Ex Parte Rennette

Patent Trial and Appeal Board

Jan 12, 2018

14807361 (P.T.A.B. Jan. 12, 2018)

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.
14/807,361 07/23/2015 Jean Rennette OLI-P01-NPA 7886
10668 7590
Volk & McElroy, LLP
Michael Volk
3003 NW Loop 410, Ste. 100
San Antonio, TX 78230
EXAMINER
KALACH, BRIANNE E
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
michael @ volkandmcelroy. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN RENNETTE
Appeal 2018-001222
Application 14/807,361
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5, 7—13, and 15—22, which constitute all the
claims pending in this application. Final Act. 1 (Office Action Summary).
Claims 3, 4, 6, and 14 have been canceled. App. Br. 16—17. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2018-001222
Application 14/807,361
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relate[s] to improved hair styling brush
systems.” Spec. 2:19. Apparatus claims 1 and 19 are independent. Claim 1
is illustrative of the claimed subject matter, and is reproduced below:
1. A hair brush for styling hair, said hair brush
comprising:
a) a brush head portion connected with a handle, said
brush head portion comprising a cavity;
b) a cushion member engaged with said cavity of said
brush head portion, said cushion member substantially filling
said cavity and secured to maintain the position of said cushion
member within said cavity and to prevent disengagement of
said cushion member from said cavity with structure
comprising
i) said cavity comprising a set of opposing rails
that project into said cavity and having at least one first
set of sawtooth shaped ridges on each rail of said set of
opposing rails,
ii) said cushion member comprising a set of
recessed channels on opposing sides of said cushion
member, each recessed channel of said set of recessed
channels comprising, within each recessed channel, at
least one second set of sawtooth shaped ridges
configured to interlock in a ratchet-type fashion with said
at least one first set of sawtooth shaped ridges of said set
of opposing rails of said cavity, and
iii) engagement of said at least one first set of
sawtooth shaped ridges of each rail of said cavity to said
at least one second set of sawtooth shaped ridges of said
recessed channel of said cushion member by sliding said
cushion member into said cavity and passage of said at
least one second set of sawtooth shaped ridges of said
recessed channel past said at least one first set of
sawtooth shaped ridges of said cavity;
c) a thermal plate comprising thermally conductive
material engaged with said brush head portion and fixed in
position preventing removal of said thermal plate from said
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Application 14/807,361
brush head portion once engaged, said thermal plate assisting
shaping, shining, and drying of hair when said thermal plate is
heated and placed in contact with hair during hair styling with
said hair brush;
d) said thermal plate and said cushion member structured
and arranged such that said thermal plate substantially covers
an upper surface of said cushion member and a gap is disposed
between said upper surface of said cushion member and a lower
surface of said thermal plate;
e) a plurality of hair brush bristles;
f) said cushion member and said thermal plate each
comprising a plurality of openings; and
g) said plurality of hair brush bristles are supported by
said cushion member and pass through said plurality of
openings in both said cushion member and said thermal plate so
that the plurality of bristles extend upward.
REFERENCES
US 2,202,672
US 2004/0255967 A1
US 2005/0121049 A1
US 2008/0163886 A1
US 2009/0229624 A1
DE 28 43 098 A1
REJECTIONS ON APPEAL
Claims 1, 2, 5, 7—9, 15, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Jerome, Price, and Wang.
Claims 10, 11, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Jerome, Price, Wang, and Rizzuto, JR.
Claims 12, 13, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Jerome, Price, Wang, and Purvis.
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over Jerome, Wang, and White.
Price
White
Rizzuto, JR.
Wang
Purvis
Jerome
May 28, 1940
Dec. 23, 2004
June 9, 2005
July 10, 2008
Sept. 17, 2009
Apr. 24, 1980
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Appeal 2018-001222
Application 14/807,361
Claims 21 and 22 are rejected under 35 U.S.C. § 103 as unpatentable
over Jerome, Wang, White, and Purvis.
ANALYSIS
The rejection of claims 1, 2, 5, 7—9, 15, and 18
as unpatentable over Jerome, Price, and Wang
Independent claim 1 (and hence dependent claims 2, 5, 7—9, 15, and
18) includes the limitation “a gap is disposed” between the upper surface of
the cushion member and a lower surface of the thermal plate.1 Appellant’s
Specification states “[g]ap 135 serves as a thermal break between the
thermally-conductive metallic composition of plate member 114 and the
elastomeric material forming cushion member 110.” Spec. 10:27—29.
The Examiner relies on Wang for disclosing this “gap” limitation and
correlates Wang’s bristle support 12 to the recited cushion member and
Wang’s metallic tube 13 to the recited thermal plate. Final Act. 4—5; see
also Wang Figs. 2, 3. The Examiner states that in Wang, “the surface [13] is
secured to the brush [12] and a gap must inherently exist, however small, as
the devices are not adhered to one another, and space exists between the
materials, else they would not be able to be removed.” Final Act. 5.
Appellant disagrees that Wang teaches the recited “gap” between
these components, and specifically asserts that Wang’s figures “do not
support this.” App. Br. 8.
1 Appellant states, “[t]he word gap means ‘a break or hole in an object
between two objects’. Appellant’s position is that the plain meaning of the
word gap means that the thermal plate and cushion member do not touch.”
Reply Br. 2.
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Application 14/807,361
Figure 3 of Wang shows the two items 12 and 13, after assembly,
being in direct contact with each other with no gap or space illustrated
therebetween. The Examiner’s rationale appears to ignore this aspect of
Figure 3 because the Examiner, as indicated above, instead states that space
must inherently exist between them so as to enable them to be separable
(i.e., “able to be removed”). However, Wang is silent as to items 12 and 13
being separable after being joined (and the Examiner provides no indication
where any such removability is taught, suggested, or even contemplated by
Wang). Additionally, it becomes readily apparent from a review of Figure 3
of Wang that once Wang’s bristles 121 are installed, any separation of items
12 and 13 becomes even more problematic. Further, even if Wang’s item 13
could be removed from Wang’s item 12 after assembly, the Examiner does
not indicate how the ability to be removable precludes the two components
from being in direct contact with or touching each other (i.e., gapless) as
depicted in Figure 3 of Wang. We are thus provided no basis in fact and/or
technical reasoning (and such is not otherwise self-evident from the
teachings of Wang) for the Examiner’s finding that “a gap must inherently
exist. . . [or] else they would not be able to be removed.” Final Act. 5.
After the Examiner’s initial findings and conclusions regarding Wang
have been challenged by Appellant (see App. Br. 8—9), the Examiner
subsequently contends “there must be a space between the two materials on
a small scale or else the materials would be fused together.” Ans. 13. The
Examiner proffers no evidence or explanation as to why two objects in direct
contact with each other (as Wang’s items 12 and 13 are depicted in Figure 3)
must be “fused together” so as to avoid a gap between them.
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Application 14/807,361
We are not persuaded by the Examiner’s assertion that unless two
components are fused together, a “gap” must exist between them. We are
instructed by our reviewing court that the Patent Office “may not, because it
may doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Further,
regarding the Examiner’s reference to the gap being “however small” (Final
Act. 5) or it being “on a small scale” (Ans. 13), we do not find it reasonable
to investigate the claim term “gap” at the microscopic or molecular level,
and there is no support in Appellant’s Specification to do so.
Accordingly, and based on the record presented, we do not sustain the
Examiner’s rejection of claims 1, 2, 5,2 7—9, 15, and 18.
The rejection of (a) claims 10, 11, and 17 as unpatentable over Jerome,
Price, Wang, and Rizzuto, JR and (b) claims 12, 13, and 16 as unpatentable
over Jerome, Price, Wang, and Purvis
Claims 10-13, 16, and 17 each depend, directly or indirectly, from
claim 1. The Examiner relies on the additional teachings of Rizzuto, JR and
Purvis for the additional limitations recited. Final Act. 6—7. However, the
2 Regarding the Examiner’s separate discussion of claim 5 (Final Act. 5), we
agree with Appellant’s contention “that the Examiner’s reasoning is merely
conclusory” (App. Br. 9) because the Examiner simply recites the additional
limitations of claim 5, stating that Jerome teaches the same without
providing any reference or citation to Jerome where support for such
statements can be found. In the Examiner’s Answer, the Examiner shifts the
focus to address Wang (Ans. 13), but does not explain how this combination
teaches or suggests the recited structure of slots in both the thermal plate and
the cushion member or how the slots are perpendicular to each other. See
also Reply Br. 2—3 (“all words in a claim must be considered”). In short, the
Examiner has not presented a prima facie rejection of all the limitations of
claim 5.
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Application 14/807,361
Examiner does not employ these additional references in a manner that
might cure the defect noted above. Accordingly, for the reasons previously
expressed, we do not sustain the Examiner’s rejection of claims 10-13, 16,
and 17.
The rejection of (a) claims 19 and 20 as unpatentable over Jerome, Wang,
and White and (b) claims 21 and 22 as unpatentable over Jerome, Wang,
White, and Purvis
Claims 20—22 each depend, directly or indirectly, from independent
claim 19. Appellant only presents arguments with respect to claim 19. App.
Br. 10-12.
Claim 19 recites a “heat retention plate comprising a tongue-shaped
arcuate end.” The Examiner relies on Jerome for disclosing “a tongue
shaped arcuate end (Figure 1 at 11),” acknowledging that such shape is
found with respect to Jerome’s cushion member because “Jerome does not
teach a heat retention plate.” Final Act. 8. However, the Examiner relies on
Wang for disclosing the recited “heat retention plate” and Wang’s teaching
that such plate “is complimentary in shape to the area which it covers.”
Final Act. 9; see also Wang 13 (the tube (13) “has a shape matching to the
hair retaining portion” (12)). Hence, we understand the Examiner’s
reasoning to be that, due to Jerome’s alleged tongue shape on its cushion
member, Wang’s heat retention plate would likewise be similarly formed to
“compliment” or “mimic” this underlying surface. Final Act. 9; Ans. 13.
Appellant identifies a flaw with the Examiner’s findings. Appellant
explains that item 11 in Jerome’s Figure 1 is not a “tongue shaped arcuate
end” as the Examiner asserts (Final Act. 8) but instead is “a ‘space’ and not
[] a structural element.” App. Br. 10. In other words, as Appellant’s
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Application 14/807,361
argument is understood, Jerome does not disclose any underlying “tongue-
shaped arcuate end” structure that Wang’s plate would thus mimic.
To be clear, item 11 depicted in Figures 1, 4 and 5 of Jerome is the
underneath surface of a curved component 14 that encloses cavity 10 in
Jerome’s brush head 2. Final Act. 8; see also Jerome’s title, “Ventilated hair
brush” having a “hollow body.” The only “tongue shape” illustrated is the
opening delineated by this curved surface. Hence, even if the Examiner is
referring to this opening (since surface 11 itself is not “tongue-shaped”), the
Examiner does not explain how Wang’s teaching of being complimentary to
an underlying surface would apply when there is no underlying surface to be
complimentary to. Furthermore, we note that if Wang’s plate were to
overlay this opening, such tongue would block the passageway, thereby
blocking any ventilation of the hair brush when, instead, Jerome is
particularly concerned with providing (not blocking) “vents running through
the base.” Jerome Abstract. For the above reasons, we do not sustain the
Examiner’s rejection of claims 19—22.
In addition to the above, claim 19 also recites “sliding insertion of
said resilient cushion member carrying said heat retention plate.” Hence, as
understood, both the cushion member and the heat retention plate are slid
together; Appellant contends that this limitation “is not taught or solved by
the Jerome-White-Wang combination.” App. Br. 11. The Examiner
addresses this “sliding insertion” limitation when addressing Wang’s plate,
by stating, “where the plate slides into position (down the bristles toward the
brush).” Final Act. 10. However, it is not clear how Wang’s plate, once
Jerome’s bristles are in place and extend through the cushion member (see
Figures 1 and 2 of Jerome), can be slid into position because the bristles
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Application 14/807,361
would prevent such sliding from occurring. Further, the Examiner is
addressing sliding the plate with respect to the bristles that are inserted
through the cushion member, and does not address the claim language
wherein both the plate and the cushion member slide together. The
Examiner is silent on this point. See Ans. 14. Consequently, based on this
additional reason, we do not sustain the Examiner’s rejection of claims 19-
22.
DECISION
The Examiner’s rejections of claims 1, 2, 5, 7—13, and 15—22 are
reversed.
REVERSED
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