Ex Parte GUERET

Board of Patent Appeals and Interferences

May 19, 2010

09570934 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN-LOUIS GUERET
____________

Appeal 2009-006684
Application 09/570,934
Technology Center 3700
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Decided: May 19, 2010
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge O’NEILL.

Opinion Concurring filed by Administrative Patent Judge KERINS

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
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Application No. 09/570,934

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STATEMENT OF THE CASE
Jean-Louis Gueret (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1-12, 14, 16-33, 36-55, 60-
65, 71-88, 93-101, 106-108, 114, 115, 117, and 129-136 under 35 U.S.C.
§ 103(a). In making each rejection, the Examiner relies on either Gueret
(US 5,096,319, issued Mar. 17, 1992)(hereinafter “Gueret”) or Wavering
(US 4,411,282, issued Oct. 25, 1983) in combination with Mueller.1 We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a device for packaging and applying a
cosmetic. Spec. 1:3-4.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A device comprising:
a receptacle for containing a substance to be
applied,
an applicator comprising a rod having a
longitudinal axis, provided at one end with an applicator
element, and

1 The Examiner rejects claims 1, 4, 5, 11, 12, 17, 18, 21, 38, 42, 43, 46, 47,
and 52 as unpatentable over Gueret and Mueller (US 2,901,100, issued Aug.
25, 1959); claims 1, 10, 20, 23-26, 28, 30, 33, 36, 39, 40, 53-55, 60-62, 64,
65, 71-73, 75-78, 80-84, 86-88, 93-96, 98-101, 106-108, 114, 115, 117, 129,
and 131-36 as unpatentable over Wavering and Mueller; claims 2, 6-9, 14,
16, 19, 22, 37, 45, and 48-51 as unpatentable over Gueret, Mueller and
Nardolillo (US 5,816,728, issued Oct. 6, 1998); claims 27, 29, 31, and 32 as
unpatentable over Wavering, Mueller and Nardolillo; and claims 3, 41, and
44 as unpatentable over Gueret, Mueller and Gueret (US 5,743,279, issued
Apr. 28, 1998)(hereinafter “Gueret ’279”); and claims 63, 74, 79, 85, 97 and
130 as unpatentable over Wavering, Mueller and Gueret ‘279.
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a wiper member for wiping the applicator element
while the applicator is being extracted from the receptacle,
wherein:
the applicator element comprises a body
carrying along its entire length at least one application member,
said body having a longitudinal axis making a non-zero angle
with the longitudinal axis of the rod, said body being along said
length elastically deformable so that said body is capable of
deforming elastically to pass through the wiper member while
the applicator is being withdrawn,
the wiper member having substantially less
deformation, if any, than the body of the applicator element
while the applicator element is passing through the wiper
member, and
the applicator element and wiper are
configured to provide a non-uniform distribution of the
substance on the surface of the applicator element.

OPINION
Issue
The determinative issue in this appeal is:
Whether Gueret or Wavering satisfies, in a cosmetic device, the
claimed feature of the applicator element and wiper being configured to
provide a non-uniform distribution of a substance on a surface of the
applicator element.
Pertinent Facts
Gueret
As the basis of the obviousness rejection with Gueret, the Examiner
relies on the embodiment shown in Figure 7. The embodiment shown in
Figure 7 is the second version of the applicator set of Gueret’s second
embodiment. Cap 502 has rod 531 forcefully wedged therein. Rod 531
carries a distributor element 503. Distributor element 503 comprises a
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flexible cone, known as a “pen.” The applicator set further includes a
tubular body. Inside tubular body 501 is reservoir 504 and cup 506. Cup
506 contains a mascara cake 507. Tubular body 501 is open at both ends.
Reservoir 504 includes bottom 541 and cylindrical side wall 543. Reservoir
504 has its opening located toward the cap 502. This opening has an annular
seal 509 of elastic material disposed thereon which includes an annular
squeegee lip 591. Col. 11, ll. 4-30.
In operation, Gueret discloses the user twists the applicator and
removes “pen” 503. When the “pen” is withdrawn, it is squeegeed by the lip
591, and surplus liquid is removed. The user opens the lid 562 covering cup
506 that contains the mascara cake 507. The user then inserts the “pen” 503
into the pre-formed conical hole 571 and twists the “pen” in hole 571 until
the desired amount of mascara is deposited on the brush 503. Col. 11, ll. 44-
50.
Wavering
Wavering discloses an applicator device for use with mascara. Col. 1,
ll. 6-10. Figure 2 illustrates Wavering’s mascara wand being drawn through
the wiper ring of the container. Col. 2, ll. 28-30. Wavering’s applicator
device 10 includes the container 14 and a combination applicator wand 20
and container closure 18. An open upper end wall 26 defines a throat 28
which leads to a restricted neck 30 that further defines container 14. Col. 2,
l. 67 to col. 3, l. 1. Neck 30 includes an annular wiping ring 54. Col. 3, ll.
7-9. Applicator part 78 of wand 20 constitutes a series of disc-like rings 80.
Col. 3, ll. 27-28. Lateral faces of rings 80 are spaced to define
circumscribing grooves 84 for holding mascara. Col. 3, ll. 30-31. The rings
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80 have a diametric dimension which is slightly larger than that of the
wiping ring 84. Col. 3, l. 67 to col. 4, l. 1.
In operation, the applicator 78 of the wand 20 is inserted into the
container 14 and then withdrawn from the container 14. During withdrawal,
the discs 80 pass through the wiping ring 54. As such, the recesses 84 are
flexed, deformed, or bent such that excess mascara is removed leaving a
controlled quantity of mascara within the applicator 78. Col. 4, ll. 2-11.
Principles of Law
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”)
Where a functional limitation in a claim expressly or impliedly
requires a particular structure different from that in the prior art, the claimed
subject matter is distinguishable from the prior art. Cf. In re Casey, 370
F.2d 576, 579-581(CCPA 1967) (holding that a claim to “[a] taping machine
comprising … a brush … being formed with projecting bristles which
terminate in free ends to collectively define a surface to which adhesive tape
will detachably adhere” is obvious over a prior art reference which taught a
machine for perforating sheets, because “the references in [the claim] to
adhesive tape handling do not expressly or impliedly require any particular
structure in addition to that of [the prior art].”)
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
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properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted).
Analysis
The Examiner found, in Gueret, the distributor element 503 meets the
claimed applicator element and lip 591 meets the claimed wiper. Ans. 3.
The Examiner found, in Wavering, applicator 78 meets the claimed
applicator element and wiping ring 54 meets the claimed wiper. Ans. 5.
The claim limitation of “the applicator element and wiper are
configured to provide a non-uniform distribution of the substance on the
surface of the applicator element” defines a feature of the claimed invention
by function rather than structure. In order for the prior art to satisfy this
functional limitation, the prior art must have structure that expressly or
impliedly has this functional relationship.
Here, Gueret fails to contain structure to expressly satisfy the
functional relationship of the applicator element and wiper as set forth in the
claims. Gueret’s “pen,” which includes the distributor element 503, is
squeegeed by the lip 591 to remove surplus liquid. There is no express
disclosure that the remaining liquid is non-uniformly distributed, either
circumferentially or longitudinally, on the surface of the distributor element
503. As such, Gueret does not expressly describe the functional relationship
of the applicator element and wiper being configured to provide a non-
uniform distribution of the substance on the surface of the applicator
element.
Likewise, Wavering fails to contain structure to expressly satisfy the
functional relation of the applicator element and wiper as set forth in the
claims. The wiping ring 54 leaves a controlled quantity of mascara on the
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applicator 78 when Wavering’s applicator 78 is withdrawn from the
container 14. There is no express disclosure that the controlled quantity of
mascara is non-uniformly distributed, either circumferentially or
longitudinally, on the surface of the applicator 78. As such, Wavering does
not expressly describe the functional relationship of the applicator element
and wiper being configured to provide a non-uniform distribution of the
substance on the surface of the applicator element.
Responding to Appellant’s arguments, the Examiner surmises that if
the applicator elements of either Gueret or Wavering were inserted partially
into their respective receptacles, then only part of the applicator elements
would contain the mascara and, as such, the mascara would be non-
uniformly distributed on the surfaces of the applicator elements. This
implication, as Appellant has argued, would still not meet the claimed
functional relationship between the applicator element and the wiper. The
claimed functional relationship requires the applicator element and wiper be
configured to provide the non-uniform distribution. With the Examiner’s
scenario, as Appellant has argued, the functional relationship that provides
any alleged non-uniform distribution of mascara is between the structure of
the rod or wand and the depth of or amount of fluid within the receptacle.
Accordingly, even with the Examiner’s scenario, neither Gueret’s nor
Wavering’s described applicator element and wiper are capable of satisfying
the functional relationship of being configured to provide a non-uniform
distribution of a substance on the surface of the applicator element.
The Examiner has provided no other persuasive reasoning to suggest
that combining Mueller with Gueret or Wavering might provide the
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applicator element and wiper being configured to provide a non-uniform
distribution of a substance on a surface of the applicator element.
The Examiner does not utilize Nardolillo or Gueret ’279 to cure the
deficiencies noted supra.

CONCLUSION
Neither Gueret nor Wavering satisfy, in a cosmetic device, the
claimed feature of the applicator element and wiper being configured to
provide a non-uniform distribution of a substance on a surface of the
applicator element.

DECISION
The Examiner’s decision to reject claims 1-12, 14, 16-33, 36-55, 60-
65, 71-88, 93-101, 106-108, 114, 115, 117, and 129-136 as obvious is
reversed.

REVERSED

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KERINS, Administrative Patent Judge, concurring.

I agree with the result reached by my colleagues. I would like to
separately present my views on the Examiner’s combination of the teachings
of Mueller with those of Gueret and Wavering.
The Examiner, in addressing the issue as to whether the prior art
discloses or renders obvious the claim limitation “the applicator element and
wiper are configured to provide a non-uniform distribution of the substance
on the surface of the applicator element,” states that:
. . . the combination of Gueret I and Mueller shows
the claimed structures, therefore it is capable of
providing a non-uniform distribution of a
substance on the surface of the applicator element.
(Answer 11).
The Examiner makes a similar finding with respect to the combination of
teachings of Wavering and Mueller. (Answer 12).
The Examiner’s position appears to be that, due to the structural
identity or close structural similarity to the claimed structure of the devices
of Gueret and Wavering as modified by the teachings of Mueller, the
modified device would result in the applicator element and wiper being
configured to provide a non-uniform distribution of the substance on the
surface of the applicator element, as claimed. While my colleagues have
found that the Examiner has not presented persuasive reasoning that this
result would obtain, the Examiner’s basic position is not entirely without
merit, as it appears that the angling of the applicator element body relative to
the longitudinal axis of the applicator rod will cause the applicator element
to interact with the wiper element in a non-symmetrical manner. This
further appears to be the identical interaction in Appellant’s device that
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produces a non-uniform distribution of the substance on the surface of the
applicator element.
Notwithstanding, I agree that the Examiner has not established that
the claims containing this limitation would have been obvious, in that the
Examiner’s reason to combine the teachings of Mueller with those of either
Gueret or Wavering, to wit, “in order to enhance the purpose of applying
cosmetic to the user” (Answer 4, 6), lacks any rational underpinnings. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). While certain aspects of the shape of the
applicator head in the Mueller device are disclosed as facilitating application
of a lipstick cosmetic, the angling of the applicator element body or head 10
relative to the longitudinal axis of the applicator rod or handle 11 is not one
of them.
Mueller describes that the head preferably has a flat upper surface 15
and a transversely flat and longitudinally concave lower surface 16 to
facilitate application of lipstick to the upper and lower lips, respectively.
(Mueller, col. 3, ll. 6-10). Mueller further describes providing tapered edges
17, 18 and 19 to permit smooth and accurate application of lipstick to all
surfaces of the lips, including the corners. (Mueller, col. 3, ll. 17-20).
The stated reason to combine the teachings does not appear to rely on
any of these aspects of the Mueller design that are taught by Mueller to
enhance the application of lipstick. Moreover, the stated reason to combine
does not address how or why the person of ordinary skill in the art would
appreciate that the enhancement in application of lipstick brought about by
certain aspects of the shape of the applicator, would also be applicable to the
application of mascara, to which the Gueret and Wavering patents are
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directed. As such, the conclusion of obviousness based on the combination
of these teachings cannot be sustained.

mls

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