Ex Parte Jager Lezer et al

Patent Trial and Appeal Board

Oct 22, 2018

13520474 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/520,474 12/13/2012
25944 7590 10/24/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Nathalie Jager Lezer
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
145970 3847
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHALIE JAGER LEZER, HENRI SAMAIN,
and VINCENT DE LAFORCADE
Appeal2017-004260
Application 13/520,474
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FRED MAN, and
DEBORAH KATZ, Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004260
Application 13/520,474
Appellants seek our review, under 35 U.S.C. § I34(a), of the
Examiner's decision to reject claims 16-31, 34, 36, and 37. 1 (See Appeal
Brief, filed June 13, 2016 ("App. Br.").) We have jurisdiction under 35
U.S.C. § 6(b ). We reverse.
The Examiner rejected claims 16-26, 28-31, 34, 36, and 37 as being
obvious under 35 U.S.C. § I03(a) over Clavin2 and Blackmore. 3 (See Final
Office Action, mailed February 12, 2016 ("Final Act.") 5-10.) The
Examiner also rejected claim 27 as being obvious under 35 U.S.C. § I03(a)
over Clavin, Blackmore, and Choe. 4 (See Final Act. 10-11.)
Appellant's specification is directed to a cosmetic method of
modifying the appearance of the outline of the eye, for example, raising
droopy eyelids. (Spec. 1 :3--4.) We reproduce Figure 12 of Appellants'
Specification below.
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t ................................. _ ................................................................. ,.,, ........................... _J
'F" 1·2· . IQ" • .·
Figure 12 shows a patch (1) placed on the movable upper eyelid (2) of an
eye. (See Spec. 24:21-22 and 35:28-34.) We reproduce Figure 13 below to
show the effect of patch (1).
1 Appellants report that the real party-in-interest is L'Oreal. (App. Br. 1.)
2 Clavin, US 4,653,483; issued March 31, 1987.
3 Blackmore and Jobe, US 5,542,437; issued August 6, 1996.
4 Choe, US 2005/0061341 Al; published March 24, 2005.
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Appeal2017-004260
Application 13/520,474
r -- · ·""'1
I 3 2 i
: \ ( I
i ... ~.:::.-~.- I !....-11·~
~ ~
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Fig .. 13
On the left, Figure 13 depicts an eye with a patch, wherein the moveable
upper eyelid is less droopy than the eye on the right. (See Spec. 36:3-8.)
Appellants' claim 16 recites:
A method of cosmetically modifying the appearance of
the outline of the eye, the method comprising:
applying at least one patch on a movable upper eyelid of
the eye, an application face of the at least one patch having a
predefined non-plane shape with multidirectional curvature
before application of the at least one patch on the movable
upper eyelid,
wherein the multi-directional curvature is in at least two
distinct planes about at least two distinct axes, and a thickness
in a central portion of the at least one patch is smaller than a
thickness at edges of the at least one patch.
(App. Br. A-1, Claims App'x.)
Like independent claim 16, Appellants' independent claim 34
includes a limitation to the shape of the patch, wherein "a thickness in a
central portion of the at least one patch is smaller than a thickness at edges
of the at least one patch." (App. Br. A-3, Claims App'x.)
Appellants cite to Figure 6G of their Specification, which we
reproduce below, to demonstrate this shape.
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Appeal2017-004260
Application 13/520,474
Figure 6G depicts a patch (1) with a recess (14) on one face of the patch.
(See Spec. 29:10-14.)
Clavin teaches using adhesive tape to non-surgically tuck in loose skin
on the upper eyelid. (See Clavin abstract.) The Examiner acknowledges
that Clavin does not teach a patch with a thinner central portion. (See Final
Act. 6-7.) The Examiner cites Blackmore to cure the deficiency. (See id.)
Blackmore teaches an eyelid weighing system for treatment of
lagophthalmos (the inability to fully close the eye). (See Blackmore
abstract.) The device of Blackmore can be secured to the exterior of the
eyelid. (See Blackmore 5:27-28.) The Examiner highlights the dimensions
of the device taught in Blackmore, for example it can have an edge with
tapered or contoured ends and a specific radius of curvature. (See Final Act
7 (citing Blackmore 3: 1-3, 4: 16-22).) Blackmore teaches further that the
thickness of this edge can be reduced to lower the profile of the device
where the eyelid skin is the thinnest or that, alternatively, the device may be
spherical. (See Blackmore 4: 16-34.) In general, the Examiner cites
Blackmore as establishing that varying lengths and widths may be
successfully used in an eyelid strip-type applicator. (See Answer, mailed
November 17, 2016 ("Ans.") 2.)
The Examiner determines that
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Appeal2017-004260
Application 13/520,474
[i]t would have beenprimafacie obvious to one of ordinary
skill in the art at the time the invention was made to adjust the
weight and thickness of an eyelid patch device as suggested by
Blackmore in the product of Clavin, with a reasonable
expectation of success. One would have been motivated to do
so to achieve desired weighting for comfortable wear on the
exterior of the eyelid in accordance with Blackmore's teaching
(see column 4, lines 3-15 in particular).
(Final Act. 8.) Thus, the Examiner relies on the reasons for choosing a
weight for the device of Blackmore as the reason for adjusting the weight
and thickness of the device of Clavin.
The Examiner also determines that the thinner central portion of the
patch in the claimed method would have been obvious because "modifying
the thickness of an eyelid strip patch product and its corresponding
application method as instantly claimed would have been nothing more than
an obvious rearrangement of parts, which is considered a design choice."
(Final Act. 3; see also Ans. 3--4.)
Appellants argue that Blackmore does not teach reducing the
thickness of the patch in a central portion, but instead, because it teaches
tapering the edges, Blackmore teaches reducing thickness at the edges. (See
App. Br. 8.) According to Appellants, Figure 5 of Blackmore, to which the
Examiner cites, teaches a shape opposite to what is claimed: reduced edge
thickness, rather than central portion, in order to lower the profile of the
implant within the lid where the skin is the thickest. (See App. Br. 7-8.)
According to Appellants, contrary to the Examiner's findings, Blackmore is
completely silent regarding various sized patch devices with a slightly
reduced thickness in the middle. (App. Br. 7.) We agree with Appellants
that tapered edges do not teach a shape having "a thickness in a central
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Appeal2017-004260
Application 13/520,474
portion of the at least one patch is smaller than a thickness at edges of the at
least one patch," as claimed.
In addition, Appellants argue that Clavin is directed to a patch for
lifting an upper eyelid that tends to droop, in contrast to Blackmore, which is
directed to a weighting device that lowers the upper eyelid and closes the
eye. (See App. Br. 9.) Appellants characterize the devices of Clavin and
Blackmore as aiming to achieve opposite results regarding the movement of
the upper eyelid. (See App. Br. 9.) Because of these opposite goals,
Appellants argue it would not have been obvious to combine the teachings
of Clavin and Blackmore. (See App. Br. 9.)
Although we agree with the Examiner that both Clavin and Blackmore
are in the same field of endeavor, we agree with Appellants that one of
ordinary skill in the art would not have reasonably combined their teachings.
(See Ans. 5; App. Br. 9.) Instead, the teachings of Blackmore would lead
the ordinarily skilled artisan in a different direction ( closing the eye) from
the teachings of Clavin (lifting the eyelid). (See Reply Brief, filed January
17, 2017, ("Reply Br.") 4.) "If references taken in combination would
produce a 'seemingly inoperative device,' we have held that such references
teach away from the combination and thus cannot serve as predicates for a
prima facie case of obviousness." McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1354 (Fed. Cir. 2001).
We also agree with Appellants that the Examiner erred in determining
that "the shape and configuration of the eyelid strip have not been shown,
with evidence, to materially affect the performance of the instantly claimed
method of modifying cosmetically the appearance of the outline of the eye
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Appeal2017-004260
Application 13/520,474
by applying the patch as further specified in the claims." (Ans. 4.) In
contrast, Appellants' Specification provides:
By means of the invention, the patch applied to the
movable upper eyelid may present a shape that is better adapted
to the shape of the movable upper eyelid, thus making it
possible simultaneously to provide comfort while the patch is
being worn and to facilitate utilization of the patch, depending
on each person's needs.
The invention may reduce the risk of folds forming, even
when applied to skin that is fine or old, or even if applied too
quickly. The patch may thus be applied more easily and without
taking great care.
The ergonomy of using the patch may also be improved
and adapted to each individual. As a result, the patch may be
put into place and removed quickly and instinctively. For
example, there is less risk of placing the wrong face of the
patch on the movable upper eyelid.
Furthermore, the curvature of the patch may make it
easier for the patch to adhere to the movable upper eyelid, this
making it possible under some circumstances to secure the
patch without using an adhesive, e.g. merely by surface tension,
or using an adhesive having low adhesive power. This may
make it easier to remove the patch, may irritate the skin less,
may stay in place better over time, and/or may make it easier to
reposition the patch on the movable upper eyelid.
The patch may be of stiffness and/or thickness that vary,
e.g. in order to obtain better effects in lifting the stationary
upper eyelid, for example.
(Spec. 4:20-5: 12; see also Reply Br. 5.) Even though the overall effect of
the claimed method and patch may be aesthetic, Appellants' Specification
explains that the shape of the patch is functional. Accordingly, we are
persuaded that the Examiner erred in considering the shape to be merely an
obvious aesthetic design choice.
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Application 13/520,474
Claim 27, which depends on claim 16 and was rejected over the
combination of Clavin, Blackmore, and Choe (see Final Act. 10-11),
requires the same thinner central portion as claim 16. For the same reasons
explained above, we are persuaded that the Examiner erred in rejecting
claim 27 as well.
Conclusion
Upon consideration of the record and for the reasons given, the
rejection of claims 16-31, 34, 36, and 37 under 35 U.S.C. § 103(a) as being
obvious over Clavin and Blackmore is not sustained.
Therefore, we reverse the decision of the Examiner.
REVERSED
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