Ex Parte Gueret

Board of Patent Appeals and Interferences

Feb 23, 2009

10084975 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEAN-LOUIS H. GUERET
__________

Appeal 2008-50361
Application 10/084,975
Technology Center 3732
__________

Decided:2 February 23, 2009
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

1 Oral Hearing February 12, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5036
Application 10/084,975

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
The following claims are representative.
1. A device for applying a product to keratinous fibers, the device
comprising:

a stem having two opposite ends; and

a brush portion connected to one end portion of the stem, the
one end portion of the stem having a longitudinal axis and the brush portion
having a free end that is not aligned with the longitudinal axis of the one end
portion of the stem,

wherein the brush portion comprises a core having a core free
end, at least part of the core being curved such that a line tangent to the core
at any axial position along the core is not perpendicular to the longitudinal
axis of the one end portion of the stem and a longitudinal axis of the core
free end is not parallel to the longitudinal axis of the one end portion, and

wherein the brush portion further comprises bristles connected
to the core, the bristles comprising ends defining an envelope surface having
a varying cross-section along at least a part of its length, the envelope
surface being asymmetrical about a midplane of the envelope surface, the
midplane being oriented perpendicular to the core.

14. The device of claim 3, wherein the nonrectilinear edge portion.
is defined by an intersection of a frustoconical-shaped zone of the blank and
a frustoconical-shaped body portion of the blank, the frustoconical-shaped
zone being proximate a free end of the blank and converging toward the free
end of the blank, and the frustoconical-shaped body portion extending from
the intersection and converging toward an end of the blank opposite the free
end of the blank.

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43. A method of making an applicator for applying a product to
keratinous fibers, the method comprising:

providing a blank comprising a blank core and bristles
connected to the blank core, the bristles comprising ends defining a blank
envelope surface having a varying cross-section over at least a part of its
length and being asymmetrical about a midplane of the blank envelope
surface, the midplane being perpendicular to the blank core; and

curving at least a part of the blank core so as to form a brush
portion comprising a core having a core free end and a brush portion free
end not aligned with a longitudinal axis of an end portion of a stem to which
the brush portion is adapted to be connected,

wherein a line tangent to the core at any axial position along the core
is not perpendicular to the longitudinal axis of the end portion of the stem
and a longitudinal axis of the core free end is not parallel to the longitudinal
axis of the end portion when the brush portion is connected to the end
portion of the stem.

Cited References
Ashtary et al. (Ashtary) 5,176,156 Jan. 5, 1993
Gueret 5,937,870 Aug. 17, 1999

Grounds of Rejection
1. Claims 1-12, 20-27, 33-51, 61, 62, 64-72, 75-88, 91-104, 107, and 108-
111 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gueret
in view of Ashtary.
2. Claims 14-16 and 55 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gueret in view of Ashtary.

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Application 10/084,975

ISSUE
The Examiner contends with regard to the claimed device for applying
a product to keratinous fibers, that Gueret discloses one end of the stem
having a longitudinal axis and a brush portion having a free end (104) and
discloses the brush portion is formed from a blank comprising a blank core
and blank bristles defining a blank surface, an edge of the blank surface
being nonrectilinear and the rectilinear edge portion being outwardly
concave (Fig. 1e) (Ans. 3-4).
Appellant argues that:
Neither Gueret nor Ashtary, nor any combination thereof,
provides any disclosure or suggestion of a device including,
among other features, a “brush portion having a free end that is
not aligned with [a] longitudinal axis of [an] end portion of [a]
stem” connected to the brush portion, as recited in independent
claims 1, 64, 80, and 96.

(Br. 14). Appellant further argues that Gueret and Ashtary lack any
disclosure or suggestion of a method of making an applicator, including,
among other features, “curving at least a part of [a] blank core so as to form
a brush portion comprising . . . a brush portion free end not aligned with a
longitudinal axis of an end portion of a stem to which the brush portion is
adapted to be connected,” as recited in independent claim 43. (Br. 14.)
The issue is whether the cited references, in combination, disclose a
“a brush portion connected to one end portion of the stem, the one end
portion of the stem having a longitudinal axis and the brush portion having a
free end that is not aligned with the longitudinal axis of the one end portion
of the stem,” as in claim 1 and whether the cited references disclose
“curving at least a part of the blank core so as to form a brush portion

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Appeal 2008-5036
Application 10/084,975

comprising a core having a core free end and a brush portion free end not
aligned with a longitudinal axis of an end portion of a stem to which the
brush portion is adapted to be connected,” as recited in independent claim
43.
FINDINGS OF FACT
The Examiner finds that:
1. Gueret discloses a mascara brush (Figs. 1-3) comprising a container (320)
comprising a mascara product to apply to eyelashes, a wiper (321), a handle
(323) attached to an end of a stem (101), a brush portion connected to one
end portion of the stem (101.1), the one end of the stem having a
longitudinal axis and a brush portion having a free end (104); the brush
portion comprising a twisted wire core (103) having a left hand pitch (Fig.
1d), at least part of the core being curved; the brush portion further having
bristles of different lengths (Fig. 1) comprising ends defining an envelope
surface being asymmetrical about a midplane of the envelope surface; the
brush portion is formed from a blank comprising a blank core and blank
bristles defining a blank surface, an edge of the blank surface being
nonrectilinear and the rectilinear edge portion being outwardly concave (Fig.
1e). (Ans. 3-4.)
2. With regard to claims 4-8, 10-12, 20-21, 51, 67-68, 83-84, 99-100,
Gueret also discloses the blank envelope surface being substantially axially,
circularly symmetrical about the longitudinal axis of the core, the envelope
surface and the brush portion having a maximum and a minimum cross
section located between axial ends of the envelope surface and the brush
portion, the nonrectilinear edge portion being located in one of the first third

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and a last third of the length of the blank envelope surface (Figs. la, b). (Ans.
4.)
3. With regard to claims 64-66, 69-72, 75-82, 85-88, and 91-95, Gueret
also discloses the envelope surface (129b) being noncylindrical proximate a
free end (at 128b) of a brush portion (120). (Ans. 4.)
4. Gueret does not disclose the free end of the brush portion not being
aligned with the longitudinal axis of the one end portion of the stem and the
brush portion comprising a core having a core free end, at least part of the
core being curved such that a line to the core at any axial position along the
core is not perpendicular to the longitudinal axis of the one end portion of
the stem and a longitudinal axis of the core free end is not parallel to the
longitudinal axis of the end portion. (Ans. 4.)
5. Ashtary discloses a mascara brush (Fig. 2) comprising a stem (16) with
two opposite ends, a brush portion (32) connected to one end (at 34) portion
of the stem and the one end portion of the stem having a longitudinal axis
and the brush portion having a free end that is not aligned with the
longitudinal axis of the one end portion of the stem and the brush portion
comprising a core (30) having a core free end (free end of brush 32), at least
part of the core being curved (col. 3, ll. 61-64) such that a line to the core at
any axial position along the core is not perpendicular to the longitudinal axis
of the one end portion of the stem and a longitudinal axis of the core free
end is not parallel to the longitudinal axis of the end portion (Fig. 2). (Ans.
4.)

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6. It would have been obvious to one having an ordinary skill in the art at
the time the invention was made to employ the particular brush portion as
taught by Ashtary into the mascara brush of Gueret for the purpose of
enhancing the ability of the device to curl the eyelashes. (Ans. 5.)
7. In regard to claims 43-50 and 61-62, the above apparatus is inherently
seen in the existence method claims. (Ans. 5.)
8. Claims 14-16 and 55 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gueret in view of Ashtary. (Ans. 5.)
Other relevant facts of record:
9. Gueret discloses a mascara brush having a fish-like shape (Gueret, Fig.
1), and a frustoconical shape (Fig. 2A).
10. Gueret further evidences that those of ordinary skill in the art
understand that mascara brushes may optionally be curved. (Gueret, Figs.
1d, 1E, 2D; and col. 5, ll. 29-40.)

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Only if that burden is met,
does the burden of coming forward with evidence or argument shift to the
applicant. In order to determine whether a prima facie case of obviousness
has been established, we considered the factors set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1996): (1) the scope and content of the prior art,
(2) the differences between the prior art and the claims at issue, (3) the level

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of ordinary skill in the relevant art, and (4) objective evidence of
nonobviousness, if present.
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). An applicant shows
possession of the claimed invention by describing the claimed invention
with all of its limitations using such descriptive means as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Drawings can disclose claimed structure if they clearly show the
structure which is claimed. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007). As to
motivation to combine, the Supreme Court in KSR rejected a rigid
application of the teaching-suggestion-motivation test. The Court
recognized that it is often necessary to look at the interrelated teaches of
multiple references; the effects of demands of the marketplace; and the
background knowledge possessed by a person of ordinary skill, “all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed.” Id. at 1740-41. Moreover, the
“obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, or motivation, or by overemphasis on the

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importance of published articles and explicit content of issued patents.” Id.
at 1741.

ANALYSIS
1. Claims 1-12, 20-27, 33-51, 61, 62, 64-72, 75-88, 91-104, 107, and 108-
111 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gueret
in view of Ashtary. Appellant provides separate argument for claims 1 and
43 with respect to this rejection and therefore these claims are representative
of the rejection before us. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1
Appellant contends that neither Gueret nor Ashtary, nor any
combination thereof, provides any disclosure or suggestion of a device
including, among other features, a “brush portion connected to one end
portion of the stem, the one end portion of the stem having a longitudinal
axis and the brush portion having a free end that is not aligned with the
longitudinal axis of the one end portion of the stem,” as recited in
independent claims 1, 64, 80, and 96. (Br. 14-15.)
Appellant contends that the text of Ashtary does not describe the
claimed subject matter. (Br. 15.)
We are not convinced by Appellant's argument. The Examiner relies
on Figure 2 of Ashtary as showing the claimed features and not the text. An
applicant can show possession of a claimed invention by describing the
claimed invention with all of its limitations using such descriptive means as
words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d at 1572

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(Fed. Cir. 1997). Thus, the figures of Ashtary are considered part of the
disclosure and may be relied on to reject the pending application.
Ashtary discloses a mascara brush (Fig. 2) comprising a stem (16)
with two opposite ends, a brush portion (32) connected to one end (at 34)
portion of the stem, and the one end portion of the stem having a
longitudinal axis and the brush portion having a free end that is not aligned
with the longitudinal axis of the one end portion of the stem and the brush
portion comprising a core (30) having a core free end (free end of brush 32),
at least part of the core being curved (col. 3, lines 61-64) such that a line to
the core at any axial position along the core is not perpendicular to the
longitudinal axis of the one end portion of the stem, and a longitudinal axis
of the core free end is not parallel to the longitudinal axis of the end portion
(Fig. 2). (FF5.)
Appellant argues that Figure 2 of Ashtary is not a clear figure. (Br.
15.) However, we agree with the Examiner that Figure 2 of Ashtary clearly
show a device having one end portion of the stem having a longitudinal axis
and the brush portion having a free end that is not aligned with the
longitudinal axis of the one end portion of the stem and the brush portion
comprising a core (30) having a core free end (free end of brush 32), at least
part of the core being curved, as claimed. We disagree with Appellant that
Figure 2 of Ashtary is not a clear figure. We find that, Figure 2 of Ashtary,
on its face, discloses a curved mascara brush including the limitation
claimed.

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Moreover, Ashtary’s text does disclose at least part of the core being
curved (col. 3, ll. 61-64). (FF5.)
Appellant further contends there is no motivation to combine the cited
references. (Br. 16-18.)
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007). As to
motivation to combine, the Supreme Court in KSR rejected a rigid
application of the teaching-suggestion-motivation test. The Court recognized
that it is often necessary to look at the interrelated teaches of multiple
references; the effects of demands of the marketplace; and the background
knowledge possessed by a person of ordinary skill, “all in order to determine
whether there was an apparent reason to combine the known elements in the
fashion claimed.” Id. at 1740-41. Moreover, the “obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, or motivation, or by overemphasis on the importance of
published articles and explicit content of issued patents.” Id. at 1741.
“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). It is generally obvious to alter a known product by
substituting a known equivalent for one of its components. See, e.g.,
Hotchkiss v. Greenwood, 52 U.S. 248 (1850) (substitution of porcelain door
knob in known process of making metal or wood door knobs held obvious);

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In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants
merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness].”)
The evidence of record shows that a known alternative for a mascara
brush is depicted in Figure 2 of Ashtary. We find, in the absence of
unexpected results, that it is generally obvious to alter the known mascara
brush applicator product of Gueret by substituting a known equivalent for
one of its brush components as depicted in Ashtary Fig 2.
In addition, the claims do not recite how far the brush portion having a
free end may vary in alignment from the longitudinal axis of the one end
portion of the stem. Thus, even if both Gueret and Ashtary showed
alignment of the stem portion with the brush portion free end, Appellant has
provided no evidence of unexpected results associated with a minor
variation in alignment of the brush portion free end from the x-axis
alignment with the stem. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. KSR, 127 S. Ct. at 1740.
In view of the evidence before us, we affirm the rejection of claim 1.

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Claim 43
Claim 43 is similar to claim 1, however, it claims the curvature of the
core in a slightly different manner.
Appellant argues that Gueret and Ashtary lack any disclosure or
suggestion of a method of making an applicator, including, among other
features, “curving at least a part of [a] blank core so as to form a brush
portion comprising . . . a brush portion free end not aligned with a
longitudinal axis of an end portion of a stem to which the brush portion is
adapted to be connected,” as recited in independent claim 43. (Br. 14.)
Ashtary discloses a mascara brush (Fig. 2) comprising a stem (16)
with two opposite ends, a brush portion (32) connected to one end (at 34)
portion of the stem, and the one end portion of the stem having a
longitudinal axis and the brush portion having a free end that is not aligned
with the longitudinal axis of the one end portion of the stem and the brush
portion comprising a core (30) having a core free end (free end of brush 32),
at least part of the core being curved (col. 3, lines 61-64) such that a line to
the core at any axial position along the core is not perpendicular to the
longitudinal axis of the one end portion of the stem, and a longitudinal axis
of the core free end is not parallel to the longitudinal axis of the end portion
(Fig. 2). (FF5.)
Contrary to Appellant’s argument, we find that Ashtary evidences
curving at least a part of the blank core so as to form a brush portion
comprising a core having a core free end and a brush portion free end not
aligned with a longitudinal axis of an end portion of a stem to which the
brush portion is adapted to be connected, as claimed in claim 43 (see FF 5).

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The rejection of claim 43 is affirmed.
2. Claims 14-16 and 55 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gueret in view of Ashtary. Appellant does not separately
argue the claims of this rejection so we select claim 14 as representative.
37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that:
With regard to claims 14-16 and 55, the Office Action
acknowledged that neither Gueret nor Ashtary, nor any
combination thereof teaches the “shape of the blank surface
being [a] frustoconical-shape, fish-like shape, [or] hourglass-
like shape.” Office Action, page 4, lines 14-17. The Examiner
alleged that such shapes “would have been obvious to one
having an ordinary skill in the art at the time the invention was
made . . . since such a modification would have involved a mere
change in the shape of the component.” Office Action, page 4,
lines 17-21. However, the Office Action provided no
motivation, suggestion, or teaching to alter the shapes of the
devices of Gueret or Ashtary. In particular, the Office Action
merely relies on the Examiner's unsupported, hindsight
speculation, rather than any evidence.

(Br. 20, emphasis omitted.)

Gueret discloses a mascara brush having a fish-like shape (Gueret,
Fig. 1), and a frustoconical shape (Fig. 2A). (FF9.) Both Gueret and Ashtary
evidence that those of ordinary skill in the art understand that mascara
brushes may be curved. (FF 5, 10.) Thus, we agree with the Examiner that
it would have been obvious to one of ordinary skill in the art that the fish
and frustoconical shaped mascara brushes of Gueret could optionally be
curved, as indicated by Gueret and Ashtary. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.

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Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1742, (2007). The
rejection of claim 14 is affirmed.

CONCLUSION OF LAW
We conclude that the cited references in combination disclose a brush
portion connected to one end portion of the stem, the one end portion of the
stem having a longitudinal axis and the brush portion having a free end that
is not aligned with the longitudinal axis of the one end portion of the stem,”
as in claim 1.
We further find that the cited references disclose “curving at least a
part of [a] blank core so as to form a brush portion comprising ... a brush
portion free end not aligned with a longitudinal axis of an end portion of a
stem to which the brush portion is adapted to be connected,” as recited in
independent claim 43.
The obviousness rejections are 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).

AFFIRMED

clj
FINNEGAN, HENDERSON, FARABOW, GARRETT
& DUNNER LLP
901 NEW YORK AVENUE, NW
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