Ex parte DE LAFORCADE

Board of Patent Appeals and Interferences

Dec 20, 2000

08618306 (B.P.A.I. Dec. 20, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.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 VINCENT DE LAFORCADE
_____________
Appeal No. 1998-3309
Application No. 08/618,306
______________
HEARD: DECEMBER 5, 2000
_______________
Before CALVERT, McQUADE, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 3, 5 through 10 and 15 through 17. Claims
1, 2, 13 and 14 have been canceled. Claims 4, 11 and 12, the
only other claims in the application, stand withdrawn from
consideration under 37 CFR § 1.142(b).
We REVERSE.
Appeal No. 1998-3309 2
Application No. 08/618,306
Claim 15, as reproduced in the appendix, contains a1
typographical error. On page ii, line 3, “capillary action
prevented” should read --capillary action is prevented--.
The claims on appeal are drawn to an applicator for a
product of a viscous consistency and are reproduced in the
appendix of appellant’s main brief (Paper No. 16).1
The prior art applied in the final rejection is:
Jakubowski 2,917,765 Dec. 22, 1959
Berghahn et al. (Berghahn) 4,111,567 Sep. 5, 1978
Citterio 4,801,052 Jan. 31, 1989
Lathrop et al. (Lathrop) 5,073,057 Dec. 17, 1991
Hall et al. (Hall) 249,473 Oct. 25, 1962
(Published Australian Patent Application)
The appealed claims stand finally rejected under 35 U.S.C.
§ 103(a) on the following grounds:
claims 3, 5 through 10 and 15, unpatentable over Hall in
view of Berghahn and Lathrop; and
claims 16 and 17, unpatentable over Hall in view of
Berghahn, Lathrop, Jakubowski and Citterio.
After fully considering the record in light of the
arguments presented in appellant’s main and reply briefs and the
examiner’s answer, we conclude that the appealed claims are
patentable over the applied prior art, for at least the
following reasons.
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Application No. 08/618,306
With regard to the Figure 2 embodiment, Hall states2
that “[a] polishing pad 17 of polyurethane plastic,
corresponding to the disc 7 is again used to form the
applicator.” See p. 2.
Claim 15, the only independent claim, calls for an
applicator for a product of a viscous consistency, the
applicator comprising, inter alia, a cylindrical container body
having a first end and a rigid and non-deformable porous
application element fitted on the first end of the cylindrical
body and having pores which communicate with one another in all
directions.
We observe that, in the embodiment illustrated in Figure 2,
Hall discloses a device for dispensing “wax shoe polish” (p. 2,
l. 26) or “fluid wax” (id. at l. 39) including a tube 9 closed
at one end by a cap 11 and at the other end by a screw threaded
cap 10. An apertured member 16 and a polishing pad 17 of
opened-cell polyurethane foam (id. at ll. 15-17) are retained by
the cap 10. In use, a screw threaded stem 12 is rotated by way2
of a knob 14 moving a piston 13 toward the cap 10 and forcing
the wax through the apertures in member 16 and through the
applicator pad 17 so that the wax may be applied to the shoes.
Hall clearly lacks any teaching or suggestion that the
application element 17 is “rigid and non-deformable.” To the
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Application No. 08/618,306
contrary, Hall discloses that the pressure on the rim compresses
the pad and that the central portion bulges through the aperture
in the cap.
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Application No. 08/618,306
Berghahn’s invention is directed to an improvement over
prior art antiperspirant or deodorant applicators which use a
shaped, non-flexible, non-deformable, sintered porous synthetic
plastic resin applicator element having a controlled porosity
and omni-directional interconnecting pores. See col. 1, ll. 49-
60. Berghahn’s improvement includes the addition of venting
means, e.g., vent 31 in Figure 5, for venting the interior of
the container to the atmosphere and fluid restricting means 34
for restricting the flow of the product from within the interior
of the container body to the applicator element. Berghahn also
teaches that the pore size for the applicator element 4 may
range from 10 to 500 microns with 20 to 200 microns being
preferred. See col. 5, ll. 3 and 4.
Lathrop, like Berghahn, discloses an improvement over prior
art antiperspirant or deodorant applicators which use a shaped,
non-flexible, non-deformable, sintered porous synthetic plastic
resin applicator element having a controlled porosity and
omni-directional interconnecting pores. See col. 1, ll. 16-35.
Lathrop attempts to improve the capillary flow of the product
through the porous applicator head by including a capillary
pressure compensation valve 45 and a “means to generate pressure
within the container.” See col. 2, ll. 58-65. The “means to
Appeal No. 1998-3309 6
Application No. 08/618,306
generate pressure within the container” includes a spring 35
which mounts the applicator head on the container for movement
into and out of the container. In operation, the container is
first inverted wetting the inner surface 28 of the applicator
head and then, by capillary action, liquid flows through the
pores of the applicator head. When the head is applied to the
skin, the pressure on the head pushes the head into the
container increasing the pressure in the container, forcing
liquid out through the pores of the head and supplementing the
capillary flow. The capillary pressure compensation valve 45
allows air to enter the container to prevent a vacuum from
building up within the container when pressure on the head is
released and the head moves out of the container. See col. 4,
l. 60 et seq.
In the examiner’s statement of the grounds of the
rejections, the examiner described Berghahn as disclosing the
recited pore size (although pore size is not recited in claim
15) and determined that it would have been obvious to substitute
“such a material [presumably the applicator element 4 of
Berghahn] with the given pore size.” See answer, p. 3. The
examiner identified the motivation for this substitution as “the
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Application No. 08/618,306
For a teaching of the equivalency of the flexible3
polyurethane pad of Hall with the rigid, sintered applicator
of Berghahn, the examiner refers to column 5, line 8 et seq.
of Berghahn which describes a patent to Gazzani as containing
a suggestion that the porous, flexible, deformable applicator
pad disclosed therein could be porous and rigid.
It is unclear why the examiner cited Lathrop for this4
teaching, since Hall teaches ejecting the product in the
container by piston 13, threaded stem 12 and knob 14.
known substitution of equivalents.” Id. at p. 4. In addition,3
the examiner described Berghahn as teaching both the use and
non-use of a metering element 34 and determined that it would
have been obvious to eliminate the apertured member 16 of Hall
in view of this teaching in Berghahn. Lathrop is cited for its
disclosure of “pressurizing the container to dispense the
contents.” Id.4
We do not consider that it would have been obvious to
combine Hall with Berghahn and Lathrop as proposed by the
examiner. Hall is concerned with a dispenser for applying
cleaning fluid or polish in the form of wax or liquid to shoes.
To this end, Hall provides a container having a flexible,
compressible, opened-cell foam polyurethane applicator pad
mounted in the cap for the container. Berghahn and Lathrop both
disclose liquid applicators for applying antiperspirant or
deodorant to human skin. Assuming arguendo that it was known in
Appeal No. 1998-3309 8
Application No. 08/618,306
the cosmetic art prior to appellant’s invention to replace a
porous, flexible and deformable applicator pad with a porous,
rigid applicator, the purpose of the Hall applicator pad is so
different from that of Berghahn and Lathrop that one of ordinary
skill would not, in our view, have found in Berghahn or Lathrop
a suggestion to provide Hall with a rigid and non-deformable
porous application element, as recited in claim 15. In our
view, the only suggestion for modifying Hall in the manner
proposed by the examiner to meet the limitations of claim 15
stems from hindsight knowledge derived from appellant’s own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
It follows that we cannot sustain the examiner’s rejection
of claim 15 under 35 U.S.C. § 103 based on Hall, Berghahn and
Lathrop or of claims 3 and 5 through 10, dependent thereon.
As to claims 16 and 17, which depend from claim 15, neither
Jakubowski nor Citterio cures the deficiencies of the Hall,
Berghahn, Lathrop combination. Therefore, we must reverse the
rejections of claim 16 and 17 as well.
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Application No. 08/618,306
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CONCLUSION
The decision of the examiner rejecting claims 3, 5 through
10 and 15 through 17 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )

JFG:hh
Appeal No. 1998-3309 11
Application No. 08/618,306
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