Ex parte BROWN

Board of Patent Appeals and Interferences

Oct 15, 1998

08110273 - (D) (B.P.A.I. Oct. 15, 1998)

Application for patent filed August 23, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD W. BROWN
__________
Appeal No. 95-3684
Application 08/110,2731
__________
ON BRIEF
__________
Before JERRY SMITH, BARRETT and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 23, all of the claims pending in the
application.
Appeal No. 95-3684
Application 08/110,273
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The invention relates to a method and apparatus for
custom-izing a cosmetic product at the point of sale to the
customer.
Independent claim 1 is reproduced as follows:
1. A machine for custom blending of a color cosmetic
product comprising:
(i) a means for receiving operating instructions
about a customer's optimal formula;
(ii) a plurality of dispensers each containing a
cosmetic composition of a different color
selected from the group consisting of white,
yellow, red and black;
(iii) a means for activating dosing to a common
dosing chamber of certain selected ones of the
cosmetic compositions and at certain
concentrations as determined by the operating
instructions; and
(iv) a means for delivering the dosed formula
into a container to the customer as a color
cosmetic product.
The references relied on by the Examiner are as follows:
Cedrone et al. (Cedrone) 4,766,548 Aug.
23, 1988
Krauss et al. (Krauss) 4,871,262 Oct. 03,
1989
Claim 1 stands rejected under 35 U.S.C. § 102 as being
Appeal No. 95-3684
Application 08/110,273
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anticipated by Krauss. Claims 2 through 14 and 18 through 23
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Krauss. Claims 15 through 17 stand rejected under 35
U.S.C. § 103 as being unpatentable over Krauss in view of
Cedrone.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claim 1 is anticipated by
Krauss.
It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326,
231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984).
Appeal No. 95-3684
Application 08/110,273
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Appellant argues on page 6 of the brief that Krauss fails
to teach the Appellant's claimed limitations as required under
35 U.S.C. § 102. In particular, Appellant argues that Krauss
does not disclose a dispensing system which delivers color
ingredients to provide an optimal color formula.
We note that Appellant's claim 1 recites "a machine for
customer blending of a color cosmetic product comprising ... a
plurality of dispensers each containing a cosmetic composition
of a different color selected from the group consisting of
white, yellow, red and black and a means for activating dosing
to a common dosing chamber of certain selected ones of the
cosmetic compositions and at certain concentrations as
determined by the operation instructions."
On page 4 of the answer, the Examiner states that Krauss
does not explicitly teach the cosmetic additives are different
colors. The Examiner points out that Krauss teaches blending
cosmetic additives for makeup formulations in column 1, line
10. The Examiner argues that makeup formulations are
notoriously well known to be color dependent and therefore
Krauss anticipates Appellant's claim 1.
Appeal No. 95-3684
Application 08/110,273
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Upon a careful review of Krauss, we fail to find that
Krauss teaches a machine for blending color as recited in
Appellant's claim 1. We agree that makeup formulations have a
color. However, Krauss is not concerned with color blending,
only blending additives into a cosmetic base for providing
suitability to the type of skin condition (e.g. normal skin,
oily skin or dry skin). See column 1, lines 1-31.
Therefore, we find that Krauss fails to teach all of the
limitations of claim 1, and thereby the claim is not
anticipated by Krauss.
In regard to the 35 U.S.C. § 103 rejection, the
Examiner has failed to set forth a prima facie case. It is the
burden of the Examiner to establish why one having ordinary
skill in the art would have been led to the claimed invention
by the express teachings or suggestions found in the prior
art, or by implications contained in such teachings or
suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
Appeal No. 95-3684
Application 08/110,273
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invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
In regard to the other independent claim, claim 20, the
Examiner notes on page 4 of the answer that Krauss fails to
teach the means for regulating the temperature within the
machine to maintain the cosmetic compositions at a constant
viscosity thereby improving accuracy of dosing as set forth in
Appellant's claim 20. On the same page of the answer, the
Examiner states that this concept is not new or unobvious and
that it would have been obvious to one of ordinary skill in
the art to regulate the temperature. We note that the
Examiner did not provide any evidence in prior art to support
the Examiner's conclusion.
With regard to the only other independent claim, claim
22, Examiner notes on page 5 of the answer that Krauss fails
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Application 08/110,273
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to teach a means for delivering the dosed formula into a
container to the
customer as a cosmetic product, said delivery means including
a first and second pump of different pumping capacity as
recited in Appellant's claim 22. On the same page of the
answer, the Examiner states it would have been obvious to one
of ordinary skill in the art to design pumping systems to have
different pumping capacities. We note that the Examiner did
not provide any evidence in prior art to support the
Examiner's conclusion.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
After a careful review of Krauss, we fail to find that
Appeal No. 95-3684
Application 08/110,273
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Krauss teaches or suggests a means for regulating temperature
or a delivery means including a first and second pump of
different pumping capacity. Thus, the Examiner has failed to
show that the prior art suggested the desirability of the
Examiner's proposed modification. We are not inclined to
dispense with proof by evidence when the proposition at issue
is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing
court requires this evidence in order to establish a prima
facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). We have not sustained the
rejection of claim 1 under U.S.C. § 102 or the rejection of
claims 2 through 23 under 35 U.S.C. § 103. Accordingly,
the Examiner's decision is reversed.
REVERSED
Appeal No. 95-3684
Application 08/110,273
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JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
vsh
Appeal No. 95-3684
Application 08/110,273
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Unilever United States, Inc.
Patent Department
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