Ex Parte Gueret

Patent Trial and Appeal Board

Feb 27, 2017

13397776 (P.T.A.B. Feb. 27, 2017)

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.
13/397,776 02/16/2012 Jean-Louis GUERET 147192.01 1034
92793 7590 03/01/2017
OT TFF PT C fwith Nnnvl EXAMINER
P.O. Box 320850
Alexandria, VA 22320-4850
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
OfficeAction92793@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-LOUIS GUERET
Appeal 2014-009163
Application 13/397,776
Technology Center 3700
Before JENNIFER D. BAHR, LYNNE H. BROWNE, and
JASON W. MELVIN, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean-Louis Gueret (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision (set forth in the Non-Final Action dated February 7,
2014)1 rejecting claims 1 and 4—20. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on
February 23, 2017.
We AFFIRM.
1 Hereinafter “Non-Final Action” or “Non-Final Act.”
Appeal 2014-009163
Application 13/397,776
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
1. An applicator device for applying a substance onto keratinous
fibers, the applicator device comprising:
a receptacle containing a product to be applied;
a wiper member disposed in the receptacle; and
an applicator configured for insertion into the receptacle,
the applicator comprising:
a rod having a first longitudinal axis and presenting
an end; and
a brush comprising:
a twisted-wire core affixed to the end of the
rod and having a rectilinear bristle-carrying portion
presenting a second longitudinal axis; and
a plurality of bristles extending from the
rectilinear bristle carrying portion of the twisted-
wire core, wherein
the first longitudinal axis and the second
longitudinal axis form an angle that is between 0.2°
and 20°, and
the plurality of bristles have free ends which
define an envelope surface of non-circular cross-
section along at least one point of the rectilinear
bristle-carrying portion, the cross-section being
taken perpendicular to the second longitudinal axis
at the at least one point,
the wiper member being configured to wipe the brush
when the brush is being removed from the receptacle.
REJECTIONS
I. Claims 1, 4—13, 17, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gueret ’994 (US 5,918,994, iss. July 6, 1999)
and Anderson (US 3,343,551, iss. Sept. 26, 1967).
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II. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gueret ’994, Anderson, and Gueret ’798 (US 5,462,798, iss.
Oct. 31, 1995).
III. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gueret ’994, Anderson, and Cansler
(US 5,161,555, iss. Nov. 10, 1992).
IV. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gueret ’994, Anderson, and Gueret ’607
(US 6,343,607 Bl, iss. Feb. 5, 2002).
DISCUSSION
Rejection I
Appellant argues for patentability of claims 1, 4—13, 17, and 20
subject to this ground of rejection as a group. Appeal Br. 3—8. We select
independent claim 1 as representative of this group, and claims 4—13, 17,
and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Gueret ’994 discloses an applicator device as
recited in claim 1, “except for the bristle carrying portion forming an angle
between 0.2 and 20 degrees.” Ans. 3. The Examiner finds that “Anderson
teaches a mascara brush having a bend such that it forms an angle from
about 0-60 degrees.” Id. (citing Anderson 4:1—2). The Examiner
determines:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the brush of Gueret
[’994] by tilting the brush so it forms an angle with the
longitudinal axis as taught by Anderson in order to provide
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spacing between the brush and handle portion to aid the user in
applying a cosmetic.
Id. at 3^4.
Appellant argues that the Examiner’s articulated reason (i.e., “in order
to provide spacing between the brush and handle portion to aid the user in
applying a cosmetic”) “lacks any teaching, suggestion or motivation in any
of the applied references, and such a conclusion cannot have been generated
without the use of improper hindsight.” Appeal Br. 4.
This argument is premised on a misapprehension of the law on
obviousness, as the Supreme Court has stated that a rigid insistence on
teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). Moreover, Appellant’s contention to the contrary notwithstanding,
the Examiner finds that the reason articulated for the modification is taught
in Anderson. Ans. 6 (citing Anderson 3:43—45); see Anderson 3:42-44
(stating, “handle portion 20 is angled with respect to base 10 to provide
convenience of handling and possible clearance away from eyebrow 22”).
Appellant also argues that “Anderson is not configured for use with a
container-based product (for example, a container having a wiper)” and,
“[t]hus, it would not have been obvious to have used the configuration of
Anderson in any modification of Gueret [’994], at least because of the
dissimilar configurations of Gueret [’994] and Anderson.” Appeal Br. 4.
According to Appellant, “[b]ecause Anderson is completely silent with
respect to a wiper member, one skilled in the art would have concluded that
Anderson’s brush has no wiper member, and one skilled in the art would not
have reasonably understood Anderson to have been applicable to any device
with a wiper member.” Reply Br. 2.
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Application 13/397,776
This argument is not persuasive. As the Examiner points out (Ans. 6),
Anderson discloses an applicator used for transferring mascara to eyelashes.
See Anderson 1:3 (invention entitled “MASCARA APPLICATOR”), 1:8—9
(stating the “invention relates to ... an improved mascara applicator”),
3:40—50 (disclosing transferring “any type of mascara . . . from the
applicator to the eyelashes”). As the Examiner correctly states, the mascara
“would have to be stored in some type of container or receptacle.” Ans. 6.
As evidenced by Gueret ’994, mascara applicators are conventionally used
in cooperation with mascara containers provided with wipers. See Gueret
’994 1:7—9 (stating the “invention relates to a brush, in particular to a brush
for applying a cosmetic product to keratin fibers, especially for applying
mascara to the eyelashes”), 6:9-27 (disclosing interaction of the applicator
with mascara reservoir 920 comprising wiping constriction 921, wherein
wiping constriction 921 wipes the bristles as the applicator brush loaded
with mascara passes therethrough). Accordingly, a person having ordinary
skill in the art would have immediately appreciated that Anderson’s mascara
applicator is configured for use with a conventional receptacle containing
mascara to be applied, such as the receptacle of Gueret ’994, which is
provided with a wiper (wiping constriction), and, thus, would have
recognized the teachings of Anderson to be pertinent to the applicator of
Gueret ’994.
Appellant raises a new argument in the Reply Brief to the effect that
modification of the applicator of Gueret ’994 to have an angle as recited in
claim 1 would render the applicator “unfit for its intended purpose.” Reply
Br. 3. In particular, Appellant asserts that the wiping member of Gueret
’994 would lose “its ability to wipe” because “the orientation of the rod
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would necessarily have to have been changed to reduce the angle between
the rod and the bristle carrying portion of the brush, and . . . the brush at
such an angle would not accurately be wiped by a wiper member when being
removed from the receptacle.” Id. This argument is untimely, and
Appellant does not present any evidence or explanation to show good cause
why it should be considered by the Board at this time. See 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”). In any event, Appellant
does not provide any evidence to show that this would be the case. As such,
Appellant’s argument amounts to nothing more than unsupported attorney
argument and, thus, would be entitled to little, if any, weight, even if timely
presented. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant also argues that “Anderson merely discloses a wide range
of between 0 and 60 degrees,” but “specifically teaches that a preferred
embodiment includes a ‘substantial angle, e.g., about 45°.’” Appeal Br. 4—5.
Thus, Appellant submits that “it would not have been obvious to have
selected an angle of 0.2-20°” in the combination of Gueret ’994 and
Anderson. Id. at 5. Appellant adds that “[t]he only preferred embodiment of
Anderson is more than 100% above the highest angle within Appellant’s
claimed range, and there would have been no reason for one skilled in the art
to have selected a significantly smaller portion of Anderson’s disclosure
with any reasonable expectation of success.” Reply Br. 3^4.
Appellant’s argument is not persuasive. Anderson enumerates “a
substantial angle, e.g., about 45°,” thereby indicating that this particular
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Application 13/397,776
angle is exemplary, or illustrative. Anderson 4:1. Anderson does not
explicitly characterize the angle of “about 45°” as “preferred.” Moreover, a
reference is not limited to its preferred embodiment, but must be evaluated
for all of its teachings, including its teachings of non-preferred
embodiments. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Anderson
discloses angling the handle portion with respect to the base ‘to provide
convenience of handling and possible clearance away from eyebrow 22.”
Anderson 3:42-44. In order to provide such clearance, Anderson teaches
forming the handle portion “at a substantial angle [from the base], e.g., about
45°, although this angle may be varied as desired, e.g., from 0 to 60°.” Id.
3:71—4:2. The effect of this angle on the amount of clearance provided away
from the eyebrow is a simple and predictable matter of geometry, and
Anderson gives no indication that a smaller angle within the enumerated
range, such as 20°, for example, which falls within Appellant’s claimed
range, would be ineffective in providing convenience of handling and
possible clearance away from the eyebrow when used in a conventional
manner in applying mascara to eyelashes. In fact, the disclosure of the wider
range of “0 to 60°” suggests that angles much smaller than 45° would be
sufficient.
Appellant argues that one skilled in the art would not have looked to
Anderson to modify Gueret ’994 “because of the structural differences
between the applicators described in Gueret [’994] and Anderson.” Appeal
Br. 7. In particular, Appellant contends that “[throughout Anderson, prior
art devices for the application of mascara that included brushes with spirally
wound or multiple tufts of random strips of bristles, wands, or cylindrical
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wands with threaded extremities and the like are specifically disparaged.”
Id. (citing Anderson 1:19-33).
This line of argument is not persuasive because it does not address the
rejection articulated by the Examiner. As the Examiner emphasizes, the
rejection does not propose modifying the core of Anderson’s mascara
applicator, but, rather, proposes applying Anderson’s teaching of the angle
between the handle and the brush to Gueret ’994, which the Examiner finds
already comprises a twisted-wire core. Ans. 2, 8. Thus, the teachings of
Anderson cited by Appellant do not disparage, or teach away from, the
modification of Gueret ’994 proposed by the Examiner. Moreover, we do
not agree with Appellant that Anderson disparages the use of twisted-core
bristled brushes. See Appeal Br. 6. Rather, we understand the passage of
Anderson cited by Appellant to be saying that the spirally wound or multiple
tufts or random strips of bristles of the prior art “continue to produce only
minor variations on the same old applicator concepts.” Anderson 1:19—24.
In other words, Anderson characterizes these prior art devices as not making
sufficient progress in solving the problem of separating the lash hairs upon
application of the mascara. Id. 1:28—33.
Additionally, Appellant submits that “Appellant has presented
evidence of benefits and unexpected results . . . with respect to the angle
formed between the first and second longitudinal axes”—namely, “improved
retention of substance on bristles.” Appeal Br. 5. Appellant states that these
benefits “are described and discussed throughout the [Specification, but
were further presented in the February 2, 2009 Declaration (presented during
prosecution of parent Application No. 10/721,442 (now U.S. Patent No.
8,210,186) filed November 25, 2003).” Id. at 5—6. According to Appellant,
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“[t]he Declaration is of record in the present application as a result of its
incorporation by reference and its identification in previous Office Action
responses.”2 Id. at 6.
Contrary to Appellant’s contention that the benefit of improved
retention of the substance on bristles afforded by the claimed angle range is
described “throughout the [Specification,” we do not find any discussion of
retention of the substance in the Specification of the present application.
With regard to the significance of the angle, the Specification discloses that
“[gjiven the small value of angle a, which according to some embodiments
is less than about 10°, the user can use the applicator 3 without first having
to identify the orientation of the core 10 about the axis X prior to applying
the substance and combing the eyelashes.” Spec., para. 58. The
Specification also discloses that “[t]he inclination a of the core enables the
edges of the brush to change direction progressively as it turns about the axis
X of the rod, thereby improving the combing and curling of the eyelashes,
enabling the bristles of the brush to penetrate more effectively between the
eyelashes.” /<2.,para. 59.
For essentially the reasons set forth by the Examiner on pages 7—8 of
the Answer, the Gueret Declaration provides weak evidence, if any, of
unexpected results achieved by the claimed invention, and, thus, is entitled
to little weight. The tests conducted by Declarant consist of preparing three
2 The Declaration (hereinafter “the Gueret Declaration” or “Gueret Deck”) is
appended to the Appeal Brief. See id. at B-4 (Appendix B — EVIDENCE
APPENDIX). Appellant cited the Gueret Declaration on page 8 of the
remarks submitted with the Amendment filed July 16, 2013, in response to
the Final Action dated April 16, 2013. The Examiner considered the Gueret
Declaration in the subsequent Non-Final Action. Non-Final Act. 5—6.
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applicators (Applicator 1 having an angle of 0° between the bristle-carrying
portion and the rod, Applicator 2 having an angle of 8° between the bristle­
carrying portion and the rod, and Applicator 3 having an angle of 30°
between the bristle-carrying portion and the rod), inserting each applicator
into a corresponding one of three identical substance containers containing
identical substance and provided with identical wipers, and removing each
applicator from its substance container, effecting wiping of the bristle­
carrying portion. Gueret Decl., paras. 7—9. The weight of the substance
retained on the bristles of each applicator was then measured. Id., para. 9.
The test results reported in the Declaration show that Applicator 2 (the one
with the 8° angle) retained the highest weight of substance, Applicator 1 (the
one with the 0° angle) retained the second highest weight of substance, and
Applicator 3 (the one with the 30° angle) retained the smallest weight of
substance. Id., para. 13, Exh. 1 (Comparative Tests table). However, there
is an inconsistency (by a factor of ten) between the results reported in
paragraph 13, which states that the bristle-carrying portions of Applicator 2
retained “at least 0.7 grams more substance than . . . those [of Applicator 3]
and, remarkably, 0.3 grams more substance than those [of Applicator 1],”
and the Comparative Tests table of Exhibit 1, which shows Applicator 1
(Example A) retaining “0,40” g, Applicator 2 (Example B) retaining “0,43”
g, and Applicator 3 (Example C) retaining “0,36” g.
Declarant avers “that one of ordinary skill in the art would expect a
brush with an angle associated with the bristle-carrying section to result in
lower substance retention based at least on the wiping action that takes place
upon moving the bristle-carrying portion through the wiper of the container”
and that “one of ordinary skill in the art would expect a bristle-carrying
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portion with an angle of 0 degrees to result in maximum retention of
material on the bristles following wiping based on the perceived reduced
interference from the wiper upon removal from the container” {id., para. 12).
Thus, Declarant states that the finding that Applicator 2 retained more
substance than Applicator 3 and, remarkably, more substance than
Applicator 1 “was unexpected.”3 Id., para. 13.
The Examiner correctly finds that Appellant “did not show ‘a
sufficient number of tests’” to demonstrate unexpected results. Ans. 7. As
the Examiner points out, “[Appellant] only conducted 3 tests.” Id. at 8.
Declarant does not report results for any other tests in addition to those
performed using Applicators 1—3 (Examples A-C). We cannot discern from
the test results for only one applicator having a 0° angle, one applicator
having an 8° angle, and one applicator having a 30° angle whether the
reported test results are reproducible and reliable. Further, the Gueret
Declaration does not provide any details as to how the applicators were
inserted into and removed from substance containers, and how closely these
steps were controlled for consistency. Thus, it cannot be discerned whether
the reported differences in amounts of the substance retained for the
different applicators result from the differences in the angles of the
applicators or from differences in the manner in which the applicators were
inserted into and/or removed from the containers. For example, even a small
difference in the angle at which the applicator is removed, and, hence, the
angle at which the bristle-carrying portion makes contact with the wiper
3 To the extent that the test results show that the 30° angle results in lower
substance retention than the 8° angle, such a result would have been
expected, according to paragraph 12 of the Gueret Declaration.
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could have a greater influence on the amount of the substance retained on
the bristles than the angle of the bristle-carrying portion to the rod.
Likewise, any differences in the degree to which an applicator was rotated
during removal could influence the amount of substance retained on the
bristles. Other variables, such as the consistency and density of the
substance, relative humidity, etc., could also influence the results, and the
Gueret Declaration gives no indication that all of these variables have been
accounted for in the testing. Thus, the tests reported in the Gueret
Declaration are insufficient to exclude the possibility that the differences in
substance retention actually result from something other than the claimed
range.
Moreover, there was only one test performed on an applicator having
an angle falling within the claimed range. The single test result showing
higher substance retention on an applicator having an 8° angle as compared
with each of two applicators having angles (one having a 0° angle and one
having a 30° angle) outside the claimed range is insufficient to show that
applicators will exhibit similarly high substance retention over the remainder
of the angle range claimed. Merely by way of example, we cannot discern
from the reported test results whether an applicator having a 5° angle, or a
10° angle, or a 20° angle, all of which fall within the claimed range, would
exhibit substance retention more like Applicator 2 or more like Applicators 1
and 3. Consequently, the test results reported in the Gueret Declaration are
insufficient to establish that the claimed angle range is critical.
The Gueret Declaration states that the test result “has practical
significance because the ability to retain greater amounts of a substance on
the bristles, following wiping, enables greater amounts of a substance to be
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applied to keratinous fibers, and has long been a desire in the art.” Gueret
Decl., para. 6. However, the Declaration proffers no objective evidence to
substantiate these statements. Appellant provides no objective evidence
showing quantitatively what is considered in the art to be an acceptable, or
desirable, amount of substance on the bristles after wiping. Thus, the
statement that the test result “has practical significance” is merely
conclusory.
Having considered and weighed all of the evidence before us,
including the evidence presented by Appellant, we are not apprised of error
in the Examiner’s conclusion that the subject matter of claim 1 would have
been obvious. Accordingly, we sustain the rejection of claims 1, 4—13, 17,
and 20 under 35 U.S.C. § 103(a) as unpatentable over Gueret ’994 and
Anderson.
Rejections II—IV
In contesting the rejections of claims 14, 15, 16, 18, and 19, Appellant
presents no separate arguments for the patentability of these claims, aside
from “their dependencies from claim 1.” Appeal Br. 8—9. Accordingly, we
sustain the rejections of claims 14, 15, 16, 18, and 19 under 35 U.S.C.
§ 103(a).
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DECISION
The Examiner’s decision rejecting claims 1 and 4—20 is AFFIRMED.
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)(l)(iv).
AFFIRMED
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