DMS Innovations Limited et al.

Patent Trials and Appeals Board

Sep 22, 2021

2020006309 (P.T.A.B. Sep. 22, 2021)

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.
14/421,605 02/13/2015 Deane Marc Stanton 198-000810US 3516
22798 7590 09/22/2021
QIPLG
1563 Boxwood Avenue
San Leandro, CA 95679
EXAMINER
RODGERS, THOMAS RAYMOND
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
baker@biopatent.com
gbaker@quinelaw.com
info@quinelaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEANE MARC STANTON
____________

Appeal 2020-006309
Application 14/421,605
Technology Center 3700
____________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 4, 12–23, 26, and 27 in this
application.2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies DMS Innovations, Limited as
the real party in interest. Appeal Br. 1.
2 Claim 3, 5–9, 24, and 25 have been canceled. See Final Act. (Mar. 2,
2020), 2; Appeal Br. 9–12 (Claims App.). The Examiner objects to, but has
withdrawn the rejection of, claims 10 and 11. See Adv. Act. (May 28,
2020); Ans. 8.
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CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites, with
our emphases added:
1. A hair brushing device comprising:
a housing having an internal space therein; and
a brush face comprising a first plurality of bristles extending
from a first brush surface and a second plurality of bristles
extending from a second brush surface;
wherein, the brush face is releasably mounted to the
housing; and
wherein, when the brush face is mounted upon the housing,
the first plurality of bristles are received within the internal
space of the housing and the brush face is reversible on the
housing to allow the second plurality of bristles to face
outwards from the housing;
wherein the brush face is configured to be reversible by
completely removing the face from the housing and rotating the
brush face so that the surface with the first plurality of bristles
within the internal space then faces outwards from the housing;
and,
wherein the housing in a plane parallel to the first surface of
a mounted brush face has a length greater or width greater than
a greatest depth of the housing perpendicular to the first
surface.
Appeal Br. 9 (Claims App.).
REJECTIONS ON APPEAL3
Claims 1, 2, 13–23, 26, and 27 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Morris (US 2,618,006, iss. Nov. 18, 1952). See
Final Act. 2; Adv. Act. (stating rejection does not apply to claims 4 and 12).

3 The Examiner has withdrawn a rejection of several claims under 35 U.S.C.
§ 103 as unpatentable over Frank (US 2,764,770, iss. Oct. 2, 1956) and
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Claims 4 and 12 are rejected under 35 U.S.C. § 103 as unpatentable
over Morris and Reisman (US 5,664,278, iss. Sept. 9, 1997). See Final
Act. 9.
OPINION
A. Anticipation by Morris
1. Claims 1, 2, 13–18, 20–23, 26, and 27
The Examiner finds Morris discloses the “housing” of claim 1 as case
section 62 or case section 64, and the “brush face” of claim 1 as brush
body 12, because case sections 62 and 64 snap on to opposite sides of brush
body 12 to encase both sets of bristles 22 and 24. See Final Act. 2–3;
Ans. 3; see also Morris, Figs. 1–3 and 5–7.
This finding is supported by a preponderance of the evidence.
Morris’s Figure 3 is a perspective view of brush 10 comprising body 12 and
bristles 22 and 24. See Morris, 1:27, 1:46–54. Morris’s Figure 1 is a
perspective view of how case sections 62 and 64 come together to form
case 60, and Morris’s Figures 5 and 6 are cross-sectional views of brush 10
encased between case sections 62 and 64. See id. at 1:22–23, 1:29–34,
2:47–49. Brush body 12 has longitudinal ribs 88 and 90 as shown in
Figure 3, which “engage in” grooves 92 and 94 of case sections 62 and 64 as
shown in Figures 2, 6, and 7, to retain the case sections on the brush body in
a snap-fit manner. See id. at 3:26–30. As described in Morris, a user
employs brush 10 by pulling one section 62 or 64 off of brush 10 to expose
one set of bristles 22 or 24, with the other section 62 or 64 remaining

Wolfe (US 1,166,296, iss. Dec. 28, 1915). See Final Act. 6–9 (rejection);
Adv. Act. (withdrawing rejection); Ans. 8 (same).
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attached to brush 10 to be used as a handle in a shoe shining operation. See
id. at 3:31–39.
The rejection focuses on the interaction between brush 10 and one
case section 62 or 64 as satisfying the reversible limitations recited in
claim 1—we will refer to case section 62 for convenience. According to the
Examiner, brush 10 is “configured to be reversible by completely removing
[brush 10] from [case section 62] and rotating [brush 10]” as recited in
claim 1, so that in one configuration bristles 22 are received within
section 62 and bristles 24 face outwards from section 62, and in another
configuration bristles 24 are received within section 62 and bristles 22 face
outwards from section 62. See Final Act. 3; Ans. 3–4. In support, the
Examiner finds “the brush can be completely removed and set back into”
case section 62, because Morris’s drawings show case sections 62 and 64
“are symmetrical on the exterior” (Figure 1) and are also symmetrical in
how ribs 88 and 90 of body 12 engage grooves 92 and 94 of the case
sections (Figures 2, 3, 6, and 7), so brush 10 “can be rotated to either side.”
Final Act. 3; Adv. Act.; Ans. 10–11.
Appellant contends Morris does not support the Examiner’s finding
that brush 10 is configured to be reversibly mounted upon case section 62 in
the manner required by claim 1. See Appeal Br. 2–6. According to
Appellant, the rejection “depend[s] on inherency” of disclosure in Morris,
but the Morris disclosure does not necessarily support the Examiner’s
finding. Id. at 2; id. at 3 (stating “inherency arguments require that the
Office to provide [(sic)] a basis in fact showing the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art”
(emphasis by Appellant)). Appellant argues the Examiner’s findings of
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symmetry in Morris’s various structures are in error, because Morris
describes case sections 62 and 64 as merely “similar,” versus daubers 30
and 32 which are expressly “identical.” Id. at 4 (citing Morris, 2:2–3,
2:55–3:2). Also: “symmetry alone does not make the alternate case/brush
orientations necessarily fit.” Id. at 5.
Further according to Appellant, Morris’s drawings “show that the
Morris brush cannot inherently be reversibly mounted upon either of the
housing cases” because the drawings “actually demonstrate several features
conflicting with the alleged possibility of reversing the Morris brush in the
housings.” Id. at 2. Specifically: “[T]here are abundant differences between
the features in the Morris Figures that demonstrate the brush of the Figures
(basis of the rejection) would not fit as required in the rejection,” including
“abundant asymmetries and significant inconsistencies.” Id. at 4–5. Here,
Appellant alleges the Morris drawings illustrate quantifiable dimensions of
the structures shown therein. Id. at 5 (lines 12–25), 6 (lines 2–13). These
alleged dimensions, in Appellant’s view, demonstrate error in the
Examiner’s finding of reversibility. See id.
The Examiner answers by re-iterating the findings discussed above,
including the finding of symmetry. See Ans. 3–4, 10–11, 12. The Examiner
alternatively finds that, even if ribs 88 and 90 of body 12 and the respective
grooves 92 and 94 of case sections 62 and 64 are not perfectly symmetrical,
still “either housing [62 or 64] could fit onto either side [of brush 10] since
the housing has to flex around the rib in order to apply pressure and be held
in place,” so lack of perfect symmetry “would not affect one of the
housing[s] attaching to either rib.” Id. at 11. Further according to the
Examiner, Morris indicates only that the respective ends of the two
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sections 62 and 64 that cover daubers 30 and 32 are “similar,” which does
not establish a lack of symmetry in the inter-locking rib/groove structures of
the case sections over brush 10. Id. at 11–12. The Examiner, finally,
disputes Appellant’s reliance on the Morris drawings as disclosing
quantifiable dimensions of structures. Id. at 12–13 (citing MPEP
§§ 2121.04, 2125).
Appellant’s reply asserts the Examiner fails to address the specific
verbiage of claim 1. See Reply Br. 2.4 Appellant also insists the rejection is
based on an inherent disclosure being found in Morris, without meeting the
applicable standard of necessary disclosure. See id. at 2–3. Appellant also
continues to rely on specific quantifiable dimensions being found in the
Morris drawings. See id. at 3–5.
Upon review of the foregoing, we conclude there are two claim
limitations at issue. The first is that “when the brush face is mounted upon
the housing, the first plurality of bristles are received within the internal
space of the housing and the brush face is reversible on the housing to allow
the second plurality of bristles to face outwards from the housing.” Appeal
Br. 9 (Claims App.). The second is that “the brush face is configured to be
reversible by completely removing the face from the housing and rotating
the brush face so that the surface with the first plurality of bristles within the
internal space then faces outwards from the housing.” Id. We determine a
preponderance of the evidence supports the Examiner’s finding that Morris’s
brush 10 and case section 62 are configured so as to satisfy these limitations.

4 Appellant filed two Reply Briefs, on the same day, without explaining
why. The two Reply Briefs appear to us to be identical to each other.
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Applying the first limitation, we find brush 10 is mounted upon case
section 62 as expressly shown in Morris’s Figures 5 and 6, with first
bristles 24 received within an internal space of case section 62 and second
bristles 22 facing outwards from case section 62. As shown, second
bristles 22 are received within an internal space of the other case section 64.
Nonetheless, Morris discloses that the other case section 64 may be pulled
off of brush 10, to apply second bristles 22 in a brushing operation using
case section 62 as a handle. See Morris, 3:31–39.
Applying the second limitation, we find brush 10 is configured to be
reversible by completely removing brush 10 from case section 62 and
rotating brush 10 so that the surface with first bristles 24 then face outwards
from case section 62. We agree with Appellant’s position that Morris does
not expressly describe performing this specific reversibility operation.
Nonetheless, the structure disclosed by Morris is “configured to” (the
operative phrase in claim 1)—or, alternatively, is made to, or is designed
to—be reversible in the fashion claimed. See, e.g., In re Giannelli, 739 F.3d
1375, 1379–80 (Fed. Cir. 2014) (discussing how the claim phrase “adapted
to” is frequently used to mean “made to,” “designed to,” or “configured to,”
but can also more broadly mean “capable of” or “suitable for”).
To illustrate the reasons for our finding, we reproduce a modified and
annotated version of Morris’s Figure 6 here (on the next page):
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Morris’s Figure 6 is a cross-sectional view of brush 10 taken along line 6–6
in Figure 5, showing first bristles 24 encased within case section 62, which
we have modified to remove the other case section 64 and its associated
parts (see Morris, 3:31–39, Fig. 6). We have also annotated Figure 6 to
identify: case section 62 and brush body 12 (see id. at Figs. 5 and 8); four
longitudinal ribs 88, 88, 90, and 90 on brush body 12 (see id. at 3:26–30,
Figs. 3, 7, and 8); and two grooves 94 and 94 on case section 62 (see id. at
3:26–30, Figs. 2 and 7).
In this illustrated configuration of Morris’s structure, the two ribs 88
mate to the two grooves 94 to releasably retain case section 62 on brush
body 12, with first bristles 24 received within case section 62 and second
bristles 22 facing outwards from case section 62. See id. at 3:26–36. It is
also readily apparent from Figure 6 that the other two ribs 90 also mate to
grooves 94 to releasably retain case section 62 on brush body 12, with
second bristles 22 received within case section 62 and first bristles 24 facing
outwards from case section 62. In particular, the two bristle sets 22 and 24
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extend to approximately the same height over brush body 12 so the internal
space of case section 62 can accommodate second bristles 22, when ribs 90
are received within grooves 94 with second bristles 22 inside case section 62
and first bristles 24 facing outwards from case section 62.
Appellant’s argument to the contrary is not persuasive, for at least
three reasons. First, Appellant does not explain sufficiently how the various
dimensional measurements (in millimeters (mm)) alleged by Appellant to be
disclosed by Morris were obtained. See Appeal Br. 5–6; Reply Br. 3–5.
Appellant merely states that “the dimensions are unambiguously presented
in the [Morris] drawings . . . and measured using an accurate and precise
micrometer.” Reply Br. 3. Apparently, Appellant’s counsel applied some
sort of ruler to the Morris drawings to derive the various dimensions
discussed in Appellant’s argument, which are reported to tenths of a
millimeter. We are not persuaded that such a fine scaling is presented in the
Morris drawings. Instead, we conclude this is attorney argument that is
unsupported by any persuasive discussion of evidence in the record, or
witness testimony reflecting the understandings of a person of ordinary skill
in the art. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Second, our reviewing court has held “it is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
222 F.3d 951, 956 (Fed. Cir. 2000) (citing In re Wright, 569 F.2d 1124,
1127 (CCPA 1977)). Here, Morris is devoid of any indication that its
figures are drawn to scale, much less to an accuracy of tenths of a
millimeter.
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As one specific example of this, Appellant asserts Figure 6 illustrates
ribs 88 and 90 being spaced 7.3 mm apart at line 6–6 in Figure 5, whereas
Figure 7 illustrates ribs 88 and 90 being spaced 8.5 mm apart at line 7–7 in
Figure 5. Appeal Br. 6; Reply Br. 4. Therefore, Appellant concludes the
spacing between ribs 88 and 90 is “different” along the longitudinal length
of brush body 12, “in a way that would make the brush [10] only fit in one
orientation” within either case section 62 or 64, so brush 10 “does not fit in
reversed orientations.” Appeal Br. 6 (underlining by Appellant); see also
Reply Br. 3–5 (alleging “the ribs [are] spaced differently side to side [and]
they also change spacing along their length with an unknowable route
between shown cross-sections” (underlining by Appellant)).
We disagree. We find, instead, that Morris describes “[l]ongitudinal
ribs 88 and 90 . . . provided on each side of the body 12,” and Morris’s
drawings show the ribs extend in parallel along the longitudinal axis of
brush body 12. See Morris, 3:26–30 (emphasis added), Figs. 3 and 8.
Appellant’s attempt to demonstrate a minor discrepancy in the rib spacing as
shown in Figures 6 and 7 is not what a person of ordinary skill in the art
would understand Morris’s drawings to disclose, when there is no indication
in Morris’s written description that Figures 6 and 7 are in fact drawn to the
same scale at an accuracy of tenths of a millimeter.
Third, even taking Appellant’s counsel’s other measurements of
Morris’s drawings at face value, they do not persuade us to reverse the
Examiner’s rejection. Here, Appellant asserts “the spacing of the Figure 2
groove 92 is 1.7 mm from the edge, while the spacing of corresponding
ribs 90 and 88 in the brush is 2.6 mm.” Appeal Br. 5. Based on those
measurements, Appellant contends “the first rib 88 would seat in 1.7 mm,
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but the second rib 90 would only extend out 0.9 mm to interact with the
other case half.” Id. Appellant concludes “[t]he rib/groove spacing of the
two case halves does not appear to functionally interact with either brush
orientation,” so “the brushes are not interchangeable for mounting in case
grooves.” Id.
However, the factual issue presented here is whether the two ribs 90
are configured to mate to the two grooves 94 to releasably retain case
section 62 on brush body 12, with second bristles 22 received within case
section 62 and first bristles 24 facing outwards from case section 62.
Appellant’s foregoing measurements, to the extent they are understood, are
inapposite to that factual issue.
We therefore sustain the rejection of claim 1 as anticipated by Morris.
Appellant does not argue dependent claims 2, 13–18, 20–23, 26, and 27
separately from claim 1, so we likewise sustain the rejection of those claims
as anticipated by Morris. See Appeal Br. 2–6; 37 C.F.R. § 41.37(c)(1)(iv).
2. Claim 19
Appellant briefly addresses dependent claim 19 separately from its
parent claim 1. See Appeal Br. 6. However, Appellant’s argument is that
the Examiner errs because the Morris drawings “do not necessarily disclose
that a user could remount the brush face on the housing with a different face
directed outwards, as discussed above” in connection with claim 1. See id.
That argument is not persuasive for the reasons provided above. Therefore,
we also sustain the rejection of claim 19 as anticipated by Morris.
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B. Obviousness over Morris and Reisman
Appellant asserts “there can be no obviousness [of claims 4 and 12
over Morris and Reisman] because Morris does not teach all limitations (as
discussed above), and Reisman does not cure this defect.” Appeal Br. 8.
That argument is not persuasive for the reasons provided above. Therefore,
we sustain the rejection of claims 4 and 12 as having been obvious over
Morris and Reisman.
SUMMARY OF DECISION
In summary, we affirm the Examiner’s decision to reject claims 1, 2,
4, 12–23, 26, and 27, as set forth in this table:
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
1, 2, 13–23,
26, 27
102(a)(1) Morris 1, 2, 13–23,
26, 27

4, 12 103 Morris,
Reisman
4, 12
Overall
Outcome
1, 2, 4, 12–23,
26, 27

TIME PERIOD FOR RESPONSE
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).
AFFIRMED