Ex Parte Levy et al

Patent Trial and Appeal Board

Dec 12, 2016

12608709 (P.T.A.B. Dec. 12, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
LEVY-004 6971
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
12/608,709 10/29/2009
21884 7590 12/12/2016
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
Frank Levy
12/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK LEVY and DARREN LEVY
Appeal 2015-001572
Application 12/608,709
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 13, 15, and 17—22. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001572
Application 12/608,709
THE INVENTION
Appellants’ invention relates to artist/make-up brushes. Spec. 1.
Claim 15, reproduced below, is illustrative of the subject matter on appeal.
15. A brush kit comprising:
a device for releasably holding a single one of a plurality of
brush tips, said device including a mandrel and a quick connect/
disconnect for releasably and interchangeably attaching a
selected one of said brush tips to said mandrel, said quick
connect/ disconnect including a single magnet carried by said
mandrel and a metal attraction plate on a proximal end of each
said brush tip;
a case for containing said mandrel and said brush tips, said
case having an interconnected base and cover, said cover for
being selectively opened and closed relative to said base, said
case further containing an ultraviolet light source; and
means responsive to closure of said cover relative to said
base for activating said ultraviolet light source to sanitize brush
tip bristles contained within said case.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Aversa US 3,268,939 Aug. 30, 1966
Marston US 4,135,269 Jan. 23, 1979
Kim US 5,926,903 July 27, 1999
Motherhead US 6,070,597 June 6, 2000
Bonin US 2003/0034459 A1 Feb. 20, 2003
Riddell US 2006/0175554 A1 Aug. 10, 2006
The following rejections are before us for review:
1. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim and Motherhead.
2. Claims 15, 17, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kim, Motherhead, Riddell and Bonin.
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3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kim, Motherhead, Riddell, Bonin, and Marston.
4. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Motherhead, Riddell, Bonin, and Aversa.
OPINION
Unpatentability of Claim 13
The Examiner finds that Kim discloses a method for applying makeup
substantially as claimed except for the magnetic disconnect mechanism
limitation. Final Action 2. The Examiner relies on Motherhead as
disclosing the use of magnets in a quick disconnect mechanism. Id. at 2—3.
The Examiner notes that Motherhead differs from the claimed invention in
that locations of the magnet and metal plate, respectively, are reversed. Id.
at 3. The Examiner finds that reversing such parts for purposes of the
rejection involves only routine skill in the art. Id. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Kim with the known technique of
providing a magnetic disconnect mechanism. According to the Examiner, a
person of ordinary skill in the art would have done this to provide a
mechanism that allows a user to more easily attach a brush tip. Id.
Appellants traverse the Examiner’s rejection by arguing against the
combinability of Kim and Motherhead. Appeal Br. 8—11. Appellants argue
that Motherhood’s disconnect mechanism is for the purpose of removing a
handle from a hair brush so that it may be used as both a brush and a curler.
Id. Appellants contend that such a purpose is unrelated to the device of
Kim, so that there is no proper rationale for applying the teachings of
Motherhead to Kim. Id., Reply Br. 2. Appellants also argue that the
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Examiner’s reason for combining the references is “conclusory” and that
“something more” is required to establish a prima facie case of obviousness.
Appeal Br. 10. Appellants assert that a motivation to combine references,
and a reasonable expectation of success in doing so, “must be found in the
prior art.” Id.
In response, the Examiner states that, notwithstanding the immediate
purpose disclosed therein, Motherhead demonstrates that it was old and well
known in the art to attach a brush to a handle using a magnetic disconnect
mechanism. Ans. 2. We agree.
Kim discloses a make-up brush comprised of a stem and a separate,
replaceable, brushing head. Kim, Abstract. A user of Kim’s device can
select a stem and brushing head from a group of various stems and brushing
heads to assemble a brush. Id. Kim’s means of connecting and
disconnecting the stem and brushing head is a threaded screw bolt and
mating screw hole. Kim col. 2,11. 29-42, Figs. 3—5.
Motherhead discloses a hair styling system having a plurality of hair
styling pieces and a handle. Motherhead, col. 2,11. 21—26. The hair styling
piece and handle are held together with magnets and material that is
attracted to the magnets. Id.
In operation, handle 14 may be attached, removed, and in
particular reattached with ease to one styling piece 12 . . . One
of the main advantages of using a magnetic attachment system
is the ease with which users who are styling their own hair may
reattach handle 14 to styling piece 12 . . .
Id. col. 4,11. 11-20.
Appellants’ argument regarding the alleged “purpose” of Motherhead
is not persuasive. It is well settled that it is not necessary for the prior art to
serve the same purpose as that disclosed in Appellants’ Specification in
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order to support the conclusion that the claimed subject matter would have
been obvious. See In reLinter, 458 F.2d 1013, 1016 (CCPA 1972); “A
reference may be read for all that it teaches, including uses beyond its
primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012),
citing KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418-21 (2007).
In 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. One of the ways in which a patent's
subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which
there was an obvious solution encompassed by the patent's
claims.
KSR, 550 U.S. 419-20. Here, the prior art shows that magnetic disconnect
mechanisms are an obvious solution to the known problem of providing a
quick-disconnect feature between a handle and the operating end of a hand­
held device.
We are similarly unpersuaded by Appellants’ argument that a
motivation to combine and a reasonable expectation of success must be
found in the cited references. The obviousness analysis is not confined by
overemphasis on the importance of published articles and the explicit
content of issued patents. See id. (“The diversity of inventive pursuits and
of modem technology counsels against limiting the analysis in this way”).
Thus, a reason to modify a prior art reference may be found explicitly or
implicitly in market forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent”; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
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Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328—29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418—21)). An implicit motivation to
combine exists when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Dystar Textilfarben GmBH & Co,
v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). In the instant
case, the Examiner articulated a sufficient, non-hindsight reason for making
the proposed combination. Final Action 3 (“allows easier attachment”).
With respect to Appellants’ expectation of success argument, the
obviousness inquiry requires a determination that a skilled artisan would
have been motivated to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so. Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The presence
or absence of a motivation to combine references in an obviousness
determination is a question of fact. See Par Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). “The reasonable expectation of
success requirement refers to the likelihood of success in combining
references to meet the limitations of the claimed invention.” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). In other words, “one must have a motivation to combine
accompanied by a reasonable expectation of achieving what is claimed in the
patent-at-issue.” Id.
In the instant case, the Examiner finds that the result of modifying
Kim with a magnetic disconnect mechanism is predictable or, in other
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words, success would have been reasonably expected. Ans. 4. The fact that
Motherhead teaches that a device (hair brush) similar to Appellants’ device
(make-up brush) can be quickly disconnected and reconnected using a
magnetic mechanism is strong evidence that a person of ordinary skill in the
art would have reasonably expected to achieve success by modifying Kim’s
make-up brush with Motherhead’s disconnect feature. See Motherhead,
Fig. 2, col. 4,11. 1—10. In the absence of any evidence from Appellants that
their invention achieves unexpected results, we are not apprised of error with
respect to the Examiner’s findings of fact or conclusion of unpatentability.
In view of the foregoing discussion, we sustain the Examiner’s
unpatentability rejection of claim 13.
Unpatentability of Claims 15, 17, and 19
over Kim, Motherhead, Riddell and Bonin.
Appellants argue claims 15, 17, and 19 as a group. Appeal Br. 11—12.
We select claim 15 as representative. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015). Claim 15 is an independent claim and differs from claim 13, among
other things, in that it is an apparatus claim. Claims App.
In traversing the rejection of claim 15, Appellants rely solely on the
same arguments regarding combining Motherhead’s magnetic disconnect
mechanism with Kim that we considered and found unpersuasive with
respect to claim 13 and we find are equally unpersuasive here.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 15, 17, and 19.
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Unpatentability of Claim 18
over Kim, Motherhead, Riddell, Bonin, and Marston
Appellants do not argue for the separate patentability of claim 18
apart from arguments presented with respect to claim 15 which we have
previously considered. See Appeal Br. 12. We sustain the rejection of
claim 18.
Unpatentability of Claims 20—22
over Kim, Motherhead, Riddell, Bonin, and Aversa.
Claim 20
Claim 20 depends from claim 15 and adds the limitation: “wherein
said device includes said mandrel slidably mounted within a casing for
permitting extension and retraction of said mandrel.” Claims App. The
Examiner relies on Aversa as teaching a mandrel slidably mounted within a
casing for controlling movement of the mandrel. Final Action 5. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify Kim’s device
with a slidable mandrel, as taught by Aversa, to achieve the invention of
claim 20. Id. at 5—6. According to the Examiner, a person of ordinary skill
in the art would have done this to provide a device that better protects the
brush tips when not in use. Id. at 6.
Appellants challenge the Examiner’s reason for combining the cited
references as inadequate. Appeal Br. 13 (“Such an explanation fails to
provide a showing of some suggestion or motivation to modify the reference
or to combine reference teachings or a reasonable expectation of success in
modifying the primary reference based upon the teachings of the prior art”).
Appellants argue that the Examiner’s rationale merely indicates that one
element is known in the art and, because of this fact, it would be obvious to
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combine it with a base reference. Id. Appellants accuse the Examiner of
failing to take the totality of the claim into account. Id. Appellants contend
that “[m]ore than this is required to establish a rejection under 35 U.S.C.
§ 103.” Id. Finally, Appellants take note that the Examiner’s rejection is
based on a combination of five references and argue that “[wjhen it is
necessary to combine 5 references to meet a brush kit one of ordinary skill in
the art would seriously question the actual obviousness of combining the
references.” Id.
Appellants’ argument regarding the comb inability of Aversa is not
persuasive. Aversa demonstrates that a person of ordinary skill in the art
would have been familiar with the principals involved in protecting device
components by making them retractable. Aversa, Fig. 1—4. As found by the
Examiner, the prospect of protecting device components by making them
retractable is sufficient motivation to make the combination. Final Action 6.
Appellants’ argument regarding the number of references in the
proposed combination (five) is not persuasive. The Federal Circuit has long
established that:
The criterion, however, is not the number of references, but
what they would have meant to a person of ordinary skill in the
field of the invention. In Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1383, (Fed. Cir. 1986), cert,
denied, 480 U.S. 947 (1987), the court held that a combination
of about twenty references that "skirt[ed] all around" the
claimed invention did not show obviousness. In other
instances, on other facts, we have upheld reliance on a large
number of references to show obviousness. Compare In re
Miller, 159 F.2d 756, 758-59 (CCPA 1947) (rejecting argument
that the need for eight references for rejection supported
patentability) with Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144,
1149 (Fed. Cir. 1983) (where teachings relied upon to show
obviousness were repeated in a number of references, the
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conclusion of obviousness was strengthened). See also, e.g., In
re Troiel, 274 F.2d 944, 947 (CCPA 1960) (rejecting appellant's
argument that combining a large number of references to show
obviousness was "farfetched and illogical").
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Thus, the mere fact that
the Examiner relies on five references to reject claim 20, without more, does
not establish error in making the rejection. Id.
We sustain the Examiner’s unpatentability rejection of claim 20.
Claim 21
Appellants do not argue for the separate patentability of claim 20
apart from arguments presented with respect to claim 21 which we have
previously considered. We sustain the examiner’s unpatentability rejection
of claim 21.
Claim 22
Claim 22 depends from claim 13 and adds the limitation: “wherein
the brush device includes a mandrel slidably mounted within a casing for
permitting extension and retraction of said mandrel, and further including
the step of selectively retracting either said first brush tip or said second
brush tip within the casing.” Claims App. As with the limitation in
claim 20, the Examiner relies on Aversa as teaching this limitation of
claim 22. Final Action 5—6.
In traversing the rejection, Appellants acknowledge that the
limitations of claims 20 and 22 are “similar.” Appeal Br. 12. Appellants
then group their arguments for claims 20 and 22 together. Id. at 12—13.
For essentially the same reasons discussed above with respect to
claim 20, we sustain the Examiner’s unpatentability rejection of claim 22.
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DECISION
The decision of the Examiner to reject claims 13, 15, and 17—22 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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