Ex Parte Gueret

Board of Patent Appeals and Interferences

Jan 7, 2010

10060234 (B.P.A.I. Jan. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEAN-LOUIS H. GUERET
____________________

Appeal 2009-005633
Application 10/060,234
Technology Center 3700
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Decided: January 7, 2010
____________________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jean-Louis H. Gueret (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3-9, 11-17, 22-51, 60-
67, 70-83, 85-91, 96-108, 110, 112-116, 118-121, 123, 132, 133, 135-141,
144-156, 158-164, 169-182, 184-192, 194, 203, 204, and 206-212. An oral
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hearing was held on December 9, 2009. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to devices for applying a
product, such as a cosmetic product, to a surface. Spec. 1, para. [001].
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A device for applying a product, the device
comprising:
a first portion defining a recess;
a second portion moveable with respect to the first
portion so as to selectively place the device in one of a closed
position and an open position, wherein the first portion and the
second portion define a substantially closed reservoir when the
device is in the closed position; and
an application member attached to the second portion, the
application member being at least partially compressible and
configured such that, when the device is in the closed position,
the application member is at least partially compressed inside
the substantially closed reservoir and, when the device is
moved from the closed position to the open position, the
application member becomes substantially uncompressed,
wherein the application member is configured so that
when the application member is uncompressed, the application
member is capable of being loaded with substantially all of an
amount of product that the device is capable of containing.

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hitchcock, Jr. (“Hitchcock”) US 4,519,795 May 28, 1985
Gray US 4,594,835 Jun. 17, 1986

Before us for review is the Examiner’s rejection of claims 1, 3-9, 11-
17, 22-51, 60-67, 70-83, 85-91, 96-108, 110, 112-116, 118-121, 123, 132,
133, 135-141, 144-156, 158-164, 169-182, 184-192, 194, 203, 204, and 206-
212 under 35 U.S.C. § 103(a) as being unpatentable over Gray and
Hitchcock.
We note that the Examiner addresses dependent claims 43, 44, 115,
116, 187, and 188 (directed to multiple sachets removably joined together)
separately from the other appealed claims. See Ans. 3, 4. Because all of the
appealed claims stand rejected under the same statutory provision and over
the same two references, and because Appellant argues all of the dependent
claims as a group (App. Br. 19), we treat all of the appealed claims as
subject to a single ground of rejection.

ISSUE
The Examiner found that Gray discloses all of the limitations of claim
1 except that Gray does not disclose the foam application member attached
to the second portion. Ans. 3. The Examiner found that Hitchcock teaches
an application device having a pad attached to a plastic strip, and the use of
the strip as a handle. Id. at 3-4. The Examiner concluded that it would have
been obvious to one of ordinary skill in the art, in view of Hitchcock’s
teachings, to attach Gray’s foam application member to the top foil so as to
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use the foil as a handle to apply a product without soiling one’s hand. See
id. at 4; Non-Final Rejection mailed Apr. 14, 2006, at 3. Appellant does not
assert that any claim limitation is missing from the cited references.
Cf. App. Br. 14-15 (describing the teachings of Gray and Hitchcock).
Rather, Appellant contends that the Examiner’s conclusion of obviousness is
based on impermissible hindsight and is merely conclusory because there is
no clear and particular suggestion or otherwise sufficient reason to combine
the references. App. Br. 16. Appellant also contends that one would not be
motivated to combine the references because the references teach away from
making the proposed modification, and because the proposed modification
of Gray would destroy the usefulness and function of Gray’s V-notch (for
opening the sachet). App. Br. 17-18. Therefore, the issues on appeal are:
Has Appellant shown that the Examiner erred because there is no
rational reason why one of ordinary skill in the art would combine the
references?
Has Appellant shown that the Examiner erred because the references
teach away from making the proposed modification, and because the
proposed modification would destroy the usefulness and function of Gray’s
V-notch?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Gray discloses a sachet for use in the medical field and which
contains a product and a carrier, such as a sponge. Gray, col. 1, ll. 19-36.
Gray discloses an embodiment where the top foil of the sachet is a laminate
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of two films – a film of biaxially oriented polyethylene terephthalate and a
film of low density polyethylene. Id., col. 3, ll. 8-13. A V-notch 11 is
provided near one end of the sachet to facilitate opening of the sachet. Id.,
col. 3, ll. 22-23; fig. 1. Gray does not disclose attaching the carrier to any
portion of the sachet.
2. Hitchcock discloses a disposable swab 10 for applying
medicament to the skin. Hitchcock, col. 1, ll. 12-14. The swab comprises a
flat sheet-like strip 12 and pad member 14 (which may be made from sponge
material). Id., col. 3, ll. 19-26; fig. 2. Hitchcock teaches affixing the pad
member to the sheet-like strip and using the strip as a handle during the
swabbing process. Id., col. 3, 22-43; fig. 3. Hitchcock explains that “the
generally stiff strip may be made of a flexible plastic such as polyethylene,
polypropylene, or the like.” Id., col. 2, ll. 40-42. Hitchcock discloses
another embodiment utilizing a “strip of semi-stiff polyethylene sheeting.”
Id., col. 4, ll. 6-8. A frangible pouch 32 is preferably heat sealed to the strip
12, thereby enclosing the pad member. Id., col. 3, ll. 51-55; fig. 2.
Hitchcock further discloses that a conventional tear tab 34 may be provided
for easy removal of the frangible pouch 32 to expose the pad 14. Id., col. 3,
ll. 55-58. Hitchcock’s Figure 4 depicts a user peeling the pouch off of the
strip. Id., col. 3, ll. 9-11; fig. 4.
3. Hitchcock discloses that the pad member may be attached to the
strip “by means of a conventional adhesive, a heat seal, or any other desired
technique.” Hitchcock, col. 2, ll. 44-49. Thus, Hitchcock indicates that
using the attachment technique is not beyond the skill of the ordinary artisan.
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4. Hitchcock teaches that the disclosed swab also may be used for
application of cosmetic ointments, make up, and hair dye, and may be used
to apply touch-up stain to furniture. Hitchcock, col. 1, ll. 40-50.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103). “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art 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. Id. at 417.
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co., 550 U.S. at 416 (citing United States v.
Adams, 383 U.S. 39, 51-52 (1966)). Whether a reference teaches away from
a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, … would be led in a direction
divergent from the path that was taken by the applicant.” In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)).

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ANALYSIS
Appellant argues the rejected independent claims 1, 71, and 144 as a
group. App. Br. 12, 18. We select claim 1 as the representative claim, and
claims 71 and 144 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2009).
Gray and Hitchcock are similar in that they both disclose an apparatus
containing a product and an application member. Facts 1, 2. Gray’s
application member, e.g., a sponge, is not attached to either the top or
bottom portion of the sachet. Fact 1. Hitchcock teaches the technique of
attaching the applicator to one portion of the product container, such that the
portion may be used as a handle to apply the product. Fact 2. Hitchcock
also teaches that the applicator may be used to apply cosmetics, hair dye,
and furniture stain. Fact 4. It would have been obvious to improve Gray’s
device by attaching the sponge to a portion of the sachet so that the portion
may be used as a handle. Using the sachet portion as a handle would allow
the user to apply a product without soiling his or her hands. It does not
appear that utilizing the technique of attaching an applicator to a portion of
the container would have been beyond the skill of the person having
ordinary skill in the art. See Fact 3. Appellant has not persuaded us that the
Examiner’s conclusion of obviousness lacks a rational underpinning.
Appellant argues that there is no suggestion, motivation, or teaching
to combine or modify the references. App. Br. 15-16. In particular,
Appellant argues that the Examiner has failed to provide findings showing a
“clear and particular suggestion” to combine the references. See id. at 15
(citations omitted). This argument is foreclosed by KSR, in which the Court
rejected the rigid requirement of a teaching, suggestion or motivation to
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combine known elements in order to show obviousness. KSR Int’l Co., 550
U.S. at 418-19. The Court noted that an 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.” Id. at 418. Further, the
Examiner made findings regarding Hitchcock’s teachings, and points to
those teachings as providing a motivation to modify Gray. See Ans. 3-4, 5.
Therefore, we determine that the Examiner did not rely on impermissible
hindsight, as Appellant urges (App. Br. 16), but rather relied on the
knowledge of those skilled in the art at the time of the invention.
Appellant suggests that the Examiner’s position – that it would have
been obvious to use the top foil as a handle to avoid soiling one’s hand – is
an improper “obvious to try” rationale. App. Br. 16. However, a showing
that the combination was obvious to try can support a conclusion of
obviousness. KSR Int’l Co., 550 U.S. at 421.
Appellant argues that Gray and Hitchcock teach away from modifying
Gray by attaching the sponge to the top foil. App. Br. 17. Appellant’s
argument is premised, in part, on the assertions that Hitchcock requires the
handle strip to be “sufficiently stiff” and that Gray’s sachet material is
unsuitable for use as a handle because it must be flexible and thin so that it
can deform when a vacuum is applied during the manufacturing process. Id.
While Hitchcock does refer to the use of a “generally stiff” sheet-like strip,
Hitchcock also describes that same “generally stiff” strip as being made
from “flexible plastic,” and discloses another embodiment utilizing “semi-
stiff polyethylene sheeting.” Fact 2. Appellant does not direct us to any
disclosure of Hitchcock that precludes the use of a thin, flexible strip or that
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otherwise would discourage one of ordinary skill from applying the handle
technique to Gray’s device.
As to the argument that Gray’s material is unsuitable for a handle,
Appellant has not offered persuasive argument or evidence to rebut the
Examiner’s finding (Ans. 6) that Gray’s top foil would be suitable as a
handle for a sponge applicator. It seems that Gray’s top foil, which is
described as a two layer laminate (Fact 1), would be adequate to serve as a
handle for a lightweight applicator such as a small sponge.
Appellant also asserts that the advantage of a mass production process
“envisaged” by Gray (Gray, col. 2, ll. 24-35) – where the pockets are
produced from two continuous webs of film or foil – teaches away from
including any additional structure suitable for a handle. App. Br. 17. This
argument does not show error in the rejection. First, as discussed above,
Appellant has not persuaded us that Gray’s foil requires additional structure
to function as a handle. Second, Appellant does not explain why a flexible
plastic strip, such as that taught by Hitchcock, could not be used in the
manufacturing process mentioned in Gray. As such, Appellant has not
persuaded us that Gray teaches away from attaching an applicator to the top
portion of Gray’s sachet.
Next, Appellant argues that one would not be motivated to attach a
sponge to the top foil of Gray’s sachet because doing so would destroy the
usefulness and function of the V-notch. App. Br. 17-18. Appellant contends
that the sachet opening created at the V-notch would be inadequate to
remove a sponge attached to the top without further opening the sachet, e.g.,
separating the top and bottom foils from each other. App. Br. 18. While
Appellant may be correct in that an additional step would be required to
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open the modified sachet, we are not convinced the additional step would
destroy the usefulness and function of the V-notch. Additionally,
Appellant’s scenario is similar to Hitchcock’s description of preparing the
swab for use by peeling the pouch off of the strip (Fact 2), thus further
supporting the conclusion of obviousness. We also disagree with
Appellant’s apparent assertion (App. Br. 18) that tearing the sachet along the
V-notch would affect the structural integrity of the foil such that it could not
function as a handle. Even in Appellant’s scenario, only the end of the top
foil is removed, and the structural integrity of the remaining portion would
not be adversely affected. Lastly, the Examiner reasonably concluded that it
would have been obvious to one of ordinary skill to substitute another
opening means for the V-notch. Ans. 6; see also Fact 2 (Hitchcock discloses
the use of a conventional tear tab).
Appellant has not shown that the Examiner erred in rejecting
independent claim 1 as unpatentable over Gray and Hitchcock.
Accordingly, we sustain the rejection of claim 1, as well as the rejection of
independent claims 71 and 144, which fall with claim 1.
Appellant does not present any additional arguments directed to the
remaining claims on appeal, but merely asserts that the claims are patentable
“by virtue of their dependencies from allowable independent claims 1, 71,
and 144.” App. Br. 19. Because Appellant has not shown that the Examiner
erred in rejecting independent claims 1, 71, and 144 as unpatentable over
Gray and Hitchcock, Appellant has also failed to show that the Examiner
erred in rejecting the remaining claims over those references.

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CONCLUSION
Appellant has not shown that the Examiner erred because there is no
rational reason why one of ordinary skill in the art would combine the
references.
Appellant also has not shown that the Examiner erred because the
references teach away from making the proposed modification, or because
the proposed modification would destroy the usefulness and function of
Gray’s V-notch.

DECISION
The decision of the Examiner to reject claims 1, 3-9, 11-17, 22-51,
60-67, 70-83, 85-91, 96-108, 110, 112-116, 118-121, 123, 132, 133, 135-
141, 144-156, 158-164, 169-182, 184-192, 194, 203, 204, and 206-212 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)(1)(iv) (2007).

AFFIRMED

mls

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