Ex Parte Hornbach et al

Patent Trial and Appeal Board

Apr 17, 2014

11935890 (P.T.A.B. Apr. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANGELA MARIE HORNBACH and CHRISTOPHER DAVIS
____________

Appeal 2012-003968
Application 11/935,890
Technology Center 3700
____________

Before GAY ANN SPAHN, WILLIAM A. CAPP, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

Opinion for the Board filed by SPAHN, Administrative Patent Judge.

Opinion dissenting filed by CAPP, Administrative Patent Judge.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 5, 8, 12-15, 17-19, 21, 22, and 24. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-003968
Application 11/935,890

2
Claimed Subject Matter
Claim 12, reproduced below, with emphasis added, is illustrative of
the appealed subject matter.
12. A method of systematizing hairstyling
tools, comprising:
a) defining a plurality of hairstyles
for a plurality of hair types, wherein each of the
hairstyles is associated with at least one of the hair
types;
b) defining a series of sequential
hairstyling steps in a multi-step hairstyling
regimen to implement each of the hairstyles,
wherein each of the hairstyling steps includes the
use of at least one of the hair-styling tools;
c) determining which of the
hairstyling tools are suitable for performing each
of the defined hairstyling steps;
d) pre-packaging a plurality of
hairstyling tool sets, one for each of the plurality
of hairstyles, each of the hairstyling tools in each
set selected for performing one of the sequential
hairstyling steps to implement one of the plurality
of hairstyles;
e) defining indicia relating to each
of the hairstyling steps, wherein the indicia include
numerically sequential indicia, step-descriptive
indicia, or a combination thereof, each of the
hairstyling tools having associated therewith
indicia corresponding to its hairstyling step; and
f) displaying the indicia for the
hairstyling steps in connection with the advertising
and sale of the corresponding hairstyling tool sets,
including displaying the indicia on the hairstyling
tools, on tags attached to the hairstyling tools, on
packaging for the sets of hairstyling tools, or on a
combination thereof.
App. Br., Clms. App’x.
Appeal 2012-003968
Application 11/935,890

3
Evidence Relied Upon
The Examiner relies upon the following as evidence in support of the
rejections:
Montgomery US 5,797,755 Aug. 25, 1998

Hair Brush . . . For Dummies!,
http://web.archive.org/web/20050320112446lhttp://www .hair-styles-
secrets-revealed.com/, (last visited Apr. 28, 2010) (hereinafter “Hair
Brush”).

How to Get Volume out of Long, Straight Hair, eHow.com,
http://web.archive.org/web/20070522141654/http://www.ehow.com/how
_2026031 _style-l (last visited Apr. 28, 2010) (hereinafter “Long Hair”).

Curly Hair Style ... For Dummies!,
http://web.archive.org/web/20050320112024/http://www .hair-styles-
secrets-revealed.com/ (last visited Apr. 28, 2010) (hereinafter “Curly
Hair”).

Smooth Shiny Straightened Hair, Hairfinder® International Hair Directory,
http://web.archive.org/web/20060506171339/http://
www.hairfinder.com/hairquestios/smo ... (last visited May 3, 2010)
(hereinafter “Shiny Hair”).

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 12 and 13 as unpatentable over Hair Brush and
Montgomery;
II. claims 5 and 15 as unpatentable over Hair Brush, Montgomery,
and Long Hair;
III. claim 8 as unpatentable over Hair Brush, Montgomery, Long
Hair, and Curly Hair; and
Appeal 2012-003968
Application 11/935,890

4
IV. claims 14, 17-19, 21, 22, and 24 as unpatentable over Hair
Brush, Montgomery, Long Hair, Curly Hair, and Shiny Hair.1

ANALYSIS
Rejection I – Obviousness based on Hair Brush and Montgomery
The Examiner finds that Hair Brush substantially discloses the subject
matter of independent claim 12, but fails to disclose the limitations in
paragraph d), e), and f). Ans. 5-6. The Examiner also finds that
Montgomery discloses “a method of systemizing hair tools” including
portions of claim 12’s limitations in paragraphs e) and f). Ans. 6-7 (citing
Montgomery, col. 1, ll. 46-48, col. 3, ll. 3-11, and col. 6, ll. 14-30, and Figs.
2 and 3). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the steps of Hair Brush, “to include the
display having the step indicating indicia and arrangement, as taught by
Montgomery, in order to aid the user in determining which tool is to be used
for the various steps of hairstyling.” Ans. 7.
Appellants argue that “[t]he rejection of claim 12 fails because the
cited reference combination of [Hair] Brush and Montgomery fails to teach
or suggest at least step []d),” because “[c]laim 12 requires multiple
prepackaged sets of tools,” and “[t]he combination of [Hair] Brush and
Montgomery does not teach or suggest at least such prepackaged tool sets, as
recited in step []d).” App. Br. 11.

1 Although the Examiner set forth the rejection of claims 14 and 17-19 (Ans.
9) separately from the rejection of claims 21, 22, and 24 (Ans. 11), we have
consolidated these two rejections because both rejections are based upon the
same combination of references.
Appeal 2012-003968
Application 11/935,890

5
In response to Appellants’ argument, the Examiner indicates that Hair
Brush discloses “a multi[-]step regimen . . . that refers to multiple steps
requiring multiple tools (specifically[,] in this case[,] a comb and a brush),”
and “ the order in which . . . [the tools] are to be utilized.” Ans. 14 (citing
Hair Brush, p. 3, l. 25 to p. 4, l. 18). The Examiner also indicates that “[b]y
defining what tools are to be used in the specific method, . . . [Hair Brush]
defines a ‘set’, i.e.[,] the set of specific brushes to be utilized for the
method,” but Hair Brush “does not teach that the sets of tools are
prepackaged.” Id. The Examiner turns to Montgomery for its disclosure
that “sets of packaged brushes are provided on display and arranged
according to use.” Id. (citing Montgomery, col 6, ll. 14-30). In other words,
the Examiner’s position is that Hair Brush “discloses that the user is already
provided with a sequence of steps and a list of tools to carry out the steps,”
wherein “these tools form[] a ‘set’ for the specific method,” and
“Montgomery makes it obvious that the tools can be packaged and displayed
bearing their use and arranged according to use.” Id.
Appellants reply the Examiner’s indication that the combination of
Hair Brush and Montgomery disclose the limitation of paragraph d) of claim
12 is incorrect because “[a]t no point do Brush and Montgomery teach or
suggest putting more than one hairstyling tool in a package as a set, as the
term ‘set’ is used in claim 12.” Reply Br. 4. Thus, Appellants argue that
Hair “Brush as modified by Montgomery does not teach pre-packaged sets,
but only a list of tools required for a particular hair style and a display of
individually packaged brushes.” Id.
We are persuaded by Appellants’ arguments. As pointed out by
Appellants, claim 12 requires that “[e]ach pre-packaged set has multiple
Appeal 2012-003968
Application 11/935,890

6
tools.” Id. The Examiner’s rejection has failed to show by a preponderance
of the evidence that the combination of Hair Brush and Montgomery
discloses claim 12’s step of “prepackaging a plurality of hairstyling tool
sets.” Indeed, the Examiner’s rejection relies on Hair Brush to disclose a
single set of specific brushes to be utilized in a specific method. However,
the Examiner acknowledges that the set of specific brushes in Hair Brush is
not a prepackaged set. Ans. 14. The Examiner’s rejection then relies on
Montgomery to disclose “sets of packaged brushes [which] are provided on
display and arranged according to use.” Id. (citing Montgomery, col. 6, ll.
14-30). However, Montgomery’s disclosure at column 6, lines 14-30 does
not cure the deficiency of Hair Brush, because while Montgomery may
disclose prepacking individual hairstyling tools and then arranging each of
the individually packaged hairstyling tools in a set on a display apparatus,
the combination of Hair Brush and Montgomery fails to satisfy the limitation
in paragraph d) of claim 12 which requires “pre-packaging a plurality of
hairstyling tool sets,” i.e., more than one hairstyling tool in each of a
plurality of packages. Id. In other words, Appellants have shown error in
the Examiner’s rejection because the Examiner’s rejection points to no
teaching in either of Hair Brush and Montgomery that it was known in the
art to: (1) prepackage more than one hairstyling tool in a single package; (2)
have a plurality of these prepackaged sets such that there is one of the
plurality of prepackaged sets for each of the plurality of hairstyles; and (3)
each of the more than one hairstyling tools in each set is selected for
performing one of the sequential hairstyling steps to implement one of the
plurality of hairstyles.
Appeal 2012-003968
Application 11/935,890

7
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 12, and claim 13 which depends therefrom, under 35
U.S.C. § 103(a) as unpatentable over Hair Brush and Montgomery.

Rejections II and III – Obviousness based on
Hair Brush, Montgomery, and Long Hair and Obviousness
based on Hair Brush, Montgomery, Long Hair, and Curly Hair, respectively
Claims 5, 8, and 15 all depend directly from claim 12. App. Br.,
Clms. App’x. The Examiner’s rejections of claims 5, 8, and 15 rely on the
Examiner’s erroneous indication that the combination of Hair Brush and
Montgomery disclose the limitation of paragraph d) of claim 12, and the
Examiner does not rely upon either Long Hair or Curly hair to cure the
deficiency of the combination of Hair Brush and Montgomery. See App. Br.
7-9. Accordingly, for the same reasons as discussed supra with respect to
the rejection of independent claim 12, we do not sustain the Examiner’s
rejections, under 35 U.S.C. § 103(a), of: claims 5 and 15 as unpatentable
over Hair Brush, Montgomery, and Long Hair; and claim 8 as unpatentable
over Hair Brush, Montgomery, Long Hair, and Curly Hair.

Rejection IV – Obviousness based on
Hair Brush, Montgomery, Long Hair, Curly Hair, and Shiny Hair
Claims 14 and 17-19
Claims 14 and 17-19 depend, either directly or indirectly, from claim
12. App. Br., Clms. App’x. The Examiner’s rejection of claims 14 and 17-
19 relies on the erroneous indication that the combination of Hair Brush and
Montgomery disclose the limitation of paragraph d) of claim 12, and the
Examiner does not rely upon any of Long Hair, Curly Hair, and Shiny Hair
Appeal 2012-003968
Application 11/935,890

8
to cure the deficiency of the combination of Hair Brush and Montgomery.
See App. Br. 9-11. Accordingly, for the same reasons as discussed supra
with respect to the rejection of independent claim 12, we do not sustain the
Examiner’s rejection of claims 14 and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Hair Brush, Montgomery, Long Hair, Curly Hair, and
Shiny Hair.
Claims 21, 22, and 24
Similar to independent claim 12, independent claim 21 is directed to
“[a] method of systematizing hairstyling tools and includes, inter alia, the
step of “pre-packaging hairstyling tools together in first, second, and third
sets of hairstyling tools.” App. Br., Clms. App’x. Emphasis added.
The Examiner’s rejection of independent claim 21 relies on similar
findings and a similar conclusion to those discussed supra with respect to
the rejection of independent claim 12. See Ans. 11-14. Appellants present
similar arguments to those discussed supra with respect to the rejection of
independent claim 12. For similar reasons to those discussed above with
respect to the rejection of independent claim 12, we do not sustain the
Examiner’s rejection of independent claim 21, and claims 22 and 24 which
depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Hair
Brush, Montgomery, Long Hair, Curly Hair, and Shiny Hair.

DECISION
We reverse the Examiner’s decision to reject claims 5, 8, 12-15, 17-
19, 21, 22, and 24.

REVERSED

Appeal 2012-003968
Application 11/935,890

9
Klh

Appeal 2012-003968
Application 11/935,890

10
CAPP, Administrative Patent Judge, dissenting.
In reversing the Examiner, my colleagues are splitting hairs. The
Examiner found two references that, in my opinion, render the subject matter
of claim 12, as a whole, unpatentable as obvious.2 As correctly found by the
Examiner, Hair Brush defines a “set” of hairstyling tools. Ans. 5-6, 14. As
correctly found by the Examiner, Montgomery teaches a method of
systematizing hair tools that includes packaging and displaying indicia on
hairstyling tools. Ans. 6. The foregoing facts are undisputed by Appellants.
The majority reverses by uncritically accepting, at face value,
Appellants’ argument that neither Hair Brush nor Montgomery disclose pre-
packaging hairstyling tools as a “set.” However, the prospect of one element
in a claim of a combination of elements not being explicitly disclosed in the
prior art is not a sufficient reason for reversing an obviousness rejection.3
The controlling statute states, in pertinent part, that:
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102 , if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious . . .
35 U.S.C. § 103. Thus, the obviousness statute expressly contemplates that
a claim may be unpatentable as obvious despite the existence of differences

2 Appellants only argue claim 12 and, therefore, the remaining claims should
fall with claim 12. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
3 If every element of a combination claim had to be disclosed in the prior
art, there could never be an obviousness rejection under 35 U.S.C. § 103
over a single prior art reference, rather, a rejection over a single reference
would always have to be based on the ground of anticipation under 35
U.S.C. § 102. See Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
982, 990 (Fed. Cir. 2009) as an example of a patent claim being held invalid
as obvious over a single, prior art reference.
Appeal 2012-003968
Application 11/935,890

11
between the prior art and the claimed invention. Id. In this case, the
majority improperly focuses on one single element of a combination claim
and, finding that element missing, draws an incorrect conclusion that the
Examiner erred in concluding that the claim is unpatentable. That is not the
correct analysis. The majority fails to properly analyze and consider
whether the “differences between the claimed invention and the prior art are
such that the claimed invention as a whole” would have been obvious. Id.
In my opinion, the Examiner is correct in concluding that it would
have been obvious to one of ordinary skill in the art, at the time the
invention was made, to modify Hair Brush with Montgomery to achieve the
claimed invention. Ans. 7, 16. The majority accepts, at face value,
Appellants’ argument that Montgomery does not explicitly teach pre-
packaging a plurality of hairstyling tools as a “set.” Appellants’ argument,
and the majority’s uncritical acceptance of it, cannot be supported by the
record. Montgomery clearly teaches packaging and displaying indicia of
hairstyling tools as a “set.”
Referring to FIG. 10. a display card or package 144 is depicted
for a pair of combs having the intended purposes of trimming
and finishing hair as identified by the icons 82 and 84
respectively.
Montgomery, col. 5, ll. 41-44. The explicit reference to a “pair of combs”
satisfies the claim language directed to a “set” of hairstyling tools.
However, even apart from explicit disclosure of a “set” of tools in
Montgomery and even assuming, for the sake of argument, that Montgomery
only teaches the packaging of individual hairstyling tools (it does not), the
majority does not adequately explain why the Examiner is incorrect in
concluding that the invention is otherwise obvious. The majority’s reason
Appeal 2012-003968
Application 11/935,890

12
for reversing is that Montgomery purportedly does not disclose pre-
packaging hairstyling tools in “sets.” In my opinion, such reason is
inadequate to support a reversal, because it fails to take into account whether
the subject matter of the claim, as a whole, nevertheless would have been
obvious notwithstanding any differences between the prior art and the
claimed invention. Among other things, the majority fails to take into
account common sense and the degree of ordinary creativity possessed by a
person of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton”).
Since at least 2006, our supervising court has admonished patent
tribunals to avoid an overly rigid approach to determining obviousness. See
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed.Cir. 2006).
In KSR, the Supreme Court criticized a rigid approach to
determining obviousness based on the disclosures of individual
prior-art references, with little recourse to the knowledge,
creativity, and common sense that an ordinarily skilled artisan
would have brought to bear when considering combinations or
modifications. KSR, 550 U.S. at 415–22. Rejecting a blinkered
focus on individual documents, the Court required an analysis
that reads the prior art in context, taking account of “demands
known to the design community,” “the background knowledge
possessed by a person having ordinary skill in the art,” and “the
inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418.
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). The Federal
Circuit further admonishes patent tribunals that the obviousness inquiry “not
only permits, but requires, consideration of common knowledge and
common sense.” DyStar, 464 F.3d at 1367.
Appeal 2012-003968
Application 11/935,890

13
“Common sense teaches . . . that familiar items may have obvious
uses beyond their primary purposes . . . .” KSR, 550 U.S. at 420. In this
case, Montgomery already discloses how to pre-package, label, and display
hairstyling tools. Common sense dictates that it does not require an
inventive leap to place a “set” of hairstyling tools in a single package.
The marketing and merchandising of household retail items in “sets”
is so commonplace in our economy that we take it for granted every day that
we enter a retail store. When we go to a store for kitchen products, we do
not buy individual salt and pepper shakers, we buy the two items as a “set.”
When we go to a hardware store, we do not individually buy a ratchet handle
and sockets, we buy a pre-packaged “set” of socket wrenches. When we
shop for table settings, we typically do not buy knives, spoons, and forks
individually, rather, we buy them as pre-packaged “sets.” The same could
be said for cups and saucers. This list could go on and on and can be readily
verified by walking up and down the aisle of any grocery store, department
store, or hardware store.
In deciding to reverse, the majority has lost sight of the Supreme
Court’s admonition that the combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results. KSR at 416. The majority likewise has lost sight of the
Supreme Court’s admonition 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 at 418. “When there
is a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
Appeal 2012-003968
Application 11/935,890

14
good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.” KSR at 421.
In this case, the majority fails to consider the inferences and creative
steps that a person of ordinary skill in the art would employ and, instead,
begins and ends its analysis by accepting, at face value, Appellants’ factually
unsupported and incorrect argument that Montgomery fails to disclose
packaging hairstyling tools as a “set.” This represents precisely the sort of
“blinkered focus” that led the Federal Circuit to criticize the Board in
Randall, supra. In Randall, the Federal Circuit criticized the Board for
confining its obviousness analysis to only the applied references in a ground
of rejection while failing to take into account evidence from prior art of
record, but not applied in the specific grounds of rejection. See Randall, at
1362-1363. The Federal Circuit considered this as a failure by the Board to
appropriately consider the knowledge of one of skill in the art. Id. at 1363.
The point here is that if the Federal Circuit faulted the Board for failing to
consider evidence of record from non-applied references in the ground of
rejection in Randall, how much more should the majority in this case be
faulted for ignoring the plain teaching in Montgomery that it was known to
pre-package hairstyling tools in a “set.” 4
Among the inventions that the law deems obvious are those modest,
routine, everyday, incremental improvements of an existing product or
process that do not involve sufficient inventiveness to merit patent
protection. Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir.

4 As mentioned supra, Montgomery does disclose pre-packaged sets of
hairstyling tools. See Montgomery, Fig. 10, col. 5, ll. 41-44.
Appeal 2012-003968
Application 11/935,890

15
2009).5 Even ignoring the explicit disclosure in Montgomery of packaging
hairstyling tools in a “set,” Appellants’ invention in this case falls into that
category of modest, routine, everyday, incremental improvements that does
not merit patent protection.
Placing two hairbrushes instead of one in a single package does not
rise to the level a patentable invention. For the foregoing reasons, I
respectfully dissent.

5 It is not invention to produce a device that is within the realm of
performance of a skilled mechanic in the ordinary progress of producing a
device required to effectuate a given result. In re Venner, 262 F.2d 91, 95
(CCPA 1958).