Ex Parte Rasgon

Patent Trial and Appeal Board

Jun 21, 2017

14067459 (P.T.A.B. Jun. 21, 2017)

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.
14/067,459 10/30/2013 Maurice Rasgon 0884-02UA 7970
21704 7590 06/22/2017
T aw Offices; of Frio Karirh EXAMINER
Eric Karich WALCZAK, DAVID J
20 Crestview
Aliso Viejo, CA 92656 ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
06/22/2017 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 MAURICE RASGON
Appeal 2016-003 6071
Application 14/067,4592
Technology Center 3700
Before MICHAEL C. ASTORINO, BART A. GERSTENBLITH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Maurice Rasgon (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1—11. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief lacks page numbers. We designate page 1 as the page
that includes the heading “APPELLANT’S APPEAL BRIEF” and number
the remaining pages in the Appeal Brief consecutively therefrom.
2 According to the Appellant, “[t]he real party in interest is the assignee
Cosmetic Design Group, LLC.” Br. 1.
Appeal 2016-003607
Application 14/067,459
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 6 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A cap for covering an opening of a container body, the cap
comprising:
a cap body shaped to cover the opening of the container
body, the cap body having
a top surface that extends to a cap perimeter;
a threaded flange extending downwardly from the cap
perimeter of the cap body for engaging the container body around
the opening when the cap body is positioned over the opening;
a transparent globe mounted on the top surface of the cap
body; and
a liquid composition that fills the transparent globe, the
liquid composition containing glitter particles.
Rejection
Claims 1—11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ciffo (US 2,917,766, iss. Dec. 22, 1959) and Silberman (US
2004/0161289 Al, pub. Aug. 19, 2004).
ANALYSIS
The Appellant argues claims 1—11 as a group. Br. 4—8. We select
claim 1 as the representative claim from the group. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellant argues that the Silberman reference is not an analogous
art reference as it is not “in the field of applicant’s endeavor or . . .
reasonably pertinent to the particular problem with which the inventor was
concerned.” Br. 5 (citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)).
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Application 14/067,459
Additionally, the Appellant attempts to support this argument by comparing
the present invention and the invention of the Silberman reference. See id.
The Appellant asserts that “[t]he present invention is a cap for a container of
nail polish,” whereas the Silberman reference is a “topper . . . [for] a child’s
toy that is mounted on a pencil.” Id. The Appellant’s arguments are not
persuasive.
The Examiner finds that the Silberman reference is an analogous prior
art reference because it is reasonably pertinent to a particular problem with
which the Appellant was concerned. Ans. 5; see also In re Kahn, 441 F.3d
977, 986-87 (Fed. Cir. 2006) (citing Oetiker, 977 F.2d at 1447). Notably,
“[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 Examiner explains that “both the Appellant and
Silberman are concerned with adding a decoration/novelty type element onto
the cap of the container in order to enhance the aesthetics of the device.”
Ans. 5. We agree with the Examiner’s finding. Further, we note that the
particular problem with which the Appellant is concerned includes
distinguishing one container from another to catch a customer’s attention.
See Spec. 1:13—17. And, the Silberman reference is directed to capturing a
user’s attention (e.g., entertaining a user) and does so by use of a product
that combines a novelty item on a topper (i.e., cap) for a dispenser. See
Silberman || 13, 14, 18; Ans. 3, 4—5. More specifically, Silberman’s
flexible topper (cap) 10 has a decorative/novelty item (e.g., snow globe-like
toy 20a) for a “‘cylindrical body,’ which may function[] as a dispenser for
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Application 14/067,459
‘various materials’” (e.g., a container). Ans. 3, 4—5 (citing Silberman || 14,
18, Fig. 2). As such, we determine that the Silberman reference, because of
the matter with which it deals, logically would have commended itself to the
inventor’s (Appellant’s) attention in considering his problem. See Clay, 966
F.2d at 659.
Additionally, we disagree with the basis for the Appellant’s
comparison of the present invention and the invention in the Silberman
reference. The present “invention relates generally to caps for containers.”
Spec. 1,1. 7. Similarly, the invention of claim 1 is directed to “[a] cap for
covering an opening of a container body.” Br. 9, Claims App. However,
even if one were to consider the claimed container to be a nail polish
container, the Silberman reference is still analogous prior art for the reasons
discussed above.
The Appellant argues that there is no teaching or motivation in the
prior art to combine Ciffo’s decorative nail polish cap and Silberman’s
topper having a snow globe (e.g., a child’s toy). See Br. 6. The Appellant
also argues “[t]he sole motivation to make this combination lies in the
teachings of the present invention.” Id. at 7. The Appellant’s arguments are
not persuasive.
The Examiner finds that Ciffo discloses, among other things, a
decorative element (ornamented flat handle portion) 18 disposed on the top
surface of a cap (stopper) 17 for a container (bottle) 10, but “the decorative
element is not a globe filled with fluid and glitter.” Final Act. 2—3; see
Ciffo, col. 1,1. 67, col. 2,11. 5—6. The Examiner finds that Silberman
teaches a “cap 10 for a container 12 wherein the cap includes a decorative
snow globe (see Figure 2) having a fluid and particles 21 ([s]ee
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Application 14/067,459
paragraph 18) in order to enhance the aesthetics of the device.” Final Act. 3.
The Examiner determines that
it would have been obvious to one of ordinary skill in the art. . .
that the decorative element 18 in the Ciffo device can be
replaced with a decorative snow globe type device wherein such
a modification would amount to the mere substitution of one
functionally equivalent decorative cap element for another and
the selection of either decorative element would work equally
well on the Ciffo device.
Final Act. 3 (emphases added); see Ans. 5—6; see also MPEP §§ 2141(1),
2143, 2143(I)(B) (“Simple Substitution of One Known Element for Another
To Obtain Predictable Results”) (9th Ed. Rev. 7, Nov. 2015). The
Examiner’s rationale is based on the substitution of one decorative item
(ornamented flat handle portion) for another decorative item (snow globe­
like novelty item) on a cap for a container and is adequately supported. See
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“In United States v.
Adams, ... [t]he Court recognized that when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”); see also id. at 418—19 (rejecting the rigid
requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness).
The Appellant also contends that the “Examiner has argued that the
mere motivation to add something ‘decorative’ is enough to provide the
necessary motivation” and cites to In re Deuel, 51 F.3d 1552 (Fed. Cir.
1995) (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994)), for the holding that
“a broad genus does not necessarily render obvious each specie [compound]
within its scope.” Br. 7 (emphasis omitted). The Appellant’s contention is
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Application 14/067,459
not persuasive. We determine that the Appellant’s attempt to apply the
holdings in Deuel and Baird to the facts in the present case is unavailing at
least because it is not clear how the Appellant is categorizing the applied
prior art’s decorative items as having a genus and species relationship. And,
we do not understand the applied prior art’s decorative items to be in a genus
and species relationship. Additionally, the Examiner’s rationale is not based
on adding something decorative. Rather, as discussed above, the Examiner’s
rationale is based on a substitution of one decorative item for another
decorative item on a cap for a container and is adequately supported.
We have considered the remainder of the Appellant’s arguments and
have determined that they are not persuasive. Thus, we sustain the
Examiner’s rejection of claims 1—11 as unpatentable over Ciffo and
Silberman.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—11.
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
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