Ex Parte Roher

Board of Patent Appeals and Interferences

Jun 15, 2010

11318462 - (D) (B.P.A.I. Jun. 15, 2010)

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
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Decided: June 16, 2010
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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

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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,
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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?

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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).
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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
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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).
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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

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