Ex Parte Merlino

Patent Trial and Appeal Board

Jan 28, 2013

11899944 (P.T.A.B. Jan. 28, 2013)

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.
11/899,944 09/10/2007 Bernard Merlino 902-001 7047
1026 7590 01/28/2013
CLIFFORD G. FRAYNE
136 DRUM POINT RD
SUITE 7A
BRICK, NJ 08723
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/28/2013 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 BERNARD MERLINO
____________________

Appeal 2010-011128
Application 11/899,944
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN,
and JEREMY M. PLENZLER, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011128
Application 11/899,944

2
STATEMENT OF CASE
Bernard Merlino (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4, and 5. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed generally “to scissors and other
scissor-like implements, and in particular to scissors designed for trimming
nose hair, which scissors would include an illumination means mounted
thereon.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A scissor assembly for trimming nose hair
with attached illumination means comprising:
a scissor assembly for trimming nose hair
with two complimentary longitudinal members,
each member comprising a handle portion, a shank
portion, and a blade portion, said two
complimentary longitudinal members secured at a
pivot point, an illumination means secured to one
of the shank portions proximate to said pivot point,
said illumination means for illuminating the
nostrils of the nose, and the nose hair therein, said
illumination means comprising a housing member,
said housing member containing a battery
compartment, a switch means, and a light emitting
diode, said light emitting diode positioned in said
housing member, and facing said blade portion of
said complimentary longitudinal members.

Appeal 2010-011128
Application 11/899,944

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Karram US 6,428,180 B1 Aug. 6, 2002
Dallas US 2005/0105286 A1 May 19, 2005

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1 and 5 stand rejected under 35 U.S.C §102(b) as being
anticipated by Karram. Ans. 3.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karram and Dallas. Ans. 3.

ANALYSIS
Anticipation by Karram
As stated by the Examiner, Karram teaches every structural limitation
contained in both of claims 1 and 5. See Ans. 3-4. As the Examiner further
states, and we agree, “[A]ppellant’s only argument is that the Karram
scissors do not specifically state that they are capable of cutting nose hairs.”
Ans. 5. Appellant solely emphasizes the specific surgical uses disclosed by
Karram, which admittedly are different from the claimed use as a nose hair
trimmer, but such argument is unpersuasive. See App. Br. 9-12. In
response, the Examiner correctly points out “that a recitation of the intended
use of the claimed invention must result in a structural difference between
the claimed invention and the prior art in order to patentably distinguish the
claimed invention from the prior art” and that “[i]f the prior art structure is
capable of performing the intended use, then it meets the claim.” Ans. 5-6.
Appeal 2010-011128
Application 11/899,944

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See also In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (finding
that the absence of a disclosure in a prior art reference relating to function
did not defeat the Board’s finding of anticipation of a claimed apparatus
because the limitations at issue were found to be inherent in the prior art
reference). Further, “apparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Appellant has not pointed to any such structural
difference in the claims that would differentiate the invention from Karram,
nor does (or could) Appellant state that Karram’s scissors are incapable of
trimming nose hairs as asserted by the Examiner. As such, we sustain the
rejection of claims 1 and 5 as anticipated by Karram.
Obviousness over Karram and Dallas
The Examiner rejects claim 4, which requires that “the battery source
comprises lithium batteries,” over the combination of Karram and Dallas.
See Ans. 4-5. As the Examiner correctly states, “Appellant has not supplied
any arguments to refute the obviousness rejection of claim 4, as being
unpatentable over Karram in view of Dallas.” Ans. 7. Appellant merely
recasts the argument with respect to intended use, which we have already
rejected, and applies it against the obviousness rejection. See App. Br. 16-
17. Nowhere does Appellant even mention the aspect in claim 4 relating to
battery type, which is the basis for the Examiner’s combination of Dallas
with Karram. Accordingly, we sustain the rejection of claim 4 as obvious
over Karram and Dallas.
Appeal 2010-011128
Application 11/899,944

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DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1, 4, and 5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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