Ex Parte Gueret

Board of Patent Appeals and Interferences

Feb 26, 2010

10849003 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEAN-LOUIS GUERET
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Appeal 2009-007770
Application 10/849,003
Technology Center 3700
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Decided: February 26, 2010
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Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007770
Application 10/849,003

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 5-18, 20, 37,
40, 41, 44, 47-50 and 52.
Claims 4, 19, 21-36, 38, 39, 42, 43, 45, 46, 51 and 53 stand withdrawn
from consideration.
These are all of the claims in the application. We have jurisdiction
over the appeal under 35 U.S.C. §§ 134 and 6.
The claimed invention is directed to a device for packaging and
applying a substance such as a cosmetic.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A device for packaging and applying a substance, the
device comprising:

a receptacle for containing a substance;

an applicator including an applicator element; and

a wiper member for wiping the applicator element,
wherein the wiper member includes a longitudinally split
annular portion extending over less than a height of the wiper
member and having a wall that includes at least one slot
extending to a free end of the wiper member, the slot passing
through an entire thickness of said wall, said split portion
having, in a plane in which an inside cross-section thereof is at
a minimum, an outside cross-section that is greater than a
maximum cross-section of the applicator element, the split
portion deforming radially outward when the applicator element
passes therethrough.

REFERENCES
Appeal 2009-007770
Application 10/849,003

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The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:
Carluccio
Gueret
US 4,390,298
US 5,803,638
Jun. 28, 1983
Sep. 8, 1998
Kirita US 2003/0196672 A1 Oct. 23, 2003

REJECTIONS
Claims 1, 2, 9-12, 14, 16-18, 20, 40, 41, 47, 50 and 52 stand rejected
under 35 U.S.C. § 102(e) as anticipated by Kirita.
Claims 5-8, 13 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirita.
Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Kirita and Gueret.
Claims 1-3, 10, 11, 14, 16-18, 20, 40, 41, 44, 47, 48, 50 and 52 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Carluccio.
Claims 5-9, 12, 13, 15 and 49 are rejected under 35 U.S.C. § 103 as
unpatentable over Carluccio.
Claims 37 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Carluccio in view of Gueret.
A rejection under 35 U.S.C. § 112, first paragraph, under the
enablement provision of the statute has been withdrawn by the Examiner in
the Examiner’s Answer. Ans. 2.

ISSUE
The Examiner contends that Kirita inherently discloses a wiper
member wherein the outside cross section at a plane in which the inside
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Application 10/849,003

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cross section is at a minimum is greater than the outside cross section of the
applicator element. Ans. 13.
The Examiner contends that Carluccio discloses this same
dimensional relationship. Ans. 15.
Appellant contends that neither reference expressly or inherently
discloses the dimensional relationship of the outside cross section of the
wiper member in relation to the applicator element.
Accordingly, the issue presented in the appeal is whether the
Examiner erred in finding that Kirita or Carluccio discloses the dimensional
relationship outlined above. App. Br. 9.

FINDINGS OF FACT
Kirita discloses a device for packaging and applying a substance. See
para. [0002]. With reference to Figs. 1, 2, and 3, Kirita shows a receptacle
1, an applicator 10, 11 with an applicator element 12. See para. [0011] and
paras. [0020-0023]. From Figs. 1 and 2, it appears that the applicator
element 12 is of the same general diameter as the applicator shaft part 11. A
wiper or squeezer 3 is provided for wiping the applicator element 12. Id.
The squeezer 3 is made of flexible material and its diameter gradually
reduces from the top or first end to the lower part and then gradually
enlarges from the lower part to the bottom end. See para. [0022]. The
squeezer has a plurality of silts arranged circumferential with the slits or
slots passing through the entire thickness of the wall. See Id. The applicator
shaft 11 has a diameter approximately equal to or marginally smaller than
the inside diameter of the squeezer 3. Para. [0023]. Finally, with reference
to Figs. 3 and 4, assuming that the applicator element is generally the same
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diameter as the applicator shaft and assuming that the squeezer or wiper has
an appreciable thickness, as shown in the cross section in Fig. 4, it is our
finding that Kirita discloses in a plane in which the inside cross section is at
a minimum, the outside cross section of the wiper or squeezer 3 is greater
than the maximum cross section of the applicator element. Therefore, it is
our finding that the claimed subject matter of claim 1 lacks novelty over the
Kirita reference.
Carluccio discloses a device for packaging and applying a substance.
See col. 1, ll. 6-10. The container or receptacle 10 receives an applicator 18
with an applicator element 22 at the end thereof. Carluccio discloses that the
applicator element may be a plurality of bristles 24 or may take the form of
polyurethane foam or a brush for applying a nail polish. See col. 2, ll. 16-
21. A brush for applying nail polish is generally the same diameter as the
applicator stem. Carluccio further discloses a wiper plug 12, placed in the
neck of the container 10. While Fig. 1 shows a wiper plug, with a spiral slot
34, Figs. 3-6 illustrate a wiper with straight slots 59 or 79. See col. 2, l. 34
– col. 3, l. 17. We note from Carluccio’s Figures that the portion of the
wiper that has a minimum cross section is just above wiper edge 32, and due
to the thickness of the wiper member the outer cross section of the wiper
member would be greater than a nail polish brush of generally the same
diameter as the applicator stem. Thus, it is our finding that the subject
matter of claim 1 lacks novelty over the disclosure of Carluccio.
Gueret shows an applicator for a cosmetic product that can be made in
an elastomeric material, a flock coated plastic material, felt, foam or any
other equivalent material capable of absorbing the product and applying it.
See col. 3, ll. 53-58.
Appeal 2009-007770
Application 10/849,003

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PRINCIPLES OF LAW

The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002). Express anticipation occurs when the
prior art expressly discloses each limitation (i.e., each element) of a claim.
Id. In addition, “[i]t is well settled that a prior art reference may anticipate
when the claim limitations not expressly found in that reference are
nonetheless inherent in it.” Id.
“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). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
ANALYSIS
Appellant argues the rejections based on § 102 are improper, because
each of the applied references fails to teach or suggest a wiper member
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having a split portion with an outside cross section of the split portion that is
greater than a maximum cross section of the applicator element. Our
findings of fact are contrary to this argument. It can readily be seen, for
example, with respect to the reference to Kirita that due to the cross-
sectional thickness of the wiper material and the brush bristles being
approximately the same diameter as the applicator stem, that Kirita satisfies
this claim limitation.
We also disagree with the contention argued in the reply brief that the
inside cross section and the outside cross section of the squeezer 3 are
substantially the same. Reply Br. 3. The thickness of the squeezer material
is appreciable as shown in, for example, Fig. 4 of Kirita, and definitely
cannot be considered to be zero.
Furthermore, with respect to the embodiment of Carluccio which is
directed to a nail polish applicator brush, the same dimensional relationship
found in Kirita would be present in the Carluccio disclosure. Accordingly,
we do not credit Appellant’s argument with respect to the § 102 rejections.
Appellant groups claims 2, 9-12, 14, 16-18, 20, 40, 41, 47, 50 and 52
with claim 1, which we find as representative of the group. App. Br. 10.
These claims fall with claim 1. Furthermore, with respect to claims 5-8, 13
and 15, and claim 37 rejected under § 103, Appellant has bottomed the
patentability of these claims on the lack of the relationship argued with
respect to the independent claim. Therefore, these claims will also fall with
claim 1.
Similarly, with respect to the Carluccio rejection, claims 2, 3, 10, 11,
14, 16-18, 20, 40, 41, 44, 47, 48, 50 and 52 fall with claim 1 under § 102,
while claims 5-9, 12, 13, 15, 49, and claim 37 fall with claim 1 in the
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rejection under § 103. App. Br. 16.
We further note that Appellant has not argued the Examiner’s reliance
on the legal principle that the exact dimensions of the wiper are a result
effective variable. The Examiner has advanced this argument with respect
to Kirita and claims 5-8, 13 and 15 on pages 7 and 8 of the Answer, and with
respect to the Carluccio reference on pages 10 and 11 of the Examiner’s
Answer. With respect to this argument, the Appellant fails to allege an error
on the part of the Examiner.
We further note that when Appellant lists claims 5-9, 12, 13, 15 and
49 in the Brief as on pages 11 and 16, Appellant merely recites the features
of the claims without any argument or attempt to allege error on the part of
the Examiner. As our rules make clear, a statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claims. See 37 C.F.R. § 41.37 (c)(1)(vii)(2009) last
sentence.

CONCLUSION
For the reasons given above, the Examiner has not erred in rejecting
the claims under § 102 and § 103. Therefore, the 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)(1)(iv) (2007).

AFFIRMED

vsh

Appeal 2009-007770
Application 10/849,003

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OLIFF & BERRIDGE, PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850