David Cerutti et al.Download PDFPatent Trials and Appeals BoardMay 4, 20202019005764 (P.T.A.B. May. 4, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/062,592 03/07/2011 David Cerutti CR104AU-US 5744 60723 7590 05/04/2020 Avon Products, Inc. 1 Avon Place Suffern, NY 10901 EXAMINER NOBREGA, TATIANA L ART UNIT PAPER NUMBER 3799 NOTIFICATION DATE DELIVERY MODE 05/04/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PATENT.DEPARTMENT@AVON.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DAVID CERUTTI, GREGORY A. ORNOSKI, PAUL EARNSHAW, and DAVID STONEHOUSE __________ Appeal 2019-005764 Application 13/062,592 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 18 and 20–38. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM AND ENTER A NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Avon Products, Inc. Appeal Br. 2. Appeal 2019-005764 Application 13/062,592 2 STATEMENT OF THE CASE The claims are directed to ergonomic applicators for applying cosmetic composition to eyelashes. Claim 18, reproduced below, is illustrative of the claimed subject matter: 18. A kit comprising an applicator and a container charged with a liquid cosmetic composition for application to a keratin fiber, wherein said applicator comprises: a handle portion suitably dimensioned to permit the applicator to be held between the thumb and fingers on opposing faces thereof, the opposing faces being of sufficient width relative to the thickness separating the faces to prevent rotation of the handle when held between the thumb and fingers; and a head portion having opposing faces, wherein said head portion comprises a plurality of bristles for holding a charge of said composition and transferring said charge to said keratin fiber on contact therewith, wherein said head portion does not comprise a flocked surface, and wherein the longitudinal axis of said head portion is oriented, or is rotatable to be oriented, at an obtuse angle with respect to the longitudinal axis of said handle; and said kit is configured to receive the head portion of said applicator when inserted into said container so as to bring said plurality of bristles into contact with said composition, and a wiper attached to said container for removing excess composition from said plurality of bristles upon removal of the applicator from the container. Appeal 2019-005764 Application 13/062,592 3 REFERENCES The prior art relied upon by the Examiner are: Name Reference Date Gueret ’824 US 6,026,824 Feb. 22, 2000 Gueret ’657 US 2002/0023657 A1 Feb. 28, 2002 Velho US 2008/0196740 A1 Aug. 21, 2008 REJECTIONS Claims 18 and 20–38 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. Claims 18, 20, 21, 23–31, and 33–38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gueret ’824 and Gueret ’657. Final Act. 4. Claims 22 and 32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gueret ’824, Gueret ’657, and Velho. Final Act. 9. OPINION Written Description New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to recount his invention in such detail that his future claims can be determined to be encompassed within his original Appeal 2019-005764 Application 13/062,592 4 creation. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). Although there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. When an explicit limitation in a claim is not present in the written description it must be shown that a person of ordinary skill would have understood that the description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). If the originally filed disclosure does not provide support for each claim limitation, a new or amended claim must be rejected under 35 U.S.C. § 112, first paragraph, as lacking adequate written description. The Examiner reasonably questioned the presence of descriptive support in the original disclosure for the recitation added by amendment: “wherein said head portion does not comprise a flocked surface.” Final Act. 2. Appellant, in response, refers to language recited in paragraph 48 of the Specification and argues that “[b]ecause an embodiment of the invention comprising flocked surfaces on the head portion is positively described in the alternative, the specification supports the exclusion of the same from the claims.” Appeal Br. 5–6 (citing In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977); MPEP § 2173.05(i)). Appellant’s citations to Johnson which concerns a disclosure of a genus (see Appeal Br. 5) and MPEP § 2173.05(i) which states that “[i]n Appeal 2019-005764 Application 13/062,592 5 describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features” (see id. at 6), do not place Appellant in a better position. Portions of paragraph 48 of the Specification are reproduced below: The transfer element 56, includes means for holding and releasing a cosmetic composition, such as mascara, and can include any type of textured surface for holding a charge of cosmetic composition and transferring it to a keratin fiber, e.g., eyelashes, or the skin on contact. Any suitable textured surfaces capable of holding and transferring a charge of cosmetic composition may be used as a transfer element 56. The textured surfaces may also be capable of imparting various types of aesthetically pleasing appearances to the eyelashes, such as a volumized appearance, a separated appearance (i.e., the eyelashes being individually separated from each other), a curly appearance, etc. Examples of suitable textured surfaces include bristles, projections, indentations, fins, tines, velcro, teeth, grooves, sponges, or flocked surfaces. Spec. ¶ 48 (emphasis added). Here, although the last sentence above recites “or flocked surfaces,” reading the sentence as a whole––and other portions of the paragraph––does not lead an ordinary artisan to understand the Specification as disclosing alternative embodiments that now specifically exclude flocked surfaces. Rather, paragraph 48 discloses that transfer element 56 can include any type of suitable textured surfaces and that bristles, projections, indentations, fins, tines, velcro, teeth, grooves, sponges, and flocked surfaces are examples of suitable textured surfaces. See Final Act. 2–3; Ans. 11–12. We note that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Here, Appellant does not direct us to any disclosure– Appeal 2019-005764 Application 13/062,592 6 –and we are not able to find any––in the Specification concerning a reason to exclude flocked surfaces. We have additionally been informed, “[t]he question that remains is whether properly describing alternative features—without articulating advantages or disadvantages of each feature—can constitute a ‘reason to exclude’ under the standard articulated in Santarus. We hold that it can.” Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015). Here, however, Appellant does not identify where this “does not comprise a flocked surface” limitation is described. Accordingly, we sustain the written description rejection. New Grounds of Rejection under 35 U.S.C. § 112, Second Paragraph Each of dependent claims 20 and 30 recites “wherein said head portion has an arcuate cross-section about its longitudinal axis.” Appeal Br. 12, 14 (Claims App.; emphasis added). It is unclear what “about its longitudinal axis” means. For example, it is unclear whether the recited subject matter refers to a cross-section that includes the longitudinal axis, is perpendicular to the longitudinal axis, is along the longitudinal axis, or intercepts the longitudinal axis, of the head portion. The claims should be clarified to indicate whether they are directed to one of the possible interpretations above. In their current form, the claims do not provide sufficient certainty for the potential infringer to evaluate the possibilities of being held liable for direct and/or contributory infringement. “[T]he claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). For these reasons, we reject claims 20 and 30 under 35 U.S.C. § 112, second paragraph, in order Appeal 2019-005764 Application 13/062,592 7 to require this ambiguity to be definitively resolved, one way or another, during prosecution. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); accord In re Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (Plager, J., concurring); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Obviousness over Gueret ’824 and Gueret ’657 Claims 18, 21, 23–29, 31, and 33–38: Claim 18 is representative of claims 18, 21, 23–29, 31, and 33–38 pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See Appeal Br. 6–11. The Examiner finds that Gueret ’824 discloses a kit having most of the limitations of claim 18, particularly, an applicator having a head portion in which the head portion has applicator elements. Final Act. 4 (citing Gueret ’824 4:37–40; Figs. 1–4C, 6–8B, 8D–17B). The Examiner acknowledges that Gueret ’824’s applicator elements include reliefs and “Gueret ’824 does not disclose the plurality of application elements are bristles.” Id. at 4–5. The Examiner, however, finds that “Gueret ’657 demonstrates it is well-known in the art that ‘bristles’ and ‘other reliefs capable of forming a reserve of product and of restoring it to the surface to be treated’ are functional equivalent application elements.” Id. at 5; see also Gueret ’657 ¶ 2. The Examiner reasons that “because these two application elements were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute reliefs for bristles.” Final Act. 5. Appeal 2019-005764 Application 13/062,592 8 Appellant contends that Gueret ’824’s “unitary structure made of foam simply is not a plurality of bristles.” Appeal Br. 7. The Examiner correctly responds that “[t]he rejection of record in no way alleges that the unitary structure 6, 50 [of Gueret ’824] is a plurality of bristles nor does the rejection allege that a rough surface state of the foam forms a plurality of bristles.” Ans. 13. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Thus, Appellant does not apprise us of Examiner error. Appellant contends that “Gueret ’824 would have led away from bristles as well as explicitly differentiating itself from applicators with bristles” because Gueret ’824 discloses: The term “unitary structure” aims to differentiate the invention from any conventional application structure, for example of the type with bristles wherein the bristles forming the brush are free relative to one another over a substantial portion of their length, and can all pivot independently relative to the others. Appeal Br. 7–8 (quoting Gueret ’824 2:59–64). According to Appellant, “[i]t is critical that Gueret ’824’s applicators do not contain bristles as evidenced by the repeated teaching away for bristles throughout Gueret ’824” and “[a]ccordingly, the Examiner’s proposed modification would frustrate an essential purpose of Gueret ’824–i.e., producing applicators without bristles.” Id. at 8 (citing Gueret ’824 1:32–33, 1:53–55, 2:17–26). Appellant’s contentions are unpersuasive. First, we do not agree that Gueret ’824’s description of a “unitary structure” would have led away from Appeal 2019-005764 Application 13/062,592 9 all types of bristles. Gueret ’824 states that its “unitary structure” aims to differentiate from “the type with bristles wherein the bristles forming the brush are free relative to one another over a substantial portion of their length, and can all pivot independently relative to the others,” rather than from all types of bristles. See Gueret ’824 2:59–64 (emphasis added). The Examiner correctly responds that Gueret [’824] does not disclose disadvantages associated with bristles, but instead aims to distinguish the applicator of his invention (Figures 2–17B) with those of the prior art (Figure 1 and conventional twisted wire mascara brushes) and outlines disadvantages of the prior art applicators which is a result of the overall configuration of the applicators and not the use of bristles. Ans. 13. As Appellant points out, Gueret ’824 discloses drawbacks of certain types of prior art bristles––those having free ends, those that are short, and those that break or degrade due to stress. Appeal Br. 8. Rather than discrediting, criticizing, or disparaging using all bristles, Gueret ’824 instead suggests certain embodiments having bristles. See Gueret ’824 4:24– 25 (disclosing “in the vicinity of the free end of the applicator element the core may have means such as prongs or bristles”), 5:11–13 (disclosing “the separating element may be formed by a brush comprising an arrangement of bristles disposed radially on a central core”). See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention). Thus, like our appellate reviewing court, “[w]e will not read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appeal 2019-005764 Application 13/062,592 10 As such, we do not agree with Appellant that an essential purpose of Gueret ’824 is producing applicators without bristles. Appeal Br. 8. Accordingly, Appellant’s contention, that the Examiner’s proposed modification would frustrate an essential purpose of Gueret ’824, is unavailing. Appellant contends that “there would have been no motivation to combine these references in the manner proposed and the Examiner’s modification can only have been made with improper hindsight.” Appeal Br. 8. Gueret ’657 discloses: Applicators in the form of brushes or combs, comprising a support, generally rigid, on which elements intended to apply the product, particularly ones in the form of teeth, bristles, tufts of bristles or other reliefs capable of forming a reserve of product and of restoring it to the surface to be treated when the applicator is engaged with the latter are known. Gueret ’657 ¶ 2 (emphasis added). Thus, the Examiner is correct in reasoning that “one of ordinary skill in the art would have found it obvious to substitute reliefs for bristles.” Final Act. 5. We find the Examiner’s rejection is based on sound technical reasoning and evidence disclosed in the cited prior art, rather than improper hindsight reconstruction. Accordingly, we sustain the rejection of claims 18, 21, 23–29, 31, and 33–38 as being unpatentable over Gueret ’824 and Gueret ’657. Claims 20 and 30: We do not reach the merits of the prior art rejection of claims 20 and 30 because we are unable to review them without having to make speculative assumptions about the meaning of the language of the rejected claims, as discussed above for the rejection under 35 U.S.C. § 112, second Appeal 2019-005764 Application 13/062,592 11 paragraph.2 Consequently, we are constrained to reverse the rejection of claims 20 and 30 as unpatentable over Gueret ’824 and Gueret ’657 (see Final Act. 6). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.). Obviousness over Gueret ’824, Gueret ’657, and Velho Appellant does not provide substantive arguments in regard to the rejection of claims 22 and 32 and relies on the arguments presented for parent claims 18 and 29, respectively. Appeal Br. 6–9. Accordingly, for similar reasons as discussed above, we sustain the Examiner’s rejection of claims 22 and 32 as unpatentable over Gueret ’824, Gueret ’657, and Velho. CONCLUSION The Examiner’s rejection of claims 20 and 30 over prior art is reversed. The Examiner’s rejections of claims 18 and 20–38 under 35 U.S.C. § 112, first paragraph and of claims 18, 21–29, and 31–38 over prior art, are affirmed. We enter a NEW GROUND OF REJECTION of claims 20 and 30 under 35 U.S.C. § 112, second paragraph. 2 In the event that Appellant chose to amend claims 20 and 30 to recite “wherein said head portion has an arcuate cross-section that includes its longitudinal axis,” we note that Gueret ’824’s Figures 4B and 4C appear to meet such recited language. Appeal 2019-005764 Application 13/062,592 12 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2019-005764 Application 13/062,592 13 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 18, 20–38 112, first paragraph Written Description 18, 20–38 18, 20, 21, 23– 31, 33–38 103(a) Gueret ’824, Gueret ’657 18, 21, 23–29, 31, 33–38 20, 30 22, 32 103(a) Gueret ’824, Gueret ’657, Velho 22, 32 20, 30 112, second paragraph Indefiniteness 20, 30 Overall Outcome 18, 20–38 20, 30 AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation