Ex Parte Kurek et alDownload PDFBoard of Patent Appeals and InterferencesAug 3, 201011124484 (B.P.A.I. Aug. 3, 2010) Copy Citation 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. Appeal 2009-008000 Application 11/124,484 2 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of the sleeve; wherein the at least one perforation acts as a reservoir for the cosmetic product when the brush is withdrawn from the container; and wherein the at least one perforation comprises a major side that is not collinear with the longitudinal axis of the sleeve. Appeal 2009-008000 Application 11/124,484 3 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. Appeal 2009-008000 Application 11/124,484 4 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 Appeal 2009-008000 Application 11/124,484 5 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 Appeal 2009-008000 Application 11/124,484 6 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. 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