Ex Parte RoherDownload PDFBoard of Patent Appeals and InterferencesJun 15, 201011318462 (B.P.A.I. Jun. 15, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KATHY ROHER ____________ Appeal 2009-008616 Application 11/318,462 Technology Center 3700 ____________ Decided: June 16, 2010 ____________ Before LINDA E. HORNER, JOHN C. KERINS and FRED A. SILVERBERG, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-008616 Application 11/318,462 2 STATEMENT OF THE CASE Kathy Roher (Appellant) seeks our review under 35 U.S.C. § 134 of twice-rejected claims 1-20, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM-IN-PART. THE INVENTION Appellant’s invention is directed to a system for coloring a lock of scalp hair. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for coloring a lock of scalp hair, comprising: a hair coloring product, the hair coloring product being a product to be applied to the lock of scalp hair; and a device for applying the hair coloring product to the lock of scalp hair, the device comprising a first gripping member comprising a first end portion having a free end and including a first inner face and a first outer face, and a first plurality of fibers extending from the first inner face, and a second gripping member comprising a second end portion having a free end and including a second inner face and a second outer face, a second plurality of fibers extending from the second inner face, Appeal 2009-008616 Application 11/318,462 3 wherein the first and second pluralities of fibers are configured to be loaded with the hair coloring product, and wherein the device is configured so that application of a pressing force to at least one of the first and second gripping members moves at least one of the first and second inner faces toward the other inner face so as to enable application of the hair coloring product to a lock of hair between the first and second inner faces. THE REJECTION The Examiner has rejected claims 1-20 under 35 U.S.C. 103(a) as being unpatentable over Stafford (US 877,960, issued February 4, 1908) in view of Dasilva (US 6,250,312 B1, issued June 26, 2001) and Ensign (US 3,608,565, issued September 28, 1971). ISSUES Did the Examiner establish that it would have been obvious to modify the hair coloring device in Stafford to employ brush fibers in lieu of the pads or cushions disclosed by Stafford, in view of the teaching of the use of brush fibers in the hair coloring device of Dasilva? Do the combined teachings of Stafford, Dasilva and Ensign render obvious a hair coloring system in which at least some of the first and second plurality of fibers on the first and second end portions of first and second gripping members comprise tufts of fibers? Appeal 2009-008616 Application 11/318,462 4 ANALYSIS Appellant presents separate arguments for the patentability of claims 3 and 13, apart from the arguments presented for all other claims as a group. Independent claim 1 will be taken as representative of the group of claims argued together, namely, claims 1, 2, 4-12 and 14-20. The Examiner found that the Stafford patent discloses all elements of the hair coloring system set forth in claim 1, with the exception of the provision of a plurality of fibers disposed on the inner faces of each of the first and second end portions of first and second gripping members. (Answer 3-4). Stafford discloses instead the use of opposing pads or cushions that are to be saturated with a hair coloring product and used to color hair. (Stafford, Fig. 1; p. 1, ll. 48-56). The Examiner concluded that it would have been obvious to modify the Stafford device to employ fibers as taught by Dasilva, in that such modification amounts to merely an alternative way of applying the hair coloring product to the hair of the user. (Answer 4). Appellant contends that the Examiner’s stated reason to modify Stafford is nothing more than a conclusory statement, bereft of rational underpinning. (Appeal Br. 17). The rational underpinnings for that statement are, however, that Stafford discloses the use of pads or cushions to apply colorant to hair, and Dasilva discloses the use of fibers to apply colorant to hair. Stated in slightly different terms, the Examiner’s statement is essentially that the combination or modification amounts to nothing more than a simple substitution of one element for another to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appeal 2009-008616 Application 11/318,462 5 Appellant further challenges the rejection on the basis that, even if the Examiner’s conclusory statement is proper, the Examiner has failed to articulate facts related to the level of skill possessed by one of ordinary skill in the pertinent art. (Appeal Br. 17). The absence of specific findings directed to the level of skill in the art is not necessarily determinative of error in an obviousness rejection, in that the prior art itself may reflect an appropriate level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). Here, the prior art itself, and in particular the Dasilva patent, including its discussion of various known approaches to hair coloring or highlighting, reflects the level of skill in the art. Appellant additionally argues that the Examiner failed to take into consideration evidence of secondary considerations in the form of the Dasilva patent allegedly teaching away from the combination of teachings. (Appeal Br. 18-20). Despite the possible loss of a secondary function obtained in the Dasilva device by not also modifying Stafford to include the hair securer to help capture excess hair colorant/highlighting solution, Appellant has not shown how Dasilva criticizes, discredits or otherwise discourages the use of bristles or fibers to apply a hair colorant, which is the aspect of Dasilva relied on by the Examiner in making the rejections. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact Appeal 2009-008616 Application 11/318,462 6 that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). We are thus not persuaded that the Examiner erred in concluding that the subject matter of claims 1, 2, 4-12 and 14-20 would have been obvious over Stafford in view of Dasilva and Ensign. Appellant argues, with respect to dependent claims 3 and 13, that none of the Stafford, Dasilva, and Ensign patents teach a system in which at least some of the first and second pluralities of fibers comprise tufts of fibers. (Appeal Br. 20-22). Appellant relies on the Specification, which describes tufts as “having a series of individual fibers bundled together so that fibers in the same tuft are spaced close to one another adjacent to inner faces 115 and 120 while diverging from each other at their free ends.” (Spec. 10:5-7). Appellant’s proffered definition of “tufts” is consistent with the ordinary meaning of “tufts.”1 The Examiner responded by stating that each row of fibers in Dasilva is held in some type of support, therefore it is proper to call each row of fibers a tuft of fibers. (Answer 6). The Examiner has not provided adequate findings or reasoning to enable us to support the position that Dasilva discloses the use of tufts of fibers, as that term is employed in Appellant’s Specification and in claims 3 and 13. The rejection of these claims will thus not be sustained. 1 The ordinary meaning of the word “tuft” includes “a small cluster of elongated flexible outgrowths attached or close together at the base and free at the opposite ends.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996). Appeal 2009-008616 Application 11/318,462 7 CONCLUSIONS The Examiner did not err in concluding that the subject matter of claims 1, 2, 4-12 and 14-20 would have been obvious over Stafford in view of Dasilva and Ensign. The Examiner has not established that the subject matter of claims 3 and 13 would have been obvious over Stafford in view of Dasilva and Ensign. DECISION The rejection of claims 1, 2, 4-12 and 14-20 under 35 U.S.C. § 103(a) is affirmed. The rejection of claims 3 and 13 under 35 U.S.C. § 103(a) is reversed. 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)(1)(iv) (2007). AFFIRMED-IN-PART mls FINNEGAN, HENDERSON, FARABOW, GARRETT& DUNNER, LLP 901 NEW YORK AVENUE, NW WASHINGTON, D.C. 20001-4413 Copy with citationCopy as parenthetical citation