Ex Parte Montoli

Board of Patent Appeals and Interferences

Jul 20, 2009

11357886 (B.P.A.I. Jul. 20, 2009)

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.
11/357,886 02/17/2006 Antonio Montoli 00512-P0067B 5620
24126 7590 07/21/2009
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
07/21/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANTONIO MONTOLI
__________

Appeal 2009-003520
Application 11/357,886
Technology Center 3700
__________

Decided:1 July 20, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-11. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003520
Application 11/357,886

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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A mascara application system, comprising:
a brush for applying mascara to eyelashes having a single twisted wire
core holding a plurality of radially extending nylon or polyester bristles to
form a brush at an end of the core, said bristles having a diameter, said
bristles being provided at a bristle density, said bristle density range being
selected dependent on the bristle diameter, wherein if said bristles have a
diameter of about .0001 inch to .00049 inch said bristle density is 200 - 60
bristles per turn, and if said bristles have a diameter of about .0005 inch to
.00099 inch said bristle density is 180 - 40 bristles per turn, and if said
bristles have a diameter of about .001 inch to .0019 inch said bristle density
is 175-30 bristles per turn, and if said bristles have a diameter of about .002
inch to .0029 inch said bristle density is 120-22 bristles per turn; and
a lower viscosity mascara product having a viscosity of 120,000
centipoise or less provided on said brush.

The Examiner relies on the following evidence:
Leone U.S. 5,611,361 Mar. 18, 1997
Scancarella U.S. 6,726,900 B2 Apr. 27, 2004
Neuner U.S. 6,279,583 B1 Aug. 28, 2001
Fonseca et al. U.S. 2002/0088473 A1 Jul. 11, 2002

The following grounds of rejection are before us for review:
Claims 1, 5-7, and 11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Leone and Scancarella; and
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Neuner, Fonseca, and Scancarella.

We affirm.

Appeal 2009-003520
Application 11/357,886

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PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
Under the correct obviousness analysis, “any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR, 550 U.S. at 420. Thus, for a prima facie case of obviousness to be
established, the references need not recognize the problem solved by
Appellants. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
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Application 11/357,886

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cannot be the basis for patentability when the differences would otherwise
be obvious.”)
“In cases involving ranges . . . even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). In addition, as noted by the Peterson, “[t]he
normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of percentage ranges is the optimum combination of percentages.” Id. at
1330; see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).

ISSUE (Leone and Scancarella)
The Examiner concludes that claims 1, 5-7, and 11 are rendered
obvious by the combination of Leone and Scancarella.
Appellant contends that the ordinary artisan would not have combined
the references as suggested by the Examiner, and that the conditions for
establishing a rapid and effective application with a low viscosity mascara
are not disclosed by either of the cited references and thus the general
conditions of the claim are not disclosed by the prior art.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in combining the references to arrive at the claimed
invention?

Appeal 2009-003520
Application 11/357,886

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FINDINGS OF FACT
FF1 The Specification notes that twisted wire brushes for liquid-type
cosmetics, such as mascara, are well known in the art (Spec. ¶3). The
Specification teaches further that the bristles of such brushes are usually
comprised of nylon filaments (id. at ¶6).
FF2 According to the Specification:
Very recently, there has been a new trend in mascara
formulations, towards a more fluid product. This product
requires a completely different mascara brush than the types of
brushes which have [been] proposed in the past decade. The
present invention proposes a new brush providing a desirable
fast application and a coating of a consumer’s eyelashes with
mascara using a less viscous, more fluid mascara product.

(Id. at ¶10.)
FF3 Figure 1 of the instant Specification is reproduced below:

Figure 1 shows “a side elevation view of a mascara brush in accordance with
the invention.” (Id. at ¶13.)
FF4 The Specification teaches that brush 10 “is comprised of a central
twisted wire core 12 containing bristles 14,” wherein the “core 12 is a
twisted wire core typically made by forming a soft metal wire 16 into a ‘U’
shape.” (Id. at ¶15.)
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FF5 The Examiner rejects claims 1, 5-7, and 11 under 35 U.S.C. § 103(a)
as being obvious over the combination of Leone and Scancarella (Ans. 3).
As Appellant does not present separate arguments to any of the claims on
appeal, the claims stand or fall together, and we focus our analysis on
independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
FF6 The Examiner finds that “Leone discloses a mascara brush comprising
a single twisted wire core holding a plurality of radially extending bristles,”
wherein the “brush is used with a mascara product.” (Id. (citing Leone, Figs.
2 and 5).)
FF7 The Examiner further finds that Leone teaches that the “bristles have a
diameter of 0.0025-0.0050 inch and are provided at a bristle density of 15-
100 bristles per turn.” (Ans. 3.)
FF8 Figures 2 and 5 of Leone are reproduced below:

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Figures 2 and 5 show a mascara wand as taught by Leone, with Figure 2
showing an applicator with two tines, one being a brush and the other tine a
comb, and Figure 5 showing an applicator with two tines, one being a brush
and the other tine having foam affixed thereto (Leone, col. 2, ll. 26-36).
FF9 The Examiner notes that claim 1 uses the transition phrase
“comprising,” thus “other elements may be added and still be within the
scope of the claim.” (Ans. 6-7.)
FF10 The Examiner notes that Leone does not “disclose a mascara product
having a viscosity of 7000-120,000 centipoise at 25 degrees C, the bristles
being made from nylon or polyester, and the bristles having a diameter of
about .002 in to about .0029 inch and the bristle density of about 120-20
bristles per turn.” (Ans. 3.)
FF11 The Examiner cites Scancarella for disclosing “a mascara product
having a viscosity of 7000-120,000 centipoise at 25 degrees C.” (Id. at 4.)
FF12 Scancarella teaches that its mascara or lash tint compositions “exhibit
extended wear, look natural, provide a rich color, and exhibit reduced
smudging.” (Scancarella, col. 2, ll. 17-21.)
FF13 Citing Aller, the Examiner concludes that it “would have been
obvious to one having ordinary skill in the art at the time the invention was
made to have the diameter of the bristles be about .002 in to about .0029
inch and the bristle density of about 120-20 bristles per turn, since it has
been held that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves only routine
skill in the art.” (Ans. 3.)
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FF14 The Examiner also concludes that it “would have been obvious to one
skilled in the art to use the mascara of Scancarella [ ] with the application
system of Leone in order to provide the user thereof with extended wear and
reduced smudging.” (Id. at 4.)

ANALYSIS
Appellant argues that Leone “discloses a Y-shaped device . . .
consisting of a wand having two tines,” wherein there is a “non-uniform
distribution of bristles such that the bristles on the inner surface of the
applicator are substantially shorter than those on the outer tine surface.”
(App. Br. 5.) Appellant asserts that Leone is thus “directed at an applicator
in which each eyelash is uniformly coated at the same time, teaching away
from a single brush or applicator.” (Id.) Appellant argues further that the
brush of the present invention consists of a single twisted wire core, wherein
the bristles are of substantially uniform length (id. at 6).
Scancarella, Appellant argues, while teaching a low viscosity
mascara, does not teach “any preferred type of mascara brush, bristle
diameter or bristle density.” (Id. at 5.) Thus, according to Appellant, there
“is no teaching, suggestion, or motivation to combine the two references.”
(Id.) Appellant further asserts that “the conditions for establishing a rapid
and effective application with a low viscosity mascara are nowhere disclosed
by either of the cited references . . . [thus] the general conditions of the claim
are NOT disclosed by the prior art.” (Id. at 6.)
All of Appellant’s arguments have been considered, but are not
convincing. Leone teaches a mascara brush that has a bristle diameter and
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bristle density that overlap with one of the claimed ranges for bristle
diameter and bristle density. Appellant contend that the claimed ranges are
not disclosed, but provide no evidence to support this position (id. at 7).
Specifically, Leone teaches bristles having a diameter of 0.0025-0.0050 inch
at a bristle density of 15-100 bristles per turn, which overlaps with the
claimed range of a bristle diameter of .002 -.0029 inches, and a bristle
density of 120-22 bristles per turn. Thus, Leone renders the claimed range
prima facie obvious.
Moreover, while Leone teaches a mascara brush with two applicator
tines, we agree with the Examiner that the use of the transition term
“comprising” does not exclude a second applicator tine, such as the comb or
foam shown in Figures 2 and 5 of Leone. In addition, the claims do not
specify that the bristles are of substantially uniform length.
Finally, Scancarella teaches a mascara that exhibits extended wear,
looks natural, provides a rich color, and exhibits reduced smudging.
Scancarella does not teach that any special applicator is needed, thus we
agree with the Examiner that it would have been obvious to use the
applicator of Leone with the mascara of Scancarella to achieve the benefits
taught by Scancarella. Note that the reason for the combination as set forth
by the Examiner need not recognize the problem purportedly solved by
Appellant.

CONCLUSION OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in combining the references to arrive at the claimed invention.
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We thus affirm the rejection of claims 1, 5-7, and 11 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Leone and Scancarella.

ISSUE (Neuner, Fonseca, and Scancarella)
The Examiner concludes that claims 1-11 are rendered obvious by the
combination of Neuner, Fonseca, and Scancarella.
Appellant contends that the ordinary artisan would not have combined
the references as suggested by the Examiner, and that the conditions for
establishing a rapid and effective application with a low viscosity mascara
are not disclosed by any of the cited references and thus the general
conditions of the claim are not disclosed by the prior art.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in combining the references to arrive at the claimed
invention?

FINDINGS OF FACT
FF15 The Examiner rejects claims 1-11 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Neuner, Fonseca, and Scancarella
(Ans. 4). As Appellant does not present separate arguments to any of the
claims on appeal, the claims stand or fall together, and we focus our analysis
on independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
FF16 The Examiner cites Neuner for disclosing “a single twisted wire core
holding a plurality of radially extending bristles to form a brush at the end of
the core.” (Id. (citing Neuner, Fig. 1).)
FF17 Figure 1 of Neuner is reproduced below:
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Figure 1 shows a cross-section of the mascara brush of Neuner and a
container (Neuner, col. 3, ll. 12-14). Neuner discloses that nylon is
commonly used to form the bristles (Neuner, col. 1, ll. 18-19).
FF18 The Examiner notes that “Neuner does not disclose the bristles being
made from nylon or polyester,” “a lower viscosity mascara product having a
viscosity of 7000-120,000 centipoise,” or any of the combinations of bristle
diameter and bristle density recited in the claims (Ans. 4).
FF19 The Examiner cites Fonseca for teaching “a mascara brush comprising
a twisted wire core holding a plurality of radially extending bristles [wherein
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the] bristles have a diameter of 0.01-0.4. mm [.0004-.0157 in] and are
provided at [a] bristle density of 10-65 bristles per turn.” (Ans. 5.)
FF20 Fonseca notes that “[t]ypically, conventional applicator brush bristles
are made from nylon, [and/or] polyester . . . .” (Fonseca, ¶7.)
FF21 Fonseca teaches that the source of those materials may be limited and
unpredictable, the processes of making them are expensive, and that such
materials biodegrade extremely slowly, if at all (id.).
FF22 Thus, according to Fonseca there is a need for materials that have a
reliable source, that are less expensive to make, and are biodegradable (id. at
¶8).
FF23 Fonseca teaches further that bristles made from plant-based polymers
may have any shape depending on the intended use, and may have a large
range of cross-sectional dimensions (id. at ¶32).
FF24 The Examiner cites Scancarella for disclosing “a mascara product
having a viscosity of 7000-120,000 centipoise at 25 degrees C.” (Ans. 6.)
FF25 The Examiner concludes that it would have been obvious to use nylon
or polyester for the bristles since the use of such materials is well known in
the art (id. at 4-5).
FF26 Citing Aller, the Examiner concludes that it would have been obvious
to the ordinary artisan to have the bristles be about .0001 to about .00049
inches; .0005 to about .00099 inches; .001 to about .0019 inches; or about
.002 to about .0029 inches; with a bristle density of 200-60 bristles per turn;
180-40 bristles per turn; 175-30 bristles per turn; or 120-20 bristles per turn;
as “it has been held that where the general conditions of a claim are
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disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” (Id. at 5-6.)
FF27 The Examiner concludes further that it would have been obvious to
use the mascara of Scancarella with the application system of Neuner “in
order to provide the user thereof with extended wear and reduced
smudging.” (Id. at 6.)

ANALYSIS
Appellant argues that Neuner teaches “a mascara brush with a
plurality of short and long bristles such that the tips of the long bristles
define an outer envelope of the brush and that the tips of the short bristles
form an inner layer,” and thus “does not disclose, teach, or suggest the
combinations of bristle diameters and densities, or low viscosity mascara as
defined by the present invention.” (App. Br. 7.)
Appellant asserts as to Fonseca that the entire focus of the reference is
on the use of biodegradable polymer bristles, which “are of a fundamentally
different structure and characteristics to the nylon and polyester bristles of
the present invention.” (Id.) Fonseca, Appellant argues, in fact limits the
bristle density to 40 to about 60 bristles per turn, which is very limited
compared to the claimed bristle densities (id.).
Thus, according to Appellant, the ordinary artisan would not have
used “nylon bristles of the claimed bristle diameter and bristle density
because a person of ordinary skill in the art following the teachings of
Fonseca would not consider Fonseca to be enabling to the use of nylon
bristles.” (Id. at 8.) Fonseca’s disclosed bristle size and density, Appellant
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argues, is for plant-based bristles, and thus the ordinary artisan would not
consider them to be applicable to nylon bristles (id.). Appellant argues
further that “there remains potential for an unfavorable chemical interaction
between a low viscosity mascara compound and the unique plant based
composition of Fonseca’s bristles,” further rendering “the combination of
these two references as nonequivalent to the present invention.” (Reply Br.
6.)
Appellant argues further that neither Neuner nor Fonseca teach or
suggest “the selection of proper bristle diameter and density ranges to
provide an effective mascara brush for use with lower viscosity mascara
fluids such as that disclosed in Scancaralla,” and thus there is no reason to
combine the references as suggested by the Examiner (App. Br. 8).
Again, Appellant’s arguments are not convincing. Both Neuner and
Fonseca are drawn to mascara applicators having a single twisted wire core.
While Neuner is silent on the material used to form the bristles, the reference
teaches that nylon is commonly used (Neuner, col. 1, ll. 18-19), as does the
Specification and Fonseca.
Fonseca teaches a range of bristle diameter and bristle density that
overlaps and/or encompasses the claimed ranges, thus rendering those
ranges prima facie obvious. While Fonseca teaches the use of a plant-based
polymer to form the bristles, that is mainly for economic reasons, such as
reduced cost and a ready supply. In addition, Fonseca does acknowledge
that nylon and polyester are commonly used in the formation of the bristles.
Thus, we do not agree with Appellant that Fonseca does not enable nylon
bristles. Fonseca also teaches that the bristles formed from the plant-based
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polymers may have a variety of shapes and cross-sectional dimensions, thus
the ordinary artisan would not read the ranges being disclosed by Fonseca as
being specific to bristles formed from plant-based polymers, and thus not
being applicable to bristles formed from nylon or polyester.
Moreover, while Appellant asserts that there may be a unfavorable
chemical interaction between a low viscosity mascara compound and the
unique plant based composition of Fonseca’s bristles, and thus teaching
away from the combination, the Examiner does not rely on Fonseca for its
teaching of a plant-based polymer in the formation of the bristles of the
mascara brush, only for its teaching of a range for bristle diameter and
bristle density, demonstrating that the claimed ranges were known in the art.
Moreover, Appellant does not provide any evidence that the ordinary artisan
would expect such an adverse interaction, and arguments of counsel cannot
take the place of evidence in the record. In re Scarbrough, 500 F.2d 560,
566 (CCPA 1974).
Finally, as to Appellant’s argument that neither Neuner nor Fonseca
teach or suggest “the selection of proper bristle diameter and density ranges
to provide an effective mascara brush for use with lower viscosity mascara
fluids such as that disclosed in Scancarella,” as noted above, Scancarella
teaches a mascara that exhibits extended wear, looks natural, provides a rich
color, and exhibits reduced smudging. Scancarella does not teach that any
special applicator is needed, thus we agree with the Examiner that it would
have been obvious to use the applicator taught by the combination of Neuner
and Fonseca with the mascara of Scancarella to achieve the benefits taught
by Scancarella.
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CONCLUSION OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in combining the references to arrive at the claimed invention.
We thus affirm the rejection of claims 1-11 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Neuner, Fonseca, and
Scancarella.

TIME PERIOD FOR RESPONSE
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
lp

ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD CT 06905-5619