Ex Parte Kearney

Board of Patent Appeals and Interferences

Sep 18, 2009

11100180 (B.P.A.I. Sep. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS KEARNEY
__________

Appeal 2009-0043621
Application 11/100,180
Technology Center 3700
__________

Decided: September 18, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of applying mascara to eyelashes. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Risdon International, Inc. is the real party in interest.
Appeal 2009-004362
Application 11/100,180

STATEMENT OF THE CASE
Claims 1-12 and 22-32 are pending and are on appeal (App. Br. 2).2
Claim 1 is representative and reads as follows:
1. A method of applying mascara to a user’s eyelashes,
comprising placing a brush having a twisted wire core, said
core having a brush end and a handle end, said brush end of
said core having flocking adhered thereto; and a plurality of
radially extending bristles retained by said twisted wire core;
into a container containing mascara and coating the flocking
and bristles of the brush with the mascara; and brushing the
user’s eyelashes with the brush to apply the mascara to the
user’s eyelashes.

Claims 1-12 and 22-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miraglia3 in view of Brandli4 (Ans. 3-4).
OBVIOUSNESS
ISSUE
The Examiner cites Miraglia as applying mascara with a brush that
has a twisted wire core (Ans. 3). The Examiner concedes that “Miraglia
does not disclose the wire core having flocking adhered to it” (id.).
However, the Examiner finds, Brandli discloses that “it is known in
the art to provide twisted wire core of a mascara brush with flocking to
prevent decomposition and oxidation of the wire core and to prevent the
bristles from becoming loose after prolonged period of time” (id.). Based on
these teachings, the Examiner concludes that an ordinary artisan would have

2 This document is not paginated. We therefore refer to page numbers as if
the document was paginated consecutively beginning with the first page.
3 WO 01/58309 A1 (published Aug. 16, 2001).
4 U.S. Patent No. 4,395,943 (filed Sep. 21, 1981).
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considered it obvious to “provide the twisted wire core of Miraglia with
flocking as taught by Brandli in order to prevent decomposition and
oxidation of the wire core and prevent the bristles from becoming loose after
prolonged period of time” (id.).
The Examiner further concludes that the length of the flocking fibers,
the bristle diameter, and the number of bristles per turn of the wire core
would have been optimized through routine experimentation, and that an
ordinary artisan would therefore have considered the claimed ranges of these
parameters obvious in view of the cited references (see id. at 4 (citing In re
Aller, 220 F.2d 454 (CCPA 1955))).
Appellant contends that “Brandli has no disclosure of using a brush
having a flocked coating in connection with a mascara product or other
cosmetic product” (App. Br. 4). Rather, Appellant argues, Brandli’s
“disclosure of a coated twisted wire is only described as a solution to the
problems of bare wire in interproximal toothbrushes. (Col 2, lines 8-38).
Most importantly, there is no teaching or suggestion that flocking, as
opposed to a plastic coating, would be useful in a mascara brush” (id. at 5).
Appellant also contends that Brandli “is not reasonably pertinent to
the problem with which the application was concerned” (id.). Specifically,
Appellant argues, “the purpose served by the coating in Brandli is for a
completely different purpose than the purpose served in the invention,”
which is to increase mascara loading capacity (Reply Br. 2).
Appellant further contends that the Examiner erred by interpreting the
claims as apparatus claims, rather than process claims (App. Br. 6).
Moreover, Appellant argues, the references cited by the Examiner would not
have motivated an ordinary artisan to practice the claimed process (id. at 6-
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7), much less arrive at the claimed flocking size and bristle density (Reply
Br. 4-5).
In view of the positions advanced by Appellant and the Examiner, the
issue with respect to this rejection is whether the Examiner erred in
concluding that an ordinary artisan viewing the cited references would have
considered it obvious to apply mascara using a brush having the claimed
features.
FINDINGS OF FACT (“FF”)
1. Miraglia discloses “a brush for the application of mascara to
eyelashes” (Miraglia 1).
2. Miraglia discloses:
The brush has a central core formed from a pair of twisted wire
segments. A plurality of radially extending bristles is secured
between the pair of twisted wire segments to form a brush
portion at an end of the core. The bristles are secured in a
quantity of from 4 to 27 bristles per turn of the twisted wire
segments. Each of the bristles has a diameter of from 8 mil to
18 mil . . . .

(Id. at 3.)
3. Brandli discloses that brushes in which the bristles are held between
two twisted wires “are well known in the cosmetic industry, for example, for
applying eyelash mascara or the like. Likewise, brushes of this type are used
in the cleaning of teeth, namely, in interdental spaces and between the gums
and dental bridges or the like” (Brandli, col. 1, ll. 13-18).
4. Brandli discloses:
In the cosmetics industry, it can be observed that, in the
case of rather old preparations or those that have not been used
for prolonged periods, decomposition can take place or the
wires of the brushes can be oxidized and the bristles are then no
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longer held sufficiently firmly and are caught on the eyelashes,
or the preparation can be adversely affected by the material of
the wire.

(Id. at col. 1, ll. 19-26.)
5. Brandli discloses that, in view of the shortcomings of prior art brushes
of this type:
[A]n object of the present invention is to provide a brush,
particularly one which is useful in the application of cosmetics
or as an oral cleansing brush, which comprises at least one
twisted wire having a plurality of filaments held between turns
of the twisted wire, and a layer of wear-resistant, electrically
insulating and soft elastic material covering the at least one
wire.

(Id. at col. 1, ll. 39-45 (emphasis added).)
6. Brandli discloses that the wire coating material can be “nylon or other
thermoplastic material, cross-linked material, such as polyurethane, in a
layer which is applied, sintered or glued to the wires or the layer can be
produced by flocking” (id. at col. 1, ll. 47-50 (emphasis added)).
7. Brandli discloses that, in one preferred embodiment, the brush is “is a
so-called Proxa or interproximal type toothbrush and it is used for cleaning
the interdental spaces” (id. at col. 2, ll. 9-10).
8. Brandli discloses that, in that embodiment, the brush’s twisted
stainless steel double wire is enclosed by an electrically insulating layer
composed of “a soft elastic and abrasion-resistant material, for example,
nylon or polyurethane. This layer can be applied as a lacquering by dipping
or spraying, or the insulating material can be in the form of a tube drawn
over the wire” (id. at col. 2, ll. 19-23).
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9. Brandli discloses that, in an alternative method “of producing the
[insulating] layer, the steel wire could also be flocked, after dipping in an
adhesive composition, with fibers of one of the materials mentioned” (id. at
col. 2, ll. 28-30).
10. Brandli discloses:
Such an insulation prevents the bare steel wire from
being exposed to its surroundings and from causing galvanic
effects on fillings and on dentine-free areas of the tooth.
Moreover, the soft elastic nature of the applied layer provides a
certain degree of safety against injury to both the gums and to
the dentine, such as would be entirely possible with the steel
wires which are now used bare.

(Id. at col. 2, ll. 31-38.)
PRINCIPLES OF LAW
As the Supreme Court pointed out in KSR Int' l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Rather, the Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added).
While it recognized the importance of pointing to some rationale for
practicing the claimed subject matter, the Court also reaffirmed that “when a
patent ‘simply arranges old elements with each performing the same
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function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)).
The Court also noted that “[i]n determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.” Id.
at 419. Thus, as the Federal Circuit has stated, “the law does not require that
the references be combined for the reasons contemplated by the inventor.”
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
Our reviewing court has also stated that when evaluating claims for
obviousness, “the prior art as a whole must be considered. The teachings are
to be viewed as they would have been viewed by one of ordinary skill.” In
re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). Accordingly, “‘[i]t is
impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position, to the
exclusion of other parts necessary to the full appreciation of what such
reference fairly suggests to one of ordinary skill in the art.’” Id. (quoting In
re Wesslau, 353 F.2d 238, 241 (CCPA 1965)).
Thus, “in a section 103 inquiry, ‘the fact that a specific [embodiment]
is taught to be preferred is not controlling, since all disclosures of the prior
art, including unpreferred embodiments, must be considered.’” Merck &
Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).

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ANALYSIS
Appellant’s arguments do not persuade us that the Examiner erred in
concluding that an ordinary artisan viewing the cited references would have
considered it obvious to apply mascara using a brush having the claimed
features.
Claim 1 recites a method of applying mascara to a user’s eyelashes
using a brush having a twisted wire core. The core has a plurality of radially
extending bristles retained by the twisted wire. The twisted wire core also
has flocking adhered to it.
Both Miraglia and Brandli disclose that twisted wire core brushes with
bristles retained in the wire were known to be conventional in the art of
applying mascara (see FF 1-3). Brandli further discloses that decomposition
of the brushes’ wire cores can be caused by old or seldom used cosmetic
preparations, which in turn can cause bristles to be lost from the core,
resulting in their being caught on the eyelashes (FF 4). Brandli also
discloses that the material of the wire core can adversely affect the mascara
preparation (id.).
To avoid these problems associated with mascara brushes, Brandli
discloses that it is desirable to coat the brushes’ inner wire with a wear
resistant electrically insulating material that can be applied by flocking (see
FF 5-6). In view of Brandli’s disclosure of the desirability of applying
flocking to the twisted wire core of a mascara brush, we agree with the
Examiner an ordinary artisan would have been prompted to use that brush to
apply mascara in the manner recited in claim 1.
We acknowledge Brandli’s disclosure that the flocking is useful for
avoiding undesirable interactions between a bare wire brush core and fillings
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or dentine-free areas on teeth (FF 10). However, Brandli also explicitly
discloses that its coating is desirable on cosmetics brushes (FF 5), and
immediately following that disclosure states that one method of coating the
inner wire core is by flocking (FF 6). We are therefore not persuaded that
Brandli fails to suggest using its flocking methods to apply a coating to the
inner wire of a mascara brush.
Moreover, while Appellant’s purpose in using the flocking may be
different than Brandli’s stated purposes of avoiding bristle loss and
preventing degradation of mascara compositions (FF 4), that fact does not
negate the disclosure in Brandli that it is desirable to apply flocking to the
twisted wire cores of mascara brushes. As noted above, the fact that
Appellant’s reason for practicing the claimed subject matter is different than
the prior art’s reason does not render the claims unobvious. See KSR, 550
U.S. at 419; see also In re Beattie, 974 F.2d at 1312.
In sum, Appellant’s arguments do not persuade us that the Examiner
failed to make a prima facie case of obviousness with respect to claim 1.
We therefore affirm the Examiner’s rejection of claim 1 as being obvious
over Miraglia and Brandli. Because Appellant did not present any specific
separate arguments with respect to claims 5-8, 22 and 24-32, they fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 2-4 read as follows:
2. The method of claim 1 wherein said flocking comprises fiber
strands having a length of about .020 inch to about .150 inch.

3. The method of claim 1 wherein said flocking comprises fiber
strands having a length of about .040 inch to about .080 inch.

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4. The method of claim 1 wherein said flocking comprises fiber
strands having a length of about .045 inch to about .060 inch.

Appellant contends that the flocking fiber lengths recited in claims 2-4
are “not simply a matter of routine skill, but [are] rather a critical part of the
invention whereby it affects the carrying capacity of the mascara device”
(App. Br. at 7-8). Moreover, Appellant argues, “[s]elf-evidently, the
flocking size ranges desirable to reduce corrosion would be different from
the ranges preferred to increase mascara loading” (Reply Br. 4).
Specifically, Appellant urges, “[c]orrosion resistance will typically be
best obtained by a thin coating which will be less susceptible to damage. A
flocked coating intended to address corrosion resistance will be most
effective if it uses shorter flocking to allow a more uniform coating for
protection of the wires” (id.). Therefore, Appellant argues, “‘routine
experimentation to determine optimum results’ using the disclosures of
Brandli and Miraglia would lead to a different selection of flocking size and
bristle density than specified by the claims” (id.).
We are not persuaded by these arguments. While it may be true that
neither cited reference discloses using fibers having the claimed lengths,
Brandli in fact discloses that the flocking can be applied in the form of fibers
(FF 9) whose suitable size must, of course, be determined by the
practitioner.
Thus, while Appellant urges that optimizing the fiber lengths to
achieve corrosion resistance according to Brandli’s disclosure would not
result in the claimed sizes, Appellant has provided no evidence in support of
that assertion, nor has Appellant demonstrated that the claimed fiber lengths
would be unsuitable to protect the wire core of a mascara brush as taught by
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Brandli. We therefore do not agree with Appellant that the Examiner failed
to make a prima facie case of obviousness with respect to claims 2-4.
We note that, “[i]n general, an applicant may overcome a prima facie
case of obviousness by establishing ‘that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.’” In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) (quoting In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)).
However, Appellant does not point to any evidence suggesting that the
claimed ranges of flocking fiber lengths provide any result, with respect to
mascara loading or otherwise, that an ordinary artisan would consider to be
unexpected.
We are therefore not persuaded that the Examiner erred in concluding
that an ordinary artisan would have considered claims 2-4 obvious in view
of Brandli and Miraglia, and accordingly affirm the Examiner’s rejection of
those claims as obvious over those references.
Claim 9 reads as follows:
9. A method of applying mascara to a user’s eyelashes,
comprising placing a brush having a twisted wire core, said core
having a brush end and a handle end, said brush end of said core
having flocking adhered thereto, said flocking being formed from
fiber strands having a length of about .020 inch to about .150 inch;
and a plurality of radially extending bristles retained by said twisted
wire core, said bristles having a diameter of about .003 inch to about
.012 inch and a bristle density of about 7 bristles per turn to about 50
bristles per turn; into a container containing mascara and coating the
flocking and bristles of the brush with the mascara; and brushing the
user’s eyelashes with the brush to apply the mascara to the user’s
eyelashes.

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Appellant argues that “[n]either Miraglia nor Brandli discloses or
suggests this density of bristles per turn and Claim 9 should be allowable
over the art of record for this additional reason” (App. Br. 9).
We are not persuaded by this argument. The Federal Circuit has
stated that, “[i]n cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d at 1329.
In the instant case the claimed range of 7 to 50 bristles per turn clearly
overlaps the range of 4 to 27 bristles per turn disclosed by Miraglia as being
suitable for mascara brushes (FF 2). We are therefore not persuaded that the
Examiner has failed to make a prima facie case with respect to claim 9.
Because Appellant does not point to any evidence showing that the
claimed number of bristles per turn provides an unexpected result, we affirm
the Examiner’s rejection of claim 9 as being obvious over Miraglia and
Brandli. Claims 10-12 and 23, which depend ultimately or directly from
claim 9 were not argued separately, and therefore fall with claim 9. See 37
C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner’s rejection of claims 1-12 and 22-32 under
35 U.S.C. § 103(a) as being unpatentable over Miraglia in view of Brandli.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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