Case: 22-1121 Document: 55 Page: 1 Filed: 03/06/2024
`
`NOTE: This disposition is nonprecedential.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
`______________________
`
`
`TODD STEVEN SHARINN, Gilbride, Tusa, Last &
`Spellane LLC, Greenwich, CT, for appellants.
`
` BRIAN RACILLA, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for appellee
`Katherine K. Vidal. Also represented by PETER J. AYERS,
`AMY J. NELSON, FARHEENA YASMEEN RASHEED.
`______________________
`
`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`PER 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,
`
`

`

`Case: 22-1121 Document: 55 Page: 2 Filed: 03/06/2024
`
`2
`
`IN RE: SAMUELS
`
`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, YOUTUBE (Aug. 30,
`2016), https://www.youtube.com/watch?v=TN9kBtgTqxM.
`
`

`

`Case: 22-1121 Document: 55 Page: 3 Filed: 03/06/2024
`
`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.
`
`

`

`Case: 22-1121 Document: 55 Page: 4 Filed: 03/06/2024
`
`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)).
`
`

`

`Case: 22-1121 Document: 55 Page: 5 Filed: 03/06/2024
`
`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).
`
`

`

`Case: 22-1121 Document: 55 Page: 6 Filed: 03/06/2024
`
`6
`
`IN RE: SAMUELS
`
`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.
`
`

`

`Case: 22-1121 Document: 55 Page: 7 Filed: 03/06/2024
`
`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
`
`