In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI, (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.
Figure 1 – Trailer Life Magazine’s Spy Photograph
In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist, under the employ of various trade publications and magazines, to covertly attempt to be the first to capture these designs for publication. The above noted figure appears to be the prized resut of one of these covert missions.
In considering the paparrazi photo, the BPAI addressed whether the grill design in the spy photograph had basically the same design characteristics as Ford’s claimed grill design. However, the BPAI never touched on the issue of whether the spy photograph should have even been considered. Especially knowing that, when the spy photograph was taken, it was likely subject to security measures (aside from the car cover) in an attempt to maintain the confidentiality of the design.
Regardless, Ford argued that, considering the Trailer Life Magazine photograph was a poorly lit spy photo showing a limited front view of the grill, the Examiner erred in finding that the design shown in the spy photograph was basically the same as Ford’s claimed design, as shown in Fig. 2 (left). The BPAI disagreed and emphasized that the angle of the photograph was sufficient to provide enough of a perspective to depict the design characteristics of the grill including its general shape and rake angle.
Figure 2 – Rake Angle of Ford’s Claimed Design
The BPAI also noted that the features of the vehicle on which the grill was installed helped to give the appearance that the grill was angled. The BPAI then proceeded to discount the rake angle, as well as other features, as a de minimis features.
The Board explained that since the de minimis features did not impact the overall appearance of the claimed design, citing In re Carter, 673 F.2d 1378, 1380 (CCPA 1982) for support (“The elimination of the end portions of the waistband and of any cinching of the waist portion these ends might cause are de minimis changes which would be well within the skill of an ordinary design in the art and do not create a patentably distinct design.”).
In applying the de minimis standard, the BPAI looked to whether the characteristics in question, in this case, the rake angle, impacted the overall appearance of the claimed design. For other characteristics, the BPAI considered whether those characteristics deviated significantly from other aspects of the design so as to affect the overall appearance of the claimed design.
In the end, Ford’s arguments failed and the BPAI, finding that the vehicle front grill design was basically the same as Ford’s claimed grill design, and that the Examiner did not err in concluding that Ford’s grill design would have been obvious over the cited art, affirmed the Examiner’s final rejection of the sole design claim….damned paparazzi!