Ex Parte Gueret

Patent Trial and Appeal Board

Nov 15, 2017

12936759 (P.T.A.B. Nov. 15, 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.
12/936,759 10/07/2010 Jean-Louis Gueret 365296US41PCT 6639
22850 7590 11/17/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.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 2015-004792
Application 12/936,759
Technology Center 3700
Before NEIL T. POWELL, JASON W. MELVIN, and
SEAN P. O’HANLON, Administrative Patent Judges.
POWELL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean-Louis Gueret (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s Final Rejection of claims 1—13, 16—18, and 20—25.
Appellant’s representative presented oral argument on July 13, 2017. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-004792
Application 12/936,759
THE INVENTION
Appellant’s invention relates to a packaging and applicator device.
Claim 1, reproduced below, is illustrative:
1. A packaging and applicator device, comprising:
a container containing a composition for application to
human keratinous materials and;
an applicator including an applicator element, carried by a
rectilinear stem even when the applicator is in place on the
container, the applicator element having a length and defining an
envelope surface of cross-section that varies, passing through at
least one maximum, the applicator element being a twisted-core
brush or an injection-molded brush,
wherein the container defines an internal space containing
the composition, the internal space having a height at least twice
the length of the applicator element,
wherein a maximum cross-section of the envelope surface
of the applicator element occupies at least 70% of an inside
section of the internal space of the container containing the
composition,
wherein at least along a portion of a path over which the
applicator element travels when removed from the container, a
height of the portion is at least equal to twice the length of the
applicator element,
wherein a length of a region of the applicator element
extending at a distance from a side wall of the container that is
less than or equal to 0.075 times a greatest inside diameter of the
side wall is less than or equal to half the length of the applicator
element, and
wherein the composition is able to flow relative to the
applicator element in both directions between a zone located
below the applicator element and a zone located above the
applicator element, and vice versa.
2
Appeal 2015-004792
Application 12/936,759
THE REJECTIONS
The Examiner rejects:
(i) claim 18 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description requirement;
(ii) claims 1 and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Lane (GB 2432513 A, published May 30, 2007; hereinafter “Lane”),
Gueret (US 5,370,141, issued Dec. 6, 1994; hereinafter “Gueret ’141”), and
Keurinck (US 2008/0202546 Al, published Aug. 28, 2008; hereinafter
“Keurinck”);
(iii) claims 1—3, 7—11, 13, 16, and 20-25 under 35 U.S.C. § 103(a) as
being unpatentable over Lane and Gueret (US 2002/0144702 Al, published
Oct. 10, 2002; hereinafter “Gueret ’702”);
(iv) claims 4—6 and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Lane, Gueret ’702, and Kingsford (US 3,998,235, issued Dec. 21, 1976;
hereinafter “Kingsford”);
(v) claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Lane, Gueret ’702, and Clay (US 6,145,514, issued Nov. 14, 2000;
hereinafter “Clay”); and
(vi) claim 18 under 35 U.S.C. § 103(a) as being unpatentable over
Lane, Gueret ’702, and Bogan (US 2,659,920, issued Nov. 24, 1953;
hereinafter “Bogan”).1
1 The Examiner’s Answer withdraws a rejection of claim 25 under 35 U.S.C.
§ 112, second paragraph. Ans. 18.
3
Appeal 2015-004792
Application 12/936,759
ANALYSIS
§112 Rejection—Claim 18
The Examiner asserts that claim 18 does not comply with the written
description requirement of 35 U.S.C. § 112. Final Act. 2—3. The Examiner
notes that claim 18 requires a container with a bulbous bottom, and that
Figures 38 and 40 show such a container. Id. The Examiner further notes
that claim 18 depends from claim 1, which requires “a length of a region of
the applicator element extending a distance from a side wall of the container
that is less than or equal to 0.075 times a greatest inside diameter of the side
wall is less than or equal to half the length of the applicator element.” Id. at
2. This relationship is not shown in Figures 38 and 40, the Examiner notes.
Id. at 2—3. Accordingly, the Examiner asserts that claim 18 contains
“subject matter which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventor or a
joint inventor, or for pre-AIA the inventor(s), at the time the application was
filed, had possession of the claimed invention.” Id. at 2.
In response, Appellant asserts that claims 18 and 19, as originally
filed, contained written description support for the subject matter of claim 18
in its current form. App. Br. 26. Appellant notes that claim 18, as originally
filed, recited:
A device according to any one of claims 1 to 17, the
container comprising a bulbous bottom portion and a side wall
above the bulbous portion, the side wall being of smaller inside
section, the bristles of the applicator element not being
constrained by the bulbous portion.
Id.
Appellant also notes that claim 19, as originally filed, recited:
4
Appeal 2015-004792
Application 12/936,759
A device according to any one of claims 1 to 18, the length
of the region of the applicator element extending at a distance
from a side wall of the container that is less than or equal to 0.075
times the greatest inside diameter of the side wall, being less than
or equal to half the length of the applicator element.
Id. The Examiner’s Answer maintains that claim 18 does not comply with
the written description requirement, but the Examiner does not respond to
Appellant’s contentions. See Ans. 2—3, 18—25.
We are persuaded by Appellant that claims 18 and 19, as originally
filed, provide written description support for claim 18 in its current form.
Accordingly, we are apprised of error in the Examiner’s rejection of
claim 18 under § 112.
Obviousness over Lane, Gueret ’141, and Keurinck—Claims 1 and 12
The Examiner asserts that Lane teaches most of the limitations of
claims 1 and 12. Final Act. 4—5. The Examiner notes that Lane does not
teach the claims’ recited relationship between the applicator element and the
side wall of the container. Id. For example, the Examiner notes that Lane
does not teach claim 1 ’s limitation that “a length of a region of the applicator
element extending at a distance from a side wall of the container that is less
than or equal to 0.075 times a greatest inside diameter of the side wall is less
than or equal to half the length of the applicator element.” Id.
The Examiner asserts that it would have been obvious to modify Lane
in a manner that would result in it meeting this claim limitation. Id. at 5—6.
The Examiner notes that Lane’s applicator element has a frustoconical
shape. Id. at 19. Observing that Gueret ’141 and Keurinck teach other
shapes, including spherical {id. at 5—6), the Examiner asserts that Gueret
’141 teaches that these other shapes constitute functional equivalents to the
frustoconical applicator element. Id. at 5. The Examiner notes that “Gueret
5
Appeal 2015-004792
Application 12/936,759
[’141] teaches a mascara applicator may have an applicator element having
various shapes such as cylindroconical (Figure 3g), frustoconical (Figure
3h), cylindroconical (Figure 3i) and spherical or prolate (Figure 3j).” Id.
Given this, the Examiner asserts that it would have been obvious to modify
Lane to use a spherical applicator element, in lieu of the functionally
equivalent frustoconical applicator element it discloses. Id. at 5—6. The
Examiner asserts that this obvious modification of Lane would have resulted
in Lane meeting the limitations of claims 1 and 12 regarding the relationship
between the applicator element and the side wall of the container. Id. at 6.
Appellant argues that in order to support an obviousness contention
based on equivalency, “the equivalency must be recognized in the prior art,
and cannot be based on applicant’s disclosure or the mere fact that the
components at issue are functional or mechanical equivalents.” App. Br. 12
(citing In re Ruff, 256 F.2d 590 (CCPA 1958)). Appellant argues that the
Examiner provides only a conclusory assertion of equivalence. Id.
Appellant contends that the Examiner cannot support the assertion of
equivalence because Gueret ’141 “does not disclose any container
corresponding to any of the various brush shapes and therefore cannot teach
or suggest removing the applicator element from the container and wiping,
as discussed in Lane.” Id.
In response, the Examiner notes that Gueret ’141 discloses that its
brush may have any number of a number shapes, which are shown in
Figures 3g through 3j. Ans. 19 (citing Gueret ’141, 4:18—20). The
Examiner notes that Gueret ’141 shows such shapes in Figures 3g through
3j. Ans. 19. The Examiner therefore maintains that Gueret ’141 recognizes
6
Appeal 2015-004792
Application 12/936,759
these brush shapes as functional equivalents for the purpose of grooming and
applying mascara to the eyelashes. Id.
Appellant counters that “the issue is not whether the secondary art
recognizes equivalent ways of achieving the function of the secondary art
itself, but rather, whether the secondary art recognizes equivalent ways of
achieving the function of the primary art.” Reply Br. 4. Appellant contends
that the Examiner has not addressed equivalency between Lane and Gueret
’141. Id. at 3.
Appellant does not apprise us of error in the Examiner’s finding of
art-recognized equivalence between Lane’s brush shape and the brush
shapes shown in Gueret ’141 and Keurinck. Contrary to Appellant’s
suggestion, we do not believe the Examiner’s assertions of equivalence are
based on Appellant’s disclosure or the mere fact of functional or mechanical
equivalence. See App. Br. 12. Instead, the portions of Gueret ’141 cited by
the Examiner support a finding that it was recognized in the art that
frustoconical brushes like those shown in Lane’s Figures 5—7 and Gueret
’ 141 ’s Figure 3h were equivalent to each of the other brush shapes taught by
Gueret ’141 and Keurinck for the purpose that those brushes serve—
grooming and applying mascara to the eyelashes. See Gueret ’141,4:18—20,
Figs. 3g—3j.
We find unpersuasive Appellant’s argument that the Examiner does
not demonstrate functional equivalence of Gueret ’ 141 ’s brushes to Lane’s
for purposes of “removing the applicator element from the container and
wiping, as discussed in Lane.” See App. Br. 12. Appellant provides no
reasoning and cites no evidence persuading us that a person of ordinary skill
in the art would have thought Lane’s frustoconical brush shape affects
7
Appeal 2015-004792
Application 12/936,759
removal or wiping. Aside from offering a conclusory assertion that Lane
discusses removal and wiping, Appellant does not cite any portion of Lane
or any other evidence indicating that Lane’s brush shape affects removal or
wiping.
Obviousness over Lane and Gueret ’702—Claims 1—3, 7—11, 13, and 22
The Examiner asserts that Lane teaches most of the limitations of
claims 1—3, 7—11, 13, and 22. Final Act. 7—12. The Examiner notes,
however, that Lane teaches an applicator element with a shape that does not
meet claim 1 ’s limitation that “a length of a region of the applicator element
extending at a distance from a side wall of the container that is less than or
equal to 0.075 times a greatest inside diameter of the side wall is less than or
equal to half the length of the applicator element.” Id. at 8. Noting that
Gueret ’702 teaches that an applicator element may have a number of
different shapes and constructions, the Examiner asserts that Gueret ’702
teaches the applicator element shown in its Figure 4E is a known
functionally equivalent applicator configuration. Id. at 8—9. The Examiner
concludes that it would have been obvious to modify Lane to use an
applicator element shaped like the one shown in Figure 4E of Gueret ’702.
Id. at 9.
The Examiner notes that the applicator element shown in Figure 4E of
Gueret ’702 “provides distal and proximal ends which taper drastically
inwardly and the maximum diameter portion provided in the center.” Id. at
8—9. The Examiner asserts that modifying Lane’s applicator element to have
this shape would result in Lane meeting the claimed relationship between the
applicator element and the side walls of the container. Id.
8
Appeal 2015-004792
Application 12/936,759
Appellant contends that there would be no motivation to combine the
teachings of Lane and Gueret ’702, arguing that Lane has a “distinctive
manner of operation ... as compared to the device of Gueret [’]702.” App.
Br. 16. In particular, Appellant asserts that “Lane discloses a long, stiff shaft
with short bristles, configured for inserting and removing through one or
more narrow openings along a rectilinear axis. By contrast, Gueret [’]702
discloses an applicator member formed as a deformable flocked spring,
configured to bend to follow the contours of the curved container of Gueret
[’]702.” Id.
Appellant also argues that “replacing the rigid, narrow brush 22 of
Lane with the flexible applicator element of Gueret [’]702 would render
Lane unfit to achieve the removal and wiping purposes of that reference. In
particular, the modified applicator element would deform elastically, rather
than penetrating into the mascara.” Reply Br. 6.
Appellant does not apprise us of error in the Examiner’s rejection.
Appellant’s arguments relate to differences between the references’
teachings regarding the construction of the container and the applicator stem
that carries the brush. See App. Br. 14—16. These arguments are not
responsive to the Examiner’s assertion of obviousness, which relies on
Gueret ’702 only for its brush shape, not its teachings regarding the shape of
the container or the construction of the stem of the applicator. Ans. 20—21.
Appellant does not provide reasoning or evidence that persuades us that the
references’ different constructions of the container and the stem would
detract from the obviousness of using Gueret ’702’s brush shape in Lane’s
system. Indeed, Appellant does not provide reasoning or evidence
persuading us of any connection between the construction of Gueret ’702’s
9
Appeal 2015-004792
Application 12/936,759
brush shape and the construction of its container and applicator stem.
Furthermore, Appellant’s argument that the proposed modification would
cause the applicator to flex and fail to penetrate the mascara rests on
unpersuasive attorney argument, not evidence. See Reply Br. 6.
Obviousness over Lane and Gueret ’702—Claim 25
The Examiner asserts that Lane teaches most of the limitations of
claim 25, except for the claimed shape of applicator element. Final Act. IS­
IS. Regarding the shape of the applicator element, the Examiner asserts that
Gueret ’702 teaches an applicator element “having a conical distal portion
that converges towards the distal end and is joined to a portion of a sphere
(i.e. prolate sphere formed by combining central and proximal portions of
applicator element) that is at least hemispherical.” Id. at 15. The Examiner
asserts that it would have been obvious to modify Lane with the shape of
applicator element disclosed in Gueret ’702. Id.
Appellant disputes the Examiner’s assertion that Gueret ’702 discloses
an applicator element with a conical distal portion joined to a portion of a
sphere. App. Br. 18. Specifically, Appellant asserts that, contrary to the
Examiner’s contention, a prolate sphere (as allegedly taught by Gueret ’702)
does not constitute a “sphere,” as recited in claim 25. Id. Appellant argues
that “[a] prolate spheroid is a shape achieved by stretching a sphere along an
axis of revolution.” Id. Given this, Appellant argues that if Gueret ’702’s
“applicator member 20 has the shape of a prolate spheroid, then no portion
of the applicator member 20 would be at least hemispherical as claimed in
Claim 25. Rather than having the shape of a sphere, the prolate spheroid
portion would have the shape of a stretched sphere.” Id.
The Examiner responds that “the claim does not require the spherical
10
Appeal 2015-004792
Application 12/936,759
portion that is at least hemispherical have a constant diameter.” Ans. 22.
The Examiner elaborates that “Merriam-Webster dictionary defines a sphere
as ‘a round object, a three-dimensional shape that looks like a ball’ and a
hemisphere as ‘half of a sphere, half of a round object.’” Id. Noting that
these definitions do not specify a constant diameter, the Examiner asserts
that a prolate sphere is a type of sphere, and that Gueret ’702 teaches “a
portion of a prolate sphere that is at least hemispherical.” Id. Appellant
responds that “the plain and ordinary meaning of ‘sphere’” does not include
the shape asserted by the Examiner. Reply Br. 7.
Appellant apprises us of error in the Examiner’s rejection of claim 25.
“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. ofSci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the Specification as it would be interpreted by one of ordinary skill
in the art.).
In asserting that the claim terms “portion of a sphere” and
“hemispherical” do not require a constant diameter (i.e., constant radius), the
Examiner cites no portion of the Specification. See Ans. 22. In the
Specification, we find a disclosure that “Figures 8D and 8E show applicator
elements of elongate shape having a conical distal portion that converges
towards the distal end of the applicator element and that is joined to a
portion of sphere. The portion of sphere may be hemispherical at least.”
11
Appeal 2015-004792
Application 12/936,759
Spec. 27:27—32. Looking to Figures 8D and 8E, it appears that the
referenced “portion of sphere” shown in each drawing is not prolated, but
has a constant radius. Although this does not dictate that the claims require
a portion of sphere with a constant radius of curvature, the Examiner does
not explain how the Specification’s disclosure of a constant radius is
consistent with the reliance on extrinsic evidence to interpret the claims as
including shapes that do not have a constant radius. See Ans. 22. Absent
such an explanation, we are not persuaded that the Examiner is correct in
interpreting the claim language as encompassing the shape disclosed by
Gueret ’702.
Obviousness over Lane and Gueret ’702—Claim 21
The Examiner asserts that the mascara disclosed by Lane meets the
limitation of claim 21 that “the composition is a liquid.” Final Act. 12. The
Examiner cites Lane’s disclosure at page 1, lines 3—13 that:
Mascara is a viscous substance which is conventionally applied
to the lashes using a specially shaped brush with a relatively long
shaft and relatively short bristles. The mascara is usually
contained in a tube and, when not in use, the brush is housed in
the tube with the bristles in contact with the mascara. Moving the
brush around in the tube coats the brush with mascara so that
when the brush is withdrawn from the tube, it is loaded with
mascara which can then be applied to the lashes.
Final Act. 12.
Appellant argues that the Examiner errs in determining that this
disclosure teaches a composition that is a liquid. App. Br. 18—21. Appellant
asserts that materials other than liquids can be viscous. Id. at 19. Thus,
Appellant argues, Lane’s disclosure of mascara as a “viscous” substance
does not necessarily make it a liquid. Id. Appellant further argues that
certain of Lane’s other disclosures regarding its mascara indicate the
12
Appeal 2015-004792
Application 12/936,759
mascara is not a liquid. Id. at 20-21. For example, Appellant argues that
Lane’s disclosure that the mascara can stick to container walls suggests that
it is not a liquid. Id. at 20.
The Examiner responds that “[mjatter exists in three phases, which
are solid, liquid, and gas (including plasma or ionized gases).” Ans. 23. The
Examiner then contends that Lane’s mascara is neither a solid nor a gas, so it
must be a liquid. Id. at 23—24. Noting that Lane discloses an o-ring to
prevent leaking, the Examiner asserts that Lane’s mascara must not be a
solid because solids do not leak. Id. at 23. The Examiner contends that
Lane’s disclosure that the mascara coats the brush indicates the mascara is
not a gas. Id. Noting that “Appellant attempts to classify different viscous
substances such as ‘slurries’, ‘semisolids’ such as peanut butter, etc.,” the
Examiner contends that “these are simply liquids with different degrees of
viscosity.” Id. at 24. The Examiner also asserts that it is common
knowledge of a person of ordinary skill in the art that mascara is either
liquid or solid, and that mascara in a tube like Lane’s is liquid. Id.
Appellant responds that a composition does not necessarily exist
completely or uniformly in one of the three discrete matter states of solid,
liquid, or gas. Reply Br. 7—8. Instead, Appellant contends, “cosmetic
preparations are known to be made as suspensions of a solid in a liquid.” Id.
at 7. By contrast, Appellant emphasizes, claim 21 recites “the composition
is a liquid” (emphasis added), not that the composition includes liquid mixed
with solid. Id. at 8. Appellant argues that, contrary to the Examiner’s
suggestions, Lane’s disclosures related to leakage and coating of the mascara
apply to powdered or semisolid mascara, just as they would to liquid
mascara. Id.
13
Appeal 2015-004792
Application 12/936,759
We are apprised of error in the Examiner’s basis for asserting that
Lane teaches the claim 21 limitation that “the composition is liquid.” As
noted above, the broadest reasonable interpretation of the claims must be
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. Given this, the Examiner does not provide adequate
reasoning or evidence to persuade us that a person of ordinary skill in the art,
having read the Specification, would interpret the claim language “the
composition is a liquid” to simply refer to everything other than a pure solid
or a pure gas. In asserting that the claim refers to everything other than a
pure solid or a pure gas because matter is either a liquid, solid, or gas, the
Examiner does not attempt to explain how that interpretation is consistent
with the disclosure of the Specification, which states that “[t]he composition
may have any consistency, e.g. it may be a gel, or it may have a consistency
that is creamy to pasty. The composition may contain waxes, pigments,
magnetic particles, amongst other ingredients. The composition may be a
liquid.” Spec., 8:33—37. Although this disclosure does not preclude the
Examiner’s interpretation of the claim, it does not necessarily support the
Examiner’s interpretation. In sum, the Examiner’s contentions rest on a
claim construction that is not adequately supported. The broadest
reasonable interpretation of the claim is limited to purely liquid
compositions.
Obviousness over Lane and Gueret ’702—Claims 16, 23, and 24
The Examiner asserts that Lane teaches most of the limitations of
claims 16, 23, and 24. Final Act. 7—10, 12—13. The Examiner notes that
Lane’s applicator element does not meet the limitation of claim 16 that “the
envelope surface of the applicator element passes through a maximum
14
Appeal 2015-004792
Application 12/936,759
remote from proximal and distal ends of the applicator element” or the
similar limitation of claim 23. Id. at 8. Noting that Gueret ’702 teaches that
an applicator element may have a number of different shapes and
constructions, the Examiner asserts that Gueret ’702 teaches the applicator
element shown in its Figure 4E is a known functional equivalent. Id. at 8—9.
The Examiner notes that the applicator element shown in Figure 4E of
Gueret ’702 “provides distal and proximal ends which taper drastically
inwardly and the maximum diameter portion provided in the center.” Id.
The Examiner concludes that it would have been obvious to modify Lane to
use an applicator element of the shape shown in Figure 4E of Gueret ’702,
and that this applicator element would meet the limitations of claims 16 and
23. Id.
Regarding claim 24, the Examiner notes that Lane’s applicator
element is a molded applicator, not a twisted-core brush, as claimed. Id. at
13. The Examiner asserts that Gueret ’702 teaches various functionally
equivalent constructions for applicator elements, including “a twisted wire
core brush (Refer to paragraph 0044), a molded brush, or a brush made by
cutting or pressing materials such as plastic, wood, or metal (Refer to
paragraph 0048).” Id.', Ans. 24—25 (citing Lane, 2:4—5; Gueret ’702,
110044, 0046, 0076-0077, 0081-0082, Figs. 4A, 4D, 4E). The Examiner
elaborates that molded and twisted-core brushes were recognized as
functional equivalents for applying mascara to eyelashes. Ans. 24—25. The
Examiner concludes that “because [molded and twisted-core] configurations
were art-recognized equivalents,” it would have been obvious to modify
Lane’s applicator element to include a twisted-core brush. Final Act. 13;
Ans. 12.
15
Appeal 2015-004792
Application 12/936,759
Appellant asserts that an obviousness conclusion cannot rest on a
proposed modification that would render a prior art invention unsuitable for
its intended purpose. App. Br. 22, 24. Appellant asserts that Lane and
Gueret ’702 operate differently. Id. at 21—24. Specifically, Appellant argues
that Lane’s applicator follows a linear path while possibly rotating about its
axis, whereas Gueret ’702’s applicator flexes along a curved path and rubs
the sides of the container. Id.
To the extent Appellant suggests the Examiner’s proposed
modification of Lane’s brush would change Lane’s principle of operation or
render Lane unsuitable for its intended purpose, this does not apprise us of
error. Appellant summarizes Lane by noting that “the interaction of the
brush 22 with the mascara is linear along an axis and may include rotation
along the axis, about the axis.” Id. at 24. Assuming, arguendo, that this is
Lane’s principle of operation, modifying Lane’s brush to have Gueret ’702’s
shape and twisted-core would not change Lane’s principle of operation.
Similarly, to the extent Appellant is correct to suggest that Lane’s intended
purpose is linear movement of its applicator to load mascara on the
applicator, the proposed changes to the applicator element would not appear
to defeat this intended purpose. In sum, we do not have reason to believe
that changing Lane’s brush to a twisted-core construction with the shape
disclosed by Gueret ’702 would change Lane’s principle of operation or
render it unsuitable for its intended purpose.
Appellant also discusses the Examiner’s contention that Gueret ’702
demonstrates recognized equivalence between the brush construction
disclosed by Lane and a twisted-core brush. App. Br. 22—23; Final Act. 13.
Regarding the different brush configurations, Appellant asserts that:
16
Appeal 2015-004792
Application 12/936,759
Common sense suggests that these configurations would not be
perfectly equivalent for ah functions. Rather, one likely would
have advantages in certain areas, while another likely would have
advantages in other areas. That is, the breadth of functions for
which they would be reasonable equivalents should be limited to
the teachings of the reference relied upon, Gueret ’702, aided by
a measure of common sense.
App. Br. 23 (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
These assertions do not apprise us of error in the Examiner’s rejection.
Giving full consideration to Appellant’s observations regarding Lane and
Gueret ’702, we do not have reason to believe that Lane, Gueret ’702, or
common sense contradicts the Examiner’s determination that molded and
twisted-core brush constructions were recognized as functional equivalents.
Lor example, Appellant’s emphasis of the references teaching linear versus
curved applicator movement does not provide reason to doubt that the
twisted-core brush of Gueret ’702 would have been recognized as
functionally equivalent to Lane’s brush for applying mascara to eyelashes,
regardless of the path of movement in the container. See, e.g., Ans. 24—25
(citing Lane, 2:4—5; Gueret ’702, H 0044, 0046, 0076-0077, 0081-0082,
Tigs. 4A, 4D, 4E). Appellant does not dispute that Gueret ’702 indicates
recognized equivalence of molded and twisted-core brush constructions for
its apparatus. And we do not have reason to believe that the linear nature of
Lane’s container would affect the recognized equivalence between the
molded and twisted-core brush constructions. Appellant speculates about
“likely” advantages and disadvantages, but does not provide reasoning or
evidence persuading us of a specific reason that Lane’s linear configuration
would cause a difference between the performance of the brush
configurations.
17
Appeal 2015-004792
Application 12/936,759
Other Rejections
With respect to the other obviousness rejections of claims 4—6, 12, 17,
and 18, Appellant “does not separately argue . . . patentability,” but rests on
the argument that these claims are patentable due to their dependence from
claim 1. App. Br. 25. Consequently, because Appellant does not apprise us
of error in the Examiner’s rejection of claim 1, Appellant does not apprise us
of error in the rejections of claims 4—6, 12, 17, and 18.
DECISION
We reverse the Examiner’s decision rejecting claim 18 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement;
We affirm the Examiner’s decision rejecting claims 1 and 12 as
obvious over Lane, Gueret ’141, and Keurinck.
We affirm the Examiner’s decision rejecting claims 1—3, 7—11, 13, 16,
20, and 22—24 as obvious over Lane and Gueret ’702.
We reverse the Examiner’s decision rejecting claims 21 and 25 as
obvious over Lane and Gueret ’702.
We affirm the Examiner’s decision rejecting claims 4—6 and 12 as
obvious over Lane, Gueret ’702, and Kingsford.
We affirm the Examiner’s decision rejecting claim 17 as obvious over
Lane, Gueret ’702, and Clay.
We affirm the Examiner’s decision rejecting claim 18 as obvious over
Lane, Gueret ’702, and Bogan.
18
Appeal 2015-004792
Application 12/936,759
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
19