3d 1056, 1064 Fed. Cir. 2018 . Anticipation is a ques- tion…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JUSTIN SAMUELS, SAMUEL ROCKWELL,
Appellants
______________________
2022-1121
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 29/577,270.
______________________
Decided: March 6, 2024
______________________
T ODD STEVEN SHARINN, Gilbride, Tusa, Last &
Spellane LLC, Greenwich, CT, for appellants.
BRIAN R ACILLA, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by P ETER J. AYERS ,
AMY J. N ELSON, F ARHEENA Y ASMEEN R ASHEED.
______________________
Before T ARANTO, CHEN, and STOLL , Circuit Judges.
P ER CURIAM .
This is a design patent application case. Appellants
Justin Samuels and Samuel Rockwell filed U.S. Design Pa-
tent Application No. 29/577,270, titled “Waffle Having a
Waffle Pattern Side and a Smooth Side,” on September 12,
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IN RE: SAMUELS 2
2016. The assigned examiner in the U.S. Patent and
Trademark Office rejected the claim under 35 U.S.C.
§ 102(a)(1) as being anticipated by the Belgian Waffle
Sandwich Video1 (a video posted publicly on YouTube).
The Patent Trial and Appeal Board affirmed the exam-
iner’s rejection. J.A. 1. The applicants timely appealed.
We have jurisdiction. 28 U.S.C. § 1295(a)(4); 35 U.S.C.
§ 141(a). We affirm.
I
The ’270 application is directed to an “ornamental de-
sign for a waffle having a waffle patterned side and a
smooth side.” J.A. 30 (cleaned up). Figures 1 and 3 of the
’270 application (reproduced below) show a perspective
view from above and a bottom view, respectively, of the
claimed design. J.A. 30. As shown in Figure 1, the top of
the claimed design includes a waffle pattern, and as shown
in Figure 3, the bottom of the claimed design is flat.
J.A. 31, FIG. 1.
1 @theendorsement, Dunkin Donuts® - Belgian Waf-
fle Breakfast Sandwich Review # 328, YOUT UBE (Aug. 30,
2016), https://www.youtube.com/watch?v=TN9kBtgTqxM.
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IN RE: SAMUELS 3
J.A. 32, FIG. 3.
During examination, the examiner finally rejected the
claim under 35 U.S.C. § 102(a)(1) as being anticipated by
the Belgian Waffle Sandwich Video. J.A. 158. The Belgian
Waffle Sandwich Video is a review of a waffle sandwich
that includes two waffles and filling between the two waf-
fles. Providing annotated screenshots from this video (re-
produced below), the examiner concluded that the
appearance of the prior-art waffle “having a waffle pattern
side and smooth side . . . is substantially the same as that
of the claimed design.” J.A. 159, 161.
J.A. 159.
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IN RE: SAMUELS 4
J.A. 161.
Appellants appealed the final rejection to the Board,
first alleging that the Belgian Waffle Sandwich Video does
not disclose that an inner surface of the waffle is flat and
then arguing that the ’270 application was reduced to prac-
tice before the publication date of the video. After conduct-
ing a hearing, the Board issued its decision rejecting
appellants’ arguments and affirming the examiner’s antic-
ipation rejection. J.A. 1, 11.
II
We review the Board’s legal determinations de novo,
while we review the Board’s factual findings for substantial
evidence. Polaris Industries, Inc. v. Arctic Cat, Inc., 882
F.3d 1056, 1064 (Fed. Cir. 2018)). Anticipation is a ques-
tion of fact and, in the design patent context, involves ap-
plying the ordinary observer test. International Seaway
Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237–38
(Fed. Cir. 2009). Under that test, a prior-art design antic-
ipates the claimed design “if, in the eye of an ordinary ob-
server, giving such attention as a purchaser usually gives,
[the] two designs are substantially the same, if the resem-
blance is such as to deceive such an observer, inducing him
to purchase one supposing it to be the other.” Id. at 1239
(quoting Gorham Manufacturing Co. v. White, 81 U.S. 511,
528 (1871)).
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IN RE: SAMUELS 5
Substantial evidence supports the Board’s determina-
tion that the Belgian Waffle Sandwich Video anticipates
the design for a waffle claimed in the ’270 application.2 The
Board considered as a whole both the claimed waffle and
the prior-art waffle, comparing their outer surfaces, inner
surfaces, and side views. J.A. 3–4, 8–9. The Board found
that, contrary to what appellants alleged, the Belgian Waf-
fle Sandwich Video discloses that the prior-art waffle has a
flat inner surface, identifying (1) a side view of the waffle
sandwich suggesting the inner surface of the waffle is flat,
(2) another view showing that the egg filling of the waffle
sandwich is flat and thus suggesting that the inner surface
of the waffle is flat, and (3) yet another view showing a par-
tially open waffle sandwich with a flat inner surface of the
waffle visible. J.A. 9.
On appeal, aside from recycling their arguments as to
the Belgian Waffle Sandwich Video’s failure to disclose the
flat inner surface, appellants catalogue several other al-
leged differences between the prior-art waffle and the
claimed waffle design, including the amount of deformation
around the edges, coloration, and flexibility. Samuels
2 The Board, in evaluating the evidence of record, re-
ferred to the “substantial evidence” standard of review
multiple times. J.A. 8–9. This standard of review origi-
nates from statutory provisions in the Administrative Pro-
cedure Act that dictate this court’s standard of review of
Board decisions—not the Board’s standard for evaluating
examiner actions. In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000); 5 U.S.C. § 706(2)(E). Appellants do not allege
any reversible error arising from the Board’s reference to
the “substantial evidence” standard. We note that the
Board’s own precedential decision counsels review of “the
particular finding(s) contested by an appellant anew in
light of all the evidence and argument on that issue.” Ex
Parte Frye, 94 U.S.P.Q.2d 1072, 1075 (B.P.A.I. 2010).
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IN RE: SAMUELS 6
Opening Br. 10–23. Appellants, however, fail to describe
how any of these alleged differences would alter, to an or-
dinary observer, the “overall visual impression” of the
prior-art waffle as compared to claimed waffle design. In-
ternational Seaway, 589 F.3d at 1243; see Lanard Toys Ltd.
v. Dolgencorp LLC, 958 F.3d 1337, 1343 (Fed. Cir. 2020)
(describing that the ordinary observer test “is not an ele-
ment-by-element comparison” and instead requires the
factfinder to “compare similarities in overall designs, not
similarities of ornamental features in isolation” (cleaned
up)).
Appellants also cast doubt on the reliability of the find-
ings drawn from the Belgian Waffle Sandwich Video, con-
tending that the examiner relied on a “fuzzy and split-
second glimpse” of an inner surface of the prior-art waffle.
Samuels Opening Br. 17–19. But from watching the video,
the Board—video quality and duration of inner surface vis-
ibility notwithstanding—identified specific views from
which it was able to discern the features that appellants
argued were absent from the prior-art. J.A. 9. We see no
reason to disturb the Board’s findings of fact regarding the
video’s disclosure.
Appellants lastly contend that the ’270 application was
constructively reduced to practice before the publication
date of the Belgian Waffle Sandwich Video, and thus the
video is disqualified as prior art. Samuels Opening Br. 30–
31. The ’270 application, however, was filed on Septem-
ber 12, 2016, well after the Leahy-Smith America Invents
Act’s (AIA) first-to-file regime took effect on March 16,
2013. SNIPR Technologies Ltd. v. Rockefeller University,
72 F.4th 1372, 1376 (Fed. Cir. 2023). Even if appellants
were able to show an earlier conception or an earlier con-
structive reduction to practice, such a showing would be ir-
relevant to the inquiry required under post-AIA 35 U.S.C.
§ 102(a)(1)—namely whether the claimed invention was
described in the publicly available video “before the effec-
tive filing date of the claimed invention.” 35 U.S.C.
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IN RE: SAMUELS 7
§ 102(a)(1) (emphasis added). Here, appellants do not con-
tend that its ’270 application is entitled to the benefit of an
earlier filing date.
III
The decision of the Board is affirmed.
AFFIRMED
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