Ex Parte Kurek et al

Board of Patent Appeals and Interferences

Aug 3, 2010

11124484 (B.P.A.I. Aug. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN S. KUREK and DAVID CERUTTI
____________

Appeal 2009-008000
Application 11/124,484
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 11/124,484

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STATEMENT OF THE CASE
John S. Kurek and David Cerutti (Appellants) appeal under 35 U.S.C.
§ 134 (2002) from the Examiner’s decision finally rejecting claims 1-13
under 35 U.S.C. § 103(a) as unpatentable over Schefer (US 4,662,385,
issued May 5, 1987) and Gueret (US 2004/0226573 A1, published Nov. 18,
2004). We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a brush 1 for applying mascara
including a perforated sleeve 3 that covers the brush. Spec. 1, ll. 6-7 and
figs. 1 and 2.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A brush assembly for applying a cosmetic
product to hair in combination with a container
initially holding the cosmetic product, the brush
comprising:

a sleeve having a longitudinal axis and at
least one perforation, and

a brush removably insertable into the sleeve,
the brush having a plurality of bristles forming
brush portions that extend through the at least one
perforation wholly within the cylindrical surface of
the sleeve;

wherein the at least one perforation acts as a
reservoir for the cosmetic product when the brush
is withdrawn from the container; and

wherein the at least one perforation
comprises a major side that is not collinear with
the longitudinal axis of the sleeve.

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SUMMARY OF DECISION
We REVERSE.
OPINION
Each of independent claims 1 and 13 requires a sleeve having at least
one perforation “wherein the at least one perforation comprises a major side
that is not collinear with the longitudinal axis of the sleeve.” See App. Br.,
Claims Appendix. The Examiner found, and Appellants do not dispute, that
Schefer discloses all the features of independent claims 1 and 13 with the
exception that, “the least one perforation comprises a major side that is not
collinear with the longitudinal axis of the sleeve.” See App. Br. 8 and Ans.
3. Pointing to Paragraph [0029] of Gueret, the Examiner further found that
“Gueret teaches having the perforations comprise a major side that is not
collinear with the longitudinal axis of the sleeve.” Ans. 4.
Appellants argue that the openings through which the bristles of
Gueret pass and leave the support are filled during an overmolding process
and as such do not constitute “perforations,”2 but merely exit points for the
bristles. Reply Br. 3.
The Examiner responds that, “Gueret is used merely as a teaching
reference to show that the device can comprise a major side that is not
collinear with the longitudinal axis of the sleeve” and that “Schefer is used
to show perforations.” Ans. 4-5.

2 According to Appellants, “[t]he dictionary definition of perforation is
‘A hole or series of holes punched or bored through something, especially a
hole in a series, separating sections in a sheet or roll.’ The American
Heritage® Dictionary of the English Language, Fourth Edition Copyright ©
2007, 2000 by Houghton Mifflin Company.” App. Br. 11.
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We begin our analysis by construing the limitation “at least one
perforation comprises a major side.” Appellants’ Specification does not
expressly define the terms “major” and “side” or otherwise indicate that
these terms are used in a manner other than their ordinary and customary
meaning. We find that an ordinary and customary meaning of the term
“major” that is most consistent with the Specification and the understanding
of those of ordinary skill in the art is “greater in number, quantity, or
extent.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
Similarly, we find that that an ordinary and customary meaning of the term
“side” is “one of the longer bounding surfaces or lines of an object esp.
contrasted with the ends.” Id. Hence, we construe a major side of a
perforation to mean the longest bounding surface of the perforation.
With respect to Schefer, it is readily apparent that the longest
bounding surface (side) of slits 15, 25, 55 (perforations) is collinear with the
longitudinal axis of tubular shroud 13, 23, 53 (sleeve). Schefer, figs. 1, 2,
and 5. Further, it is our finding that the axes of bristles 56 of Schefer are
oriented in a substantial perpendicular direction to the longitudinal axis of
rigid wire support 57, which coincides with the longitudinal axis of tubular
shroud 53. Schefer, fig. 5. Furthermore, as the Examiner noted, Gueret
specifically discloses that the axes of the openings through which the bristles
pass and leave the support are directed obliquely or perpendicular to the
longitudinal axis X of the support. See Gueret, para. [0029] and fig. 4. See
also Ans. 4. Hence, like Schefer, the axes of Gueret’s bristles (which
coincide with the axes of the openings) likewise are oriented in a
perpendicular direction to the longitudinal axis of the support. Gueret, fig.
4. As such, both Schefer and Gueret disclose similar structures having
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bristles oriented in a perpendicular direction to the longitudinal axis of the
support. The Examiner has failed to specifically identify which portion of
Gueret’s openings constitutes a major side that is not collinear with the
longitudinal axis X of the support (sleeve), as required by each of
independent claims 1 and 13. If assuming, arguendo, that the Examiner
considers the axes of the Gueret’s openings (which coincide with the axes of
the bristles) to constitute the claimed major side, then Gueret’s disclosure
does not improve on Schefer, because as shown above, Schefer already
discloses bristles oriented in a perpendicular direction to the longitudinal
axis X of the support (sleeve). If however, the Examiner considers the
arcuate boundary of Gueret’s openings to constitute the claimed major side,
then Gueret fails to disclose the claimed limitation because the openings are
in a plane collinear to the longitudinal axis X of the support. See Gueret, fig.
4.
Therefore, the Examiner’s conclusory statement based on Paragraph
29 of Gueret that, “Gueret is used merely as a teaching reference to show
that the device can comprise a major side that is not collinear with the
longitudinal axis of the sleeve” is insufficient to communicate the structure
on which the Examiner relies to satisfy the claim limitation. Moreover,
since both Schefer and Gueret disclose similar structures, we fail to see how
or in what manner Schefer is proposed to be modified by Gueret so that “the
least one perforation comprises a major side that is not collinear with the
longitudinal axis of the sleeve,” a modification asserted by the Examiner as
something that would have been obvious to a person of ordinary skill in the
art. In other words, it is unclear at best how the Examiner is proposing to
modify the Schefer structure according to Gueret so that “the least one
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perforation comprises a major side that is not collinear with the longitudinal
axis of the sleeve.”
In conclusion, the modification proposed by the Examiner of
modifying the perforations of Schefer so as to have a major side that is not
collinear with the longitudinal axis of the sleeve would not have been
obvious to the person of ordinary skill in the art. Accordingly, the rejection
of independent claims 1 and 13, and dependent claims 2-12, cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

SUMMARY
The decision of the Examiner to reject claims 1-13 is reversed.

REVERSED

Klh

AVON PRODUCTS, INC.
AVON PLACE
SUFFERN, NY 10901