Ex parte Durocher

Board of Patent Appeals and Interferences

Jun 2, 1999

08607915 (B.P.A.I. Jun. 2, 1999)

Application for patent filed February 28, 1996. 1
Claim 9 has been amended subsequent to final rejection2
by an amendment filed July 14, 1997 (Paper No. 7), which
amendment was deemed by the examiner to overcome the final
(continued...)
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIP C. DUROCHER
____________
Appeal No. 98-2120
Application No. 08/607,9151
____________
ON BRIEF
____________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Philip C. Durocher (the appellant) appeals from the final
rejection of claims 5-11, the only claims remaining in the
application.2
Appeal No. 98-2120
Application No. 08/607,915
(...continued)2
rejection of this claim under 35 U.S.C. § 112, second
paragraph (see the advisory action dated August 19, 1997
(Paper No. 9)).
We base our understanding of the appealed subject3
matter upon the following interpretation of the terminology
appearing in the claims. In line 3 of claim 5 (as it appears
in the APPENDIX to the brief) we interpret "through" to be -
- in -- since it is readily apparent from a perusal of this
claim that the recited "slot" includes both groove 46 (which
does not extend through the wall) and slot 34 (which does
extend through the wall).
2
We REVERSE.
The appellant's invention pertains to a package for a
stick product such as deodorant. Of particular importance is
the provision of a locking mechanism for maintaining the
position of the stick product at given position relative to
the package. Independent claim 5 is further illustrative of
the appealed subject matter and a copy thereof can be found in
the APPENDIX to the brief.3
The references relied on by the examiner are:
Houlihan 2,071,747 Feb. 23,
1937
Keith 2,770,358 Nov. 13,
1956
European patent (Fierus) 0 442 004 Aug.
21, 1991
Appeal No. 98-2120
Application No. 08/607,915
3
Claims 5-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keith in view of Fierus and Houlihan. The
examiner is of the opinion that it would have been obvious to
provide the device of Keith with a locking mechanism of the
type disclosed by Fierus. Additionally, the answer states
that:
The motivation is provided by Houlihan's lock #30.
Houlihan also discloses the equivalence of lipstick
and deodorant. [Page 3.]
We will not support the examiner's position. Keith
discloses two embodiments of a cylindrical lipstick dispenser
that is refillable. In the embodiment of Figs. 1-3, the
bottom of the cylinder or barrel that forms the enclosure of
the dispenser has a removable sealing cap 3 which allows a
lipstick 7 and a holder 8 to be inserted into the bottom of
the cylinder or barrel. The wall of the cylinder or barrel is
provided with an elongated slot 4 having a plurality of detent
notches 13 spaced along one side thereof. The holder 8
comprises a split expansion ring that contracts around and
grips the end of the lipstick and has protruding ears 9,10,
with the ear 9 having a holding member 14 formed thereon.
When the lipstick 7 and the holder 8 are inserted into the
Appeal No. 98-2120
Application No. 08/607,915
4
cylinder or barrel, the ears 9,10 project through the slot 4
in such a manner that the holding member 14 snaps into the
notches, thus locking the holder and lipstick in a desired
position. If the ends of the projecting ears are squeezed
together by the fingers of a user, the holding member is
released from the notch in which it was engaged and the
lipstick and holder may be repositioned by sliding the ears
along the slot so that an end of the lipstick may be extended
from and retracted into the cylinder or barrel as desired.
Upon the removal of the fingers of a user, the holding member
snaps into an adjacent notch and the holder and lipstick are
once again locked in position.
The embodiment of Figs. 6 and 7 shows a similar
arrangement except that the holder is in the form of a cupped
container that has a projecting detent spring 51 which
cooperates with squared recesses 48 that are spaced along one
side of an open slot in the wall of the cylinder or barrel.
The projecting detent spring snaps into the squared recesses
(in a manner similar to the holding member 14 snapping into
the detent notches 13 in the embodiment of Figs. 1-3), thus
locking the cupped container together with the lipstick in a
Appeal No. 98-2120
Application No. 08/607,915
5
fixed position. The lipstick and cupped container may be
repositioned with respect to the cylinder or barrel by
gripping the projecting detent spring and sliding it, together
with the cupped container and lipstick, along the slot in
essentially the same manner as in the embodiment of Figs. 1-3.
Thus, both embodiments of Keith can be considered to have
a barrel with a slot, a product support member, an adjustment
button and a locking mechanism. Neither of these embodiments,
however, shows a plurality of detents laterally disposed along
each side of the slot or a locking mechanism with an
adjustment button having mounted thereon at least two
resilient arms with detents adjacent the ends of the arms as
set forth in independent claim 5.
In an attempt to overcome these deficiencies, the
examiner relies on the teachings of Fierus. Fierus, at the
broadest level, teaches a barrel-like enclosure 1 for an
elongated article wherein the enclosure is provided with (1) a
slot having a plurality of detents 6 along each side thereof,
(2) an adjustment button 4 and (3) a locking mechanism of the
type having resilient arms with detents 8 on the ends thereof
Appeal No. 98-2120
Application No. 08/607,915
6
that cooperate with the detents 6 along the sides of the slot.
While Fierus provides these elements for the purpose of
repositioning the elongated article M so that an end thereof
may be extended from and retracted into the enclosure, Fierus
does so in a completely disparate context, namely, wherein the
elongated article M is a knife blade.
In our view, there is no suggestion to combine the
disparate teachings of Fierus with those of Keith in the
manner proposed by the examiner. In the first place, the
lipstick dispenser of Keith, as we have noted above, already
has a locking mechanism and there appears to be neither reason
nor need to modify Keith's locking structure. In the second
place, in addition to the elements mentioned above, Keith's
locking structure also includes a toggle 5, and an arresting
part or cam 14 and a handle 13, all of which are necessary in
order to deflect the resilient arms to a position where the
detents 8 formed thereon are engaged with the detents 6 along
the edges of the slot. The resulting locking structure is
bulky and appears to be ill-suited for use in a lipstick
dispenser such as that of Keith. The examiner may not pick
and chose from any one reference only so much of it as will
Appeal No. 98-2120
Application No. 08/607,915
7
support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference
fairly suggests to one of ordinary skill in the art (Bausch &
Lomb, Inc., v. Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 448,
230 USPQ 416, 419 (Fed. Cir. 1986), cert. denied, 484 U.S. 823
(1987) and In re Kamm, 452 F.2d 1052, 1057, 172 USPQ 298, 301-
02 (CCPA 1972)), and obviousness cannot be established by
locating references which describe various aspects of
appellants’ invention without also providing evidence of the
motivating force which would impel one skilled in the art to
do what the appellants have done (Ex parte Levengood, 28
USPQ2d 1300, 1302 (Bd. Pat. App. & Int. 1993)). Here, we find
no persuasive evidence of such a motivating force. While the
examiner states that "Houlihan's lock #30" provides
motivation, the examiner provides no explanation whatsoever as
to why Houlihan's lock 30 provides motivation to combine the
disparate teachings of Keith and Fierus, and we are at a total
loss to understand why this might be the case. The examiner's
reference to Houlihan establishing the "equivalence of
lipstick and deodorant," at the most appears to have relevance
Appeal No. 98-2120
Application No. 08/607,915
8
to dependent claims 10 and 11, and even if we were to agree
with the examiner that Houlihan establishes such an
equivalence, the basic deficiencies of the relied on prior art
that we have noted above would not be overcome.
Appeal No. 98-2120
Application No. 08/607,915
9
In view of the foregoing, the decision of the examiner to
reject claims 5-11 under 35 U.S.C. § 103 based on the combined
teachings of Keith, Fierus and Houlihan is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
bae
Appeal No. 98-2120
Application No. 08/607,915
10
James M. Serafino
Colgate-Palmolive Company
909 River Road
P.O. Box 1343
Piscataway, NJ 08855-1343