Ex Parte PlassmeyerDownload PDFPatent Trial and Appeal BoardMay 31, 201612249142 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/249,142 10/10/2008 66943 7590 06/03/2016 James P. Broder Roeder & Broder LLP 9915 Mira Mesa Blvd. Suite 300 San Diego, CA 92131 FIRST NAMED INVENTOR Monetta J. Plassmeyer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 30057.01 1159 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 06/03/2016 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): jbroder@rbiplaw.com delliott@rbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MONETTA J. PLASSMEYER Appeal2014-004081 Application 12/249, 142 1 Technology Center 3700 Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 21-23, 25-28, and 53-65. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to the Appellant, "[t]he real party in interest is Monetta J. Plassmeyer, the Applicant of the present application." Appeal Br. 3. Appeal2014-004081 Application 12/249,142 Claimed Subject Matter Claims 21 and 27, reproduced below, are illustrative of the subject matter on appeal. 21. A cosmetic palette for retaining a cosmetic component, the cosmetic palette comprising: a base including a first side and a second side opposite the first side; a plurality of side walls that extend away from the base; a non-metallic retention layer that is secured to the first side so that the retention layer covers at least a portion of the first side, the plurality of side walls being positioned to surround the retention layer; and a rim that is positioned so that a portion of the retention layer is positioned directly between the rim and the first side of the base, the rim including a rim perimeter that defines a single undivided rim interior region, the rim perimeter abutting one or more of the plurality of side walls, the cosmetic component being removably secured to the retention layer within the rim interior region so that the retention layer inhibits movement of the cosmetic component relative to the first side. 27. A cosmetic component retainer including the cosmetic palette of claim 21 and a second cosmetic palette that is hingedly attached to the cosmetic palette, the cosmetic component retainer being movable between a closed position that substantially encloses the cosmetic component and an open position wherein the cosmetic component is at least partially exposed. 2 Appeal2014-004081 Application 12/249,142 Re} ections2'3 I. Claims 21-23, 25, 27, 28, and 53 are rejected under 35 U.S.C. § 103(a) as unpatentable over Petit (US 2005/0194384 Al, pub. Sept. 8, 2005) and Domotor (US 7,055,682 Bl, iss. June 6, 2006) and Royal (US 5,383,293, iss. Jan. 24, 1995). II. Claims 21-23, 25, 27, 28, and 53 are rejected under 35 U.S.C. § 103(a) as unpatentable over Petit, Domotor, and Ovadia (US 6, 77 6,281 B2, iss. Aug. 1 7, 2004 ). III. Claims 54--57 and 60-63 are rejected under 35 U.S.C. § 103(a) as unpatentable over Petit and Thrun (US 4,243,140, iss. Jan. 6, 1981). IV. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Petit, Domotor, Royal, and Wheatley (US 7, 125,602 B2, iss. Oct. 24, 2006). V. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Petit, Domotor, and Ovadia and Wheatley. VI. Claims 58 and 64 are rejected under 35 U.S.C. § 103(a) as unpatentable over Petit, Thrun, and Wheatley. VII. Claims 59 and 65 are rejected under 35 U.S.C. § 103(a) as unpatentable over Petit, Thrun, and Royal. 2 The Examiner lists nine grounds of rejection that have been withdrawn. Ans. 8-9. 3 The Examiner rejects "[c]laims 26, 58, and 64 ... under 35 U.S.C. § 103(a) as unpatentable over the combined reference[s] as applied to claims 21, 54, 62 above, and further in view of Wheatley." Non-Final Act. 11, mailed April 15, 2013. The Examiner maintains the rejection of claims 21, 54, and 62 for three grounds of rejection (Rejections I-III). Similarly, the rejection of claims 26, 58, and 64 are maintained in three grounds of rejection (Rejections IV-VI). 3 Appeal2014-004081 Application 12/249,142 Vlll. Claims 59 and 65 are rejected under 35 U.S.C. 103(a) as unpatentable over Petit, Thrun, and Ovadia. ANALYSIS Rejections I and IV As discussed below, we sustain the Examiner's rejections of claims 21-23, 25-28, and 53 (Rejections II & V), which constitutes a general affirmance of the decision of the Examiner on these claims. 3 7 C.F .R. § 41.50(a)(l). We do not separately address Rejections I and IV, which are directed to the same set of claims, i.e., claims 21-23, 25-28, and 53. Rejections II and V Analogous Prior Art The Appellant argues "Ovadia is non-analogous art because Ovadia is neither from the same field of endeavor as the claimed invention, nor is Ovadia reasonably pertinent to the problem faced by the Appellant for which the rim is provided." Appeal Br. 40. The Appellant's arguments are not persuasive. "Two separate tests define the scope of analogous prior art: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). 4 Appeal2014-004081 Application 12/249,142 Field ofEndeavor The Appellant contends that "Ovadia is not from the same field of endeavor as the claimed present invention" because the Appellant's invention is directed to a cosmetic component retainer and "Ovadia provides a product, i.e. a storage and display box 1 that is convertible into a picture frame." Appeal Br. 41. In response, the Examiner finds that Ovadia is analogous art because it is directed to the field of containers that protect intended contents. See Ans. 13. We determine that the Examiner's finding is supported by a preponderance of the evidence. "Th[e field of endeavor] test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention." Bigio at 1325-26. The title of the Appellant's Specification, which is representative of the invention's subject matter, is "cosmetic component retainer." Notably, "[t]he cosmetic component retainer can include a first cosmetic palette and a second cosmetic palette that are hingedly attached to one another" and "movable between a closed position that substantially encloses the cosmetic retainer and an open position wherein the cosmetic retainer is at least partially exposed." Spec. 3. The Specification depicts the "cosmetic component retainer" in an open and closed position in Figures IA and IB. Spec. 3; see also Spec., Figs. 2-3D. Moreover, the Appellant's Specification describes that "[c]osmetic or 'make-up' cases (sometimes referred to herein simply as a 'case') are used for holding one or more cosmetic components in a single location" and that a mirror is a typical 5 Appeal2014-004081 Application 12/249,142 cosmetic component. Spec. 1. Hence, similar to the Examiner's reasoning, we find the Appellant's field of endeavor is directed to containers that protect intended contents, e.g., a mirror. We agree with the Examiner that Ovadia is analogous art because it is directed to a container that protects its intended contents. See Ans. 13. Indeed, Ovadia teaches a storage box 1 having lids 2, 5 pivotally joined by a hinge 10 for opening and closing the storage box for holding intended contents, e.g., a wallet sized picture 33. Ovadia, col. 1, 11. 54--57, col. 2, 11. 43--46, col. 3, 11. 22-24; see Appeal Br. 40. Further, we find that Ovadia's field of endeavor is tantamount to the Appellant's field of endeavor. Notably, Ovadia's storage box is disclosed as a storage case and a display for jewelry that can convert into a picture frame. Ovadia, col. 1, 11. 5-10; see Appeal Br. 40. The Appellant asserts that Ovadia is not in the same field of endeavor because Ovadia is only relevant as a picture frame, which includes rim 30, and a picture frame should not be considered a container. Reply Br. 8-9. The Appellant's assertion is not persuasive because after converting into a picture frame, storage box 1 remains structurally and functionally a storage box. See Ovadia, Fig. 7. The Appellant asserts that the category of containers, which includes cosmetic component retainers and picture frames is "just far too broad." Reply Br. 9. The Appellant gives examples of a garbage dumpster, space shuttle, a building, among others, which could be considered containers in the context suggested by the Examiner, but are not in the same field of endeavor. Reply Br. 9. The Appellant's assertion is not persuasive. First, the Examiner does not find that a garbage dumpster, space shuttle, or building, among others, are containers. Second, the Examiner does not find 6 Appeal2014-004081 Application 12/249,142 that objects that are of the size of a garbage dumpster, space shuttle, or building, among others, are containers in the same field of Appellant's endeavor. Rather, the Examiner finds that Ovadia's storage box having hingedly attached lids is analogous prior art for the Appellant's invention, i.e., cosmetic component retainer having hingedly attached palettes. Moreover, Ovadia's container is sized to contain a wallet sized photo which compares favorably with the typical size of a cosmetic component retainer. Reasonably Pertinent The Appellant contends that Ovadia is not reasonably pertinent to the problem faced by the Appellant. Appeal Br. 41. Although the Appellant does not explicitly describe the problem faced, the Appellant does explain why rim 30 is provided and positioned as described by the Specification. See Appeal Br. 41. Notably, the Specification states that "[i]n one embodiment, the rim 30 can enhance the appearance of the first palette 16F by covering a portion of the retention layer [28], such as edges that may otherwise curl away from the base 20, for example." Amended Spec., para. 30 (filed Dec. 29, 2011). The Appellant's contention is not persuasive. The asserted purpose of rim 30 suggests that the problems faced by the Appellant are to foster a more pleasing design of the container and to secure a structure(s) within the container. Notably, the Specification's description of "such as edges that may otherwise curl away from the base 20" can be understood as a solution to one or both of the problems faced by the Appellant. As pointed out by the Appellant, Ovadia's frame border (rim) 30 "is designed to 'provide a decorative touch as well as securing piece that serves to hold additional layers in place without movement'." Appeal Br. 41 7 Appeal2014-004081 Application 12/249,142 (quoting Non-Final Act. 8 (citing Ovadia, col. 3, 11. 29-58)). The Appellant asserts that "rim 30 is not provided, however, to provide a decorative touch in and of itself (as opposed to enhancing the appearance of the palette 16F and/or the retention layer 28), and/or to secure any additional layers within the cosmetic component retainer 10." Appeal Br. 41; see Reply Br. 10. However, the reason why the Appellant's rim 30 is provided does not have to be explicitly disclosed as identical to the reason why Ovadia's frame border (rim) 30 is provided. "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The use ofOvadia's frame border (rim) 30 logically would have commended itself to an inventor's attention in considering his problems, i.e., to foster a more pleasing design of the container and to secure a structure( s) within the container. Accordingly, we find that Ovadia is analogous art also because it is reasonably pertinent to the particular problem(s) with which the inventor is involved. Further, we note that the use of Ovadia's frame border (rim) 30 solves problems that are similar to rim 30 of the Appellant's invention, i.e., to enhance the appearance of lid 5 by covering a portion of interior compartment of lid 5 and to secure picture 32 and lens 33 in place without movement. See Ovadia, Fig. 7; see also Ans. 13. Impermissible Hindsight The Appellant argues that reliance on Ovadia by the Examiner requires impermissible hindsight. Appeal Br. 42. The Appellant asserts 8 Appeal2014-004081 Application 12/249,142 "that the only reasonable scenario by which one of ordinary skill in the relevant art would think to use the storage box 1 of Ovadia as a rim to provide such function for the cosmetic component retainer 10 would be from the specific disclosure provided in the present specification." Appeal Br. 42. The Appellant's argument is not persuasive. The Appellant asserts that Ovadia fails to address any potential problems solved by the claimed invention. However, the Examiner need not show that one of ordinary skill in the art would have combined the teachings of the cited prior art references for the same reasons as Appellant's claimed invention so long as the Examiner articulates reasoning with some rational underpinning sufficient to support the conclusion of obviousness. KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). In this case, the Examiner articulates reasoning with some rational underpinning sufficient to support the conclusion of obviousness by explaining that it would have been obvious to one of ordinary skill in the art to further modify Petit with Ovadia's teaching of a rim "(by placing the rim on top of the retention layer) to provide a decorative touch as well as a securing piece that serves to hold additional layers in place without movement." Non-Final Act. 8 (citing Ovadia, col. 3, 11. 29-58). Conclusion We note that the Appellant includes separate headings for claims 21- 23, 25, 27, 28, and 53. See Appeal Br. 38--45. However, the Appellant does not present further arguments against the rejection of claims 21-23, 25, 27, 28, and 53. See 37 C.F.R. § 41.37(c)(l)(iv)(2015). Based on the foregoing, we sustain Rejection II, i.e., the rejection of claims 21-23, 25, 27, 28, and 53 as unpatentable over Petit, Domotor, and 9 Appeal2014-004081 Application 12/249,142 Ovadia. As for Rejection Y, the Appellant asserts that Wheatley, an additional reference used in the rejection of claim 26, fails to address the shortcomings of Rejection II. See Appeal Br. 58---60. The Appellant's assertion is not persuasive because no shortcoming exists in Rejection II. As such, we likewise sustain Rejection V, i.e., the rejection of claim 26 as unpatentable over Petit, Domotor, and Ovadia and Wheatley. Rejections IIL VL and VIII The Examiner finds that Petit discloses a cosmetic palette comprising a base and sidewalls. Non-Final Act. 10. The Examiner relies on Thrun to disclose a non-metallic retention layer. Non-Final Act. 10. The Examiner explains that Thrun's elements (blades) 40 and (pins) 42 are retained by an adhesive surface. See Non-Final Act. 10, Thrun, col. 3, 1. 66-col. 4, 1. 6. Thrun teaches that the adhesive surface is a film that is coated on surface 38. Thrun, col. 3, 1. 66-col. 4, 1. 6. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Petit, in view of Thrun' s teachings, "to provide a material that is capable of holding objects not suitable for retention in slots." Non-Final Act. 10. Further, the Examiner concludes that it would have been obvious to substitute one securing element or another, "such as plastic, adhesive, vinyl, hook and loop, magnet, etc .... because it has been held that substituting equivalents known for the same purpose on the basis of its suitability for the intended use was an obvious extension of the prior teachings." Non-Final Act. 10 (citing Smith v. Hayashi, 209 USPQ 754, 759 (Bd. Pat. Int. 1980)). 10 Appeal2014-004081 Application 12/249,142 The Appellant contends Thrun fails to disclose the claimed non- metallic retention layer because "providing an adhesive film coating on the surface 38 of one of the boxes 14, 16 does not equate to actually securing a retention layer to a first side of the base." Appeal Br. 54; see Reply Br. 11- 13. The Appellant's contention is not persuasive because it fails to explain error in the Examiner's finding that Thrun's adhesive film coating is secured to surface 38. See Ans. 15. In response to the Answer, the Appellant contends that the recitations of claims 55 and 62, i.e., "a non-metallic retention layer that is secured" and "securing a non-metallic retention layer" respectively, requires (i) the existence of a retention layer; and (ii) subsequently, actively securing the retention layer to a side of the base. Reply Br. 13. However, we fail to understand that either claim 52 or 62 requires that which the Appellant contends. Even if such were required by the claims, the Appellant's contention does not fully address the Examiner's rejection. As discussed above, the Examiner concludes that it would have been obvious to substitute one securing element or another, such as plastic, adhesive, vinyl, hook and loop, magnet, etc. And, the Appellant does not argue that the foregoing is in error. As such, the Appellant's contention is not persuasive. Further, the Appellant contends that the dependent claims require the retention layer to be removable or permanently fixed. See Appeal Br. 54-- 55; see, e.g., Appeal Br., Claims App. (Claims 55 and 56). However, even if Thrun does not disclose that the retention layer is removable or permanently fixed, as discussed above, the Appellant's contention does not fully address the Examiner's conclusion that it would have been obvious to substitute one securing element or another. Moreover, we note that the examples provided 11 Appeal2014-004081 Application 12/249,142 by the Examiner, i.e., plastic, adhesive, vinyl, hook and loop, and magnet, can be considered as alternatives that evidence the retention layer as removable and permanently fixed. Additionally, we note that the Appellant includes separate headings for claims 54--57 and 60-63. See Appeal Br. 55-58. However, the Appellant does not present further arguments against the rejection of claims 54--57 and 60-63. See 37 C.F.R. § 41.37(c)(l)(iv)(2015). Based on the foregoing, we sustain Rejection III, i.e., the rejection of claims 54--57 and 60-63 as unpatentable over Petit and Thrun. As for Rejections VI and VIII, the Appellant asserts that Wheatley and Ovadia, additional references used in the rejections of claims 58, 59, 64, and 65, fail to address the shortcomings of Rejection III. See Appeal Br. 58-59, 60-61, 70-73. The Appellant's assertion is not persuasive because no shortcoming exists in Rejection III. As such, we likewise sustain Rejections VI and VIII, i.e., the rejections of: claims 58 and 64 as unpatentable over Petit, Thrun, and Wheatley, and claims 59 and 65 as unpatentable over Petit, Thrun, and Ovadia. Rejection VII As discussed above, we sustain the Examiner's rejection of claims 59 and 65 (Rejection VIII), which constitutes a general affirmance of the decision of the Examiner on these claims. 37 C.F.R. § 41.50(a)(l). We do not separately address Rejection VII, which is directed to the same set of claims, i.e., claims 59 and 65. 12 Appeal2014-004081 Application 12/249,142 DECISION We AFFIRM the Examiner's decision rejecting claims 21-23, 25-28, and 53---65. 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 13 Copy with citationCopy as parenthetical citation