Ex Parte Navarro et alDownload PDFPatent Trial and Appeal BoardDec 29, 201612058741 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 12/058,741 03/30/2008 Maria A. NAVARRO 2745-03601 3791 23505 7590 CONLEY ROSE, P.C. Jonathan M. Harris 1001 Mckinney Suite 1800 HOUSTON, TX 77002-6417 EXAMINER STEITZ, RACHEL RUNNING ART UNIT PAPER NUMBER 3776 NOTIFICATION DATE DELIVERY MODE 01/03/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pathou @conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIA A. NAVARRO and SOPHY MERSZEI Appeal 2015-001502 Application 12/058,741 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Maria A. Navarro and Sophy Merszei (“Appellantsâ€)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—3, 5—10, 12—17, and 19. See Appeal Br. 5.2 Claims 4, 11, and 18 have been canceled, and claims 20 and 21 have been withdrawn. See id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is NovaLash, Inc. Appeal Br. 3. 2 We note that the Appeal Brief (filed August 18, 2014) provides a page number only on the first (cover) page thereof. For reference convenience, we number the remaining pages consecutively therefrom. Appeal 2015-001502 Application 12/058,741 CLAIMED SUBJECT MATTER Appellants’ disclosed invention relates to “cosmetic devices and methods.†Spec., p. 1,1. 15. Claims 1 and 19 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A decorative artificial eyelash hair comprising: an artificial eyelash hair having a base portion proximate a base end, a tip portion at a tip end and an outer surface; an adhesive bond adapted for attachment between the outer surface of the artificial eyelash hair and only a natural eyelash hair; and a decorative applique adhered to at least a portion of the outer surface of the artificial eyelash hair proximate the tip end, the applique being a decorative component fixed to the outer surface of the artificial eyelash hair, and an adhesive fixing the decorative component to the outer surface of the artificial eyelash hair. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Bau US 3,559,657 Feb. 2, 1971 Shin US 2002/0056465 A1 May 16, 2002 Iosilevich US 2003/0005941 A1 Jan. 9, 2003 Thayer US 2004/0231688 A1 Nov. 25, 2004 Merszei US 2007/0050207 A1 Mar. 1,2007 2 Appeal 2015-001502 Application 12/058,741 REJECTIONS The following rejections are before us for review:3 I. Claims 1—3, 9, 10, 13, 14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bau and Iosilevich. II. Claims 5—8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Shin. III. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Merszei. IV. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Thayer. V. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Shin. ANALYSIS Rejection I— Claims 1—3, 9, 10, 13, 14, 16, and 17 as unpatentable over Bau and Iosilevich Appellants argue against the rejection of claims 1—3, 9, 10, 13, 14, 16, and 17 as a group. See Appeal Br. 11—13. We select independent claim 1 as representative of the issues that Appellants present in the appeal of this rejection, with claims 2, 3, 9, 10, 13, 14, 16, and 17 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). 3 We note that a rejection of claims 1—3, 5—10, 12—17, and 19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter has been withdrawn by the Examiner and thus is not before us for review as part of the instant appeal. Ans. 9. 3 Appeal 2015-001502 Application 12/058,741 The Examiner found that Bau discloses a decorative artificial eyelash hair, substantially as claimed. See Final Act. 3 (citing Bau, Abstract; col. 1, 11. 7—12; Fig. 9). The Examiner explained that “Bau is capable of having the artificial eyelash hair ... be bonded at the base portion only to a wear[er]’s natural eyelash.†Id. Next, the Examiner acknowledged: Bau does not specifically disclose a decorative applique (20) adhered to at least a portion of the outer surface (18) of the artificial eyelash hair (12), the applique being a decorative component (28) fixed to the outer surface (18) of the hair near the proximate tip end (12), and an adhesive (24) fixing the decorative components (28) to the outer surface (18) of the hair (12). Id. at 3^4. However, the Examiner found that “Iosilevich discloses decorative adornments attached to the hair portions of the eyelashes . . . using adhesives . . . and further teach[es] [that] the artificial eyelash hair can be attached to the user’s eyelash hair.†Id. at 4 (citing Iosilevich || 3, 4, 7, 15, 16). The Examiner concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention “to combine the eyelashes disclosed in Bau and use the adhesive disclosed in Iosilevich to attach the decorative adornments disclosed in Iosilevich to result in a set of false eyelashes that allow ... the wearer to customize the way their eyelashes and face look.†Id. The Examiner also concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention “to attach the artificial eyelash of Bau to the user’s own eyelashes as taught by Iosilevich to further extend the eyelashes.†Id. Appellants argue that Bau fails to disclose “an adhesive bond adapted for attachment between the outer surface of the artificial eyelash hair and 4 Appeal 2015-001502 Application 12/058,741 only a natural eyelash hair,†as recited in independent claim 1. See Appeal Br. 11. Appellants assert that Bau discloses plastic lashes 43 extending from base strip 41, which secures by adhesive to eyelid 50 rather than natural eyelashes 51. See id. (citing Bau, col. 3,11. 3—6, 25, 27—31; Figs. 7—9). According to Appellants, base strip 41 of Bau’s artificial eyelashes is not capable of being bonded only to natural eyelashes as stated by the Examiner. Id. at 12 (citing Final Act. 3). We are not persuaded by Appellants’ argument. Although Bau discloses that the adhesive on base strip 41 secures the artificial eyelash to eyelid 50 (col. 3,11. 27—31), Appellants do not present factual evidence or persuasive technical reasoning to explain why Bau’s base strip 41 adhesive would not also be capable of bonding to a natural eyelash. In this regard, we agree with the Examiner that “nothing precludes the user from attaching [Bau’s] artificial eyelash hair to only a natural eyelash instead of the user’s eyelid.†Ans. 9. Moreover, Appellants’ Specification does not provide a special definition to compel a different, or narrower, construction of “an adhesive bond adapted for attachment between the outer surface of the artificial eyelash hair and only a natural eyelash hair,†as recited in the claim. Notably, although the Specification specifically describes an example of adhesive 24 as cyanoacrylate (Spec., p. 7,11. 25—26), adhesive 24 is used to fix decorative components to an artificial eyelash hair {id., 11. 15—16). The Specification does not offer any details as to the adhesive used to bond the artificial eyelash to a natural eyelash. Appellants argue that Bau discloses artificial eyelashes with base strip 80 having projections 81 for anchoring to natural eyelashes without 5 Appeal 2015-001502 Application 12/058,741 adhesive. See Appeal Br. 12 (citing Bau, col. 4,11. 55—59, 66—70; Fig. 12). Appellants assert “that the structure of the artificial lashes taught by Bau would require alteration not taught or considered by Bau to apply an adhesive between the base strip 40 and the eyelashes.†Id. This argument is not persuasive of error because it is not responsive to the rejection as presented. Namely, the Examiner did not rely on Bau’s embodiment having base strip 80 with projections 81 for attaching to natural eyelashes without adhesive. See Final Act. 3 (citing Bau, Fig. 9); see also Bau, col. 3,11. 24—25 (disclosing that “FIG. 9 illustrates the portion of a person’s eyelid 50, with the base strip 41 attached to the eyelidâ€) (boldface omitted). Appellants argue that “[i]t would be impractical to adhere an entire base strip 41 of Bau to a natural eyelash.†Reply Br. 3 (underlining omitted). Appellants assert that “a natural lash cannot support the weight of an entire base strip 41 of artificial eyelashes 43 as taught by Bau,'’ and “an adhesive bond between an entire base strip 41 and a natural eyelash would not be strong enough to hold the entire strip 41 to the natural eyelash.†Id. at 3^4. Appellants also assert that one of ordinary skill in the art would understand that “gluing more than one artificial lash to more than one natural eyelash, resulting in clumps of artificial lashes adhered to clumps of natural eyelashes, can damage the natural eyelashes.†Id. at 4. These arguments do not persuade us of error in the Examiner’s rejection because the assertions amount to mere attorney argument unsupported by objective evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In particular, Appellants offer no evidence or persuasive technical reasoning to support the speculative assertions that a natural eyelash could not support the weight of Bau’s base strip 41, that the 6 Appeal 2015-001502 Application 12/058,741 adhesive bond would not be strong enough to support base strip 41, or that adhering base strip 41 to multiple natural eyelashes would necessarily damage the natural eyelashes.4 Appellants argue that, “[i]f the coated strip 41 of Bau were . . . pressed to the natural eyelashes 51 [instead of the eyelid 50,]... the adhesive material would be in contact with all the natural lashes and not an individual natural eyelash hair.†Reply Br. 4. We are not persuaded by this argument. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.†It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, claim 1 only recites, in relevant part, “an adhesive bond adapted for attachment between the outer surface of the artificial eyelash hair and only a natural eyelash hair.'†Appeal Br. 17, Claims App. (emphasis added). We see nothing in the language of claim 1 that would limit the recited adhesive bond to a structure that is actually attached to no more than an individual (i.e., single) natural eyelash hair. Appellants also argue that Iosilevich does not disclose “an adhesive bond adapted for attachment between the outer surface of the artificial eyelash hair and only a natural eyelash hair,†as recited in the claim, and therefore does not cure the asserted deficiency in the disclosure of Bau. See Appeal Br. 12. As we do not find any such deficiency of Bau, this argument does not apprise us of error in the Examiner’s rejection. Moreover, 4 We note that Iosilevich specifically discloses using adjacent adhesive strips 42 to attach false eyelashes 10 to a group of natural eyelashes N. See Iosilevich 140; see also id., Fig. 6. 7 Appeal 2015-001502 Application 12/058,741 Appellants do not contest the Examiner’s finding that “Iosilevich teaches . . . attaching an artificial eyelash to the user’s own eyelashes.†Final Act. 10 (citing Iosilevich 121); see also Iosilevich || 15, 16 (describing adhesively securing false eyelashes to a wearer’s natural eyelashes). After careful consideration of all the evidence, Appellants’ arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of claim 1, and 2, 3, 9, 10, 13, 14, 16, and 17 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Bau and Iosilevich. Rejections II and IV— Claims 5—8 and 15 as unpatentable over Bau, Iosilevich, and one of Shin and Thayer With respect to the rejections of claims 5—8 and 15, Appellants do not set forth any additional substantive arguments separate from the arguments discussed supra', instead adding only that each of Shin and Thayer does not cure the asserted deficiencies of Bau and Iosilevich, and otherwise relying on dependency from independent claim 1. See Appeal Br. 13—15. Thus, for the same reasons that Appellants’ arguments do not apprise us of error in Rejection I, Appellants also do not apprise us of error in Rejections II or IV. We likewise sustain the rejections of claims 5—8 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and one of Shin and Thayer. 8 Appeal 2015-001502 Application 12/058,741 Rejection III— Claim 12 as unpatentable over Bau, Iosilevich, and Merszei With respect to the rejection of claim 12, Appellants rely on the same arguments presented against Rejection I, discussed supra, adding only that “the strip lash systems of Bau and Iosilevich cannot be modified based on the teachings of Merszei to arrive at the claimed combination of features,†and otherwise relying on dependency from independent claim 1. Id. at 14. Accordingly, for the same reasons that Appellants’ arguments do not apprise us of error in Rejection I, Appellants also do not apprise us of error in Rejection III. We likewise sustain the rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Merszei. Rejection V— Claim 19 as unpatentable over Shin The Examiner found that “Shin discloses an artificial eyelash hair configured to bond to a wear[er]’s natural eyelash hair and a decorative applique disposed on the artificial eyelash hair (paragraphs 39 and 40),†but does not to disclose “crystalline glitter powder and cut polyester glitter.†Final Act. 9. The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of the invention to use crystalline glitter powder and cut polyester glitter for the decorative applique, “since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.†Id. (citing In re Leshin, 277 F.2d 197, 199 (CCPA I960)). Appellants argue that Shin does not disclose “an adhesive bond adapted for attachment of the artificial eyelash hair to a natural eyelash 9 Appeal 2015-001502 Application 12/058,741 hair,†as recited in independent claim 19. See Appeal Br. 15. In particular, Appellants assert that “Shin discloses multiple embodiments of artificial hair groupings, all of which are adhered to the eyelid.†Id. (citing Shin H 35, 41—46). According to Appellants, “Shin fails to teach any adhesive bond with either the artificial lash hair (adheres to the adhesive sheet 3 instead) or the natural lash hair (adheres to the eyelid instead).†Id. We are not persuaded by this argument. The Examiner explains that “Shin discloses an artificial eyelash hair with an adhesive bond (paragraph 46) adapted for attachment of the artificial eyelash hair to a natural eyelash hair.†Ans. 10. Specifically, Shin discloses that, “[bjecause the adhesive portion of the artificial eyelashes ... is very narrow, the lashes can be easily attached between the lower part of a double eyelid and the upper part of the natural eyelash and will smoothly contour to the shape of the natural eyelash.†Shin 146. In this regard, we agree with the Examiner that “nothing precludes the user from attaching [Shin’s] artificial eyelash hair to a natural eyelash instead of the user’s eyelid.†Ans. 10. Appellants do not present factual evidence or persuasive technical reasoning to explain why Shin’s adhesive would not be capable of attaching the artificial eyelashes to natural eyelashes, as required by the claim. Appellants argue that “[i]t would be impractical to adhere the multiple artificial eyelash hairs of Shin to a natural eyelash.†Reply Br. 6 (underlining omitted). In particular, Appellants assert that “a natural lash cannot support the weight of multiple artificial eyelash hairs,†and “an adhesive bond between multiple artificial eyelash hairs of Shin and a natural eyelash would not be strong enough [to] hold the multiple artificial eyelash hairs to the natural eyelash.†Id. According to Appellants, “one with 10 Appeal 2015-001502 Application 12/058,741 ordinary skill in the art understands gluing more than one artificial lash to more than one natural eyelash, resulting in clumps of artificial lashes adhered to clumps of natural eyelashes, can damage the natural eyelashes.†Id. These arguments are not persuasive of error in the Examiner’s rejection because the assertions amount to speculative attorney argument unsupported by objective evidence. See In re Pearson, 494 F.2d at 1405. In particular, Appellants offer no evidence or persuasive technical reasoning to explain why a natural eyelash could not support the weight of multiple artificial eyelashes, why the adhesive bond would not be strong enough to hold the artificial lashes to the natural eyelash, or why adhering artificial eyelashes to multiple natural eyelashes would necessarily damage the natural eyelashes. Appellants argue that, even “if the multiple artificial eyelash hairs of Shin were instead adhered to the natural eyelashes as proposed by the Examiner, the adhesive material would be in contact with all the natural lashes and not an individual natural eyelash hair.†Reply Br. 6. We are not persuaded by this argument because it is not commensurate in scope with claim 19. Here, claim 19 only recites, in relevant part, “an adhesive bond adapted for attachment of the artificial eyelash hair to a natural eyelash hair.'†Appeal Br. 19, Claims App. (emphasis added). We see nothing in the language of claim 19 that would limit the recited adhesive bond to a structure that is actually attached to no more than individual (i.e., single) natural eyelash hairs. See In re Self, 671 F.2d at 1348. Appellants also argue, with reference to paragraph 39 of Shin, that the reference discloses reflective materials and coloring being applied to 11 Appeal 2015-001502 Application 12/058,741 artificial hair 1 or adhesive sheet 3, but “does not disclose adhesive as a component incorporated into the artificial hairs 1 [ ]or adhesive sheets 3.†Appeal Br. 15 (citing Shin 139; Figs. 2, 3). In particular, Appellants assert that “Shin states that incorporation of such materials [(reflective materials and coloring)] is only possible because of the extra supporting materials in the adhesive sheets 3 and attachment to a wearer’s eyelids.†Id. (citing Shin 39-40). According to Appellants, “Shin fails to disclose or enable decorative appliques having adhesive, powders, and cut glitter to individual artificial eyelash hairs.†Id. at 15—16. We are not persuaded by this argument. As the Examiner explains, “Shin discloses eyelashes and reflective materials applied to the artificial eyelashes (paragraph^] 39 and 40).†Ans. 10-11. Specifically, Shin discloses that “reflective materials or coloring can be applied to the artificial hair 1, the extra part c of adhesive sheet 3 or the lower part d of the adhesive sheet.†Shin 139 (boldface omitted; emphasis added). According to Shin, “reflective materials and coloring may be applied easily†to the disclosed invention, whereas, “[i]n the prior art, such application is impossible without the use of extra supporting materials.†Id. 140 (emphasis added). We understand reflective materials and coloring to be easily applied to Shin’s artificial eyelashes without requiring extra supporting materials. Moreover, Appellants’ arguments are not persuasive of error because they are not responsive to the Examiner’s reasoned position of obvious design choice. Here, the Examiner has provided a sound basis for the conclusion that it would have been obvious to use crystalline glitter powder and cut polyester glitter for an eyelash applique as a matter of design choice (see Final Act. 9; Ans. 11), and Appellants have not shown error in the 12 Appeal 2015-001502 Application 12/058,741 Examiner’s rationale. Namely, Appellants do not ascribe any particular importance to the recited crystalline glitter powder and cut polyester glitter applique as compared to prior art artificial eyelash appliques, or provide factual evidence that crystalline glitter powder and cut polyester glitter perform differently or achieve any unexpected results as compared to prior art artificial eyelash appliques. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art†(citations omitted)). See also In re Chu, 66 F.3d 292, 298—99 (Fed. Cir. 1995) (“design choice†is appropriate where an applicant fails to set forth any reason why the differences between the claimed invention and the prior art would result in a different function). After careful consideration of all the evidence, Appellants’ arguments do not apprise us of error in the Examiner’s findings or reasoning for the conclusion of obviousness with respect to claim 19. Accordingly, for the foregoing reasons, we sustain the rejection of claim 19 under 35 U.S.C. § 103(a) as being unpatentable over Shin. DECISION We AFFIRM the Examiner’s decision rejecting claims 1—3, 9, 10, 13, 14, 16, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Bau and Iosilevich. We AFFIRM the Examiner’s decision rejecting claims 5—8 under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Shin. We AFFIRM the Examiner’s decision rejecting claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Merszei. 13 Appeal 2015-001502 Application 12/058,741 We AFFIRM the Examiner’s decision rejecting claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Bau, Iosilevich, and Thayer. We AFFIRM the Examiner’s decision rejecting claim 19 under 35 U.S.C. § 103(a) as being unpatentable over Shin. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation