Ex Parte Cole

Board of Patent Appeals and Interferences

Dec 2, 2010

11139785 (B.P.A.I. Dec. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTINA M. COLE
____________

Appeal 2009-009737
Application 11/139,785
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/139,785

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STATEMENT OF THE CASE
Christina M. Cole (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 3 and 9, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellant’s claimed invention is “an applicator for applying eye
shadow whose working end is in a concave shape that is substantially
complementary to the shape of a closed eye lid.” Spec. 1, para. [0001].
Claims 3 and 9 are reproduced below.
3. An eye shadow applicator, comprising:
a bundle of bristles aligned in parallel along an axis and
having a proximal end secured to a handle by a surrounding
collar member and a distal end having a concave, arcuate shape
with respect to a length of the bundle of bristles that is
orthogonal to said parallel axis of the bristle bundle, said
concave shape being substantially complementary to a
maximum length vertically oriented arc defined by a closed
eyelid, and wherein said concave, arcuate shape is asymmetrical
such that one end of said bristle bundle is longer than an
opposite end with respect to the parallel axis of the bristle
bundle, and wherein said longer end includes a tapered end
means for applying eye shadow to corners of a closed eyelid,
wherein said collar member surrounding said proximal
end of said bristle bundle includes a collar protrusion that
stiffens the longer end of the bristle bundle.
9. An eye shadow applicator, comprising:
a bundle of bristles aligned in parallel along an axis and
having a proximal end secured to a handle by a surrounding
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collar member and a distal end having a concave, arcuate shape
with respect to a length of the bundle of bristles that is
orthogonal to said parallel axis of the bristle bundle, said
concave shape being substantially complementary to a
maximum length vertically oriented arc defined by a closed
eyelid, and wherein said concave, arcuate shape is asymmetrical
such that one end of said bristle bundle is longer than an
opposite end with respect to the parallel axis of the bristle
bundle, and wherein said longer end includes a tapered end
means for applying eye shadow to corners of a closed eyelid,
wherein a maximum width of said distal end is no more
than one-quarter of the length of said distal end.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 3 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Pessis (US 4,998,315, issued March 12,
1991) and Seagren (US 5,375,288, issued December 27, 1994).
2. The Examiner rejected claims 3 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Gueret (US 6,073,634, issued June 13, 2000),
Pessis, and Seagren.
ISSUES
The issues presented by this appeal are:
Did the Examiner articulate a sufficient reason with rational
underpinning to explain why a person having ordinary skill in the art would
modify the nail polish brush of Pessis with the movable, bristle-stiffening
collar of the cleaning broom of Seagren to arrive at the invention of claim 3?
Did the Examiner articulate a sufficient reason with rational
underpinning to explain why a person having ordinary skill in the art would
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modify the bristle bundle of the nail polish brush of Pessis such that “a
maximum width of said distal end is no more than one-quarter of the length
of said distal end” as called for in claim 9?
Does Gueret disclose a concave, arcuate shape of the distal end of the
bristle bundle that is “substantially complementary to a maximum length
vertically oriented arc defined by a closed eyelid” as called for in claims 3
and 9?
ANALYSIS
Rejection under 35 U.S.C. § 103(a) over Pessis and Seagren
Claim 3 calls for a collar member surrounding the proximal end of the
bristle bundle including a collar protrusion that stiffens the longer end of the
bristle bundle. The Examiner found that Pessis discloses the claimed
applicator except that it does not disclose a collar member surrounding the
proximal end of the bristle bundle. Ans. 4. The Examiner found that
Seagren teaches a collar member surrounding the proximal end of a bristle
bundle and that it would have been obvious to add the collar member of
Seagren to the bristle bundle of Pessis “in order to allow the user to move
the collar member in order to stiffen the bristles.” Id.
Appellant argues that the Examiner failed to provide a clear
articulation of the reason(s) why a person of ordinary skill in the art would
combine and modify the nail polish brush of Pessis with the movable,
bristle-stiffening collar in the cleaning broom of Seagren to arrive at the
claimed applicator. Reply Br. 5.
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Pessis discloses a tapered and contoured brush for applying fluid
materials such as nail polish to nail surfaces. Pessis, col. 1, ll. 40-41. Pessis
discloses that “the bristles readily bend and yield laterally to prevent the
streaking effect commonly exhibited by brushes currently available on the
market.” Pessis, col. 1, ll. 51-53. See also Pessis, col. 1, l. 67 – col. 2, l. 2
(“another object of the present invention [is] to provide a brush with flexible
bristles which readily yield laterally to prevent streaking of the polish as it is
applied”) and Pessis, col. 2, ll. 55-57 (“the bristles readily yield and bend
laterally to prevent streaking of the applied polish”). With regard to the
embodiment of Figure 6, Pessis discloses that the “construction of the
inferior surface 54 is to facilitate the even lateral spreading out of the bristle
body 42 as it is pressed onto the surface of the nail.” Pessis, col. 4, ll. 3-5;
fig. 6.
As such, despite the teaching in Seagren that a bristle band can be
moved toward the distal end of a bristle bundle of a broom to compact the
bristles and thus stiffen the bristles to allow a worker to apply more
downward force to the hole being excavated (Seagren, col. 3, ll. 23-29) we
see no reason why a person having ordinary skill in the art would see fit to
apply this teaching from Seagren to add a collar or band to the nail polish
brush of Pessis “in order to allow the user to move the collar member in
order to stiffen the bristles” as proposed by the Examiner. Rather, because
Pessis discloses the importance of keeping the bristles flexible and yieldable
to prevent streaking of the polish, we find that the Examiner’s articulated
reason for modifying the nail polish brush of Pessis with the collar or band
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of Seagren lacks a rational underpinning. As such, we will not sustain the
rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Pessis and Seagren.
Claim 9 calls for an eye shadow applicator having a bundle of bristles
wherein “a maximum width of said distal end [of the bristles] is no more
than one-quarter of the length of said distal end.” The Examiner found that
while Pessis does not disclose this limitation, it would have been an obvious
matter of routine skill in the art. Ans. 4.
With respect to the shape of the bristle body, Pessis discloses:
The bristle body 14 has an outer free edge defined as a distal
edge 20. It is noted that the distal edge 20 is arcuate. The
bristles within the bristle body 14 are arranged so that the
longest bristles are located in the center area of the bristle body
14 and as the bristles get closer to the side edges 22 and 24 of
the bristle body 14, the bristles become shorter in length.
Normally, it is preferred that the length of the bristle body 14 be
one and one-half times the width of the body 14. The arcuate
shape of the distal edge 20 is to substantially correspond to the
contoured shape of the cuticle area of a user’s finger nail.
Pessis, col. 3, ll. 15-27. Pessis further discloses that “[t]he contoured edges
and curved bristles which are wider and shorter than the prototypes currently
available, enable the user to apply paint or polish more quickly and
satisfactorily by conforming to the shape of the nail and preventing
placement of the paint to surrounding cuticle surfaces.” Pessis, col. 4, ll. 18-
24.
In light of these disclosures in Pessis to make the contoured edges of
the bristles wider and shorter, we see no reason why it would have been an
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obvious matter of routine skill to a person having ordinary skill in the art to
make the distal end of the bristle bundle of Pessis narrower and longer than
the disclosed preferred width and length ratio such that the distal end has a
maximum width no more than one-quarter of the length of the distal end, as
called for in claim 9. As such, we will not sustain the rejection of claim 9
under 35 U.S.C. § 103(a) as being unpatentable over Pessis and Seagren.
Rejection under 35 U.S.C. § 103(a) over Gueret, Pessis, and Seagren
Claims 3 and 9 each recite a bristle bundle having a concave, arcuate
shape that is “substantially complementary to a maximum length vertically
oriented arc defined by a closed eyelid.” The Examiner found that Gueret
discloses an applicator having “a distal end a variety of shapes (28).” Ans. 4
(citing Gueret, figs. 4B-1-3; col. 8, ll. 60-65). The Examiner further found
that “[t]he concave distal end is an arcuate shape and the resilient body is a
bundle of bristles (6).” Ans. 4 (citing Gueret, figs. 6A and 6B; col. 6, ll. 60-
65). Based on these disclosures, the Examiner found that “[t]he distal end
has a shape that is substantially complementary to a maximum length
vertically oriented arc defined by a closed eyelid.” Ans. 4-5.
Gueret discloses an application device 1 comprising a handle 8 and
tufts 9 of bristles 6 forming an applicator 50. Gueret, col. 6, ll. 62-64; fig. 3.
As shown in Figure 3, the distal ends of the bristles 6 of applicator 50 are in
a straight line. Gueret discloses that in alternative embodiments the tufts of
the bristles may be cut along a beveled shape 27 (Figure 4B-1), a concave
shape 28 (Figure 4B-3), or a convex shape 29 (Figure 4B-2). Gueret, col. 8,
ll. 60-64. None of these disclosed shapes for the bristles forms an arcuate,
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concave shape that is substantially complementary to a maximum length
vertically oriented arc defined by a closed eyelid. Although Figure 4B-3
discloses a “concave” shape 28, the distal ends of the bristles form a “V” and
thus are not complementary to a closed eyelid.
Gueret further shows the use of applicator device 1 in Figures 6A and
6B. Gueret, col. 10, ll. 48-49. Gueret discloses with reference to Figure 6A:
[A]fter having solubilized the product on its surface, (by saliva
for example), the product is taken up by the applicator element
50 by inclining the application device 1 so as to place the
bristles 6 into contact with the product over a substantial
portion of its length and by displacing the applicator element 50
over the free surface 150 of the block 107. Thus, the bristles 6
are charged mainly over their lengths, in contrast to the
conventional applicators of the type shown in FIG. 1, which are
charged mainly at the ends of the bristles.
Gueret, col. 10, ll. 51-59. In other words, Figures 6A and 6B show that
make-up is taken up “by placing the bristles in a substantially flat manner on
the surface of the ‘cake’”. Gueret, col. 11, ll. 24-27. As we found supra, the
distal ends of the bristles 6 of applicator 50 are in a straight line. Although
the distal ends of the bristles 6 of applicator 50 appear to form an arcuate,
concave surface in Figures 6A and 6B, this depiction of the bristles is the
result of the perspective view of the straight-ended applicator 50 engaged in
a substantially flat manner against the surface of the convex block 107 of
make-up. As such, the Examiner’s finding that Gueret discloses an
applicator having a distal end that “has a shape that is substantially
complementary to a maximum length vertically oriented arc defined by a
closed eyelid” is in error. Hence, we will not sustain the rejection of claims
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3 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Gueret, Pessis,
and Seagren.
CONCLUSIONS
The Examiner failed to articulate a sufficient reason with rational
underpinning to explain why a person having ordinary skill in the art would
modify the nail polish brush of Pessis with the movable, bristle-stiffening
collar of the cleaning broom of Seagren.
The Examiner failed to articulate a sufficient reason with rational
underpinning to explain why a person having ordinary skill in the art would
modify the bristle bundle of the nail polish brush of Pessis such that “a
maximum width of said distal end is no more than one-quarter of the length
of said distal end.”
Gueret does not disclose a concave, arcuate shape of the distal end of
the bristle bundle that is “substantially complementary to a maximum length
vertically oriented arc defined by a closed eyelid.”
DECISION
The decision of the Examiner to reject claims 3 and 9 is REVERSED.

REVERSED

nlk

ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN VA 22102-8064