Ex parte Schrepf

Board of Patent Appeals and Interferences

Sep 13, 1999

08410931 (B.P.A.I. Sep. 13, 1999)

Application for patent filed March 27, 1995. According1
to appellant, this Application is a continuation of
Application 08/055,675, filed April 30, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte VOLKER SCHREPF
_____________
Appeal No. 1999-0930
Application 08/410,9311
______________
ON BRIEF
_______________
Before CALVERT, COHEN and McQUADE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3 and 5 through 16. These claims constitute all of
the claims remaining in the application.
Appeal No. 1999-0930
Application 08/410,931
2

Appellant’s invention pertains to a system for applying
fluid cosmetic material, to an eyeliner applicator system, and
to a cosmetic material applicator for use with a container
holding a body of fluid cosmetic material. An understanding
of the invention can be derived from a reading of exemplary
claims 1, 7, and 12, copies of which appear in the Appendix to
the main brief (Paper No. 29).
As evidence of obviousness, the examiner has applied the
documents listed below:
Bell 566,558 Aug. 25,
1896
Buehrer 1,542,333 Jun. 16, 1925
Kitamura et al. 4,764,046 Aug. 16, 1988
(Kitamura)
Gueret 4,841,996 Jun. 27, 1989
Yokosuka et al. 4,913,175 Apr. 3, 1990
(Yokosuka)
The following rejections are before us for review.
Claims 1 through 3, 5, 6, and 12 through 16 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Gueret in view of Buehrer, Bell, and Kitamura.
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Application 08/410,931
3
Appeal No. 1999-0930
Application 08/410,931
In our evaluation of the applied references, we have2
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
4
Claims 7 through 11 stand rejected under 35 U.S.C. § 103
as being unpatentable over Gueret in view of Buehrer, Bell,
and Kitamura, as applied above, further in view of Yokosuka.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 30), while the complete statement of appellant’s
argument can be found in the main and reply briefs (Paper Nos.
29 and 31).

OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and2
Appeal No. 1999-0930
Application 08/410,931
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
We reverse the respective rejections of the claims on
appeal under 35 U.S.C. § 103.
Initially, we make the following findings relative to the
examiner’s evidence of obviousness.
The Gueret document discloses an applicator device (Fig.
1) that includes a brush comprising a tuft of hairs 8 carried
by a stem 9 and a bottle 2 containing a liquid product L. The
stem includes a hollow portion 14 defining a chamber or
reservoir R which is capable of replenishment by capillarity
when the hairs 8 of the brush are immersed in the liquid
product L. The hollow portion 14 comprises capillary
striations 18 (Fig. 2) oriented parallel to the axis of the
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Application 08/410,931
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stem and promotes rising and retention of the liquid product
in the hollow portion 14 (column 4, lines 35 through 39). The
liquid product L passes along the surface of the tuft, not
between the hairs (column 8, lines 3 through 8). With this
arrangement, it is possible to apply nail varnish over a whole
hand without having to reimmerse the hairs 8 of the brush 3 in
the liquid product of the bottle 2 (column 5, lines 10 through
14). The Buehrer reference (Fig. 2) teaches a fountain marker
brush comprising a body 1 filled with ink including a lower
nipple 9 and nozzle 11. The nozzle has a central threaded
hole 12, with a marking point 2 of the brush screwed therein.
The marking point can be an interchangeable point made of felt
(preferred), soft or stiff hair, sponge, rolled cloth, or any
other firm flexible capillary material (page 1, lines 82
through 88). Viewing Figs. 2 and 3, the interior threaded
hole of the nozzle includes a series of small ink feeding
channels 13 which lead from the space above the nozzle and
“terminate just inside the extreme end of the nozzle as shown”
(page 1, lines 96 through 101). The upper end of the marking
point is completely surrounded by an auxiliary ink reservoir
Appeal No. 1999-0930
Application 08/410,931
7
or chamber 14 which is entirely separated from a main ink
reservoir 15 within the body by a seated valve 7 (page 1,
lines 102 through 108). No air vent exists at the marking
point 2 of the brush, since the feeding grooves 13 terminate
just before the end of the nozzle 11 (page 2, lines 34 through
37). The patent to Bell teaches (Figs. 2, 6, and 7) a marking
instrument wherein depressions b’ in a brush guide admit free
limited flow of a liquid to supply a brush E on its outer
side. The Kitamura patent addresses a manicure liquid applying
device (Figs. 1 and 2) wherein a plurality of grooves 4c
facilitate the guiding of manicure liquid to the leading edge
of an applying portion 5 (column 4, lines 4 through 7). The
applying portion is constituted by a brush member folded in
two and then fixed by a stopper 6 (column 3, lines 64 through
66). The Yokosuka reference teaches a liquid applying tool
for manicure liquids or eye liner liquids.
It is apparent to us that one having ordinary skill in
the art would have fairly understood from the Gueret teaching
that the capillary striations 18 in the hollow portion or
Appeal No. 1999-0930
Application 08/410,931
8
chamber 14 extend to the end point of the lower end 22 of the
stem. As we see it, our assessment in this matter is clearly
supported by the patentee’s statements regarding the operation
of the applicator, i.e., the striations 18 promote the rising
and retention of
Appeal No. 1999-0930
Application 08/410,931
9
liquid product in the hollow portion (column 4, lines 35
through 39) and the liquid product “passes axially along the
outer surface of the tuft” (column 8, lines 3 through 8).
Like the examiner, we certainly appreciate the relevance
of the Gueret and Buehrer teachings, in particular, to the
claimed invention. Nevertheless, this panel of the board
concludes that, absent hindsight, the entirety of the evidence
of obviousness relied upon, by itself, simply would not have
been suggestive of altering the applicator device of Gueret to
yield the subject matter of independent claims 1, 17, and 12.
Each of these specified claims requires an applicator having a
reservoir “spaced from” a distal end of a stem, with a passage
in the stem communicating between the reservoir and the distal
end, and with the passage defining a path for flow between the
distal end and the reservoir externally of the body portion of
a tip inserted in the passage. The overall applicator of
Gueret is not configured with a reservoir spaced from the
distal end of stem 9. Instead, as can readily be discerned
from a review of Fig. 1 of Gueret, the hollow portion of the
Appeal No. 1999-0930
Application 08/410,931
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stem 9 is, itself, the reservoir R which extends, along with
its capillary striations, to the distal end of the stem, as
earlier explained. Thus, in our opinion, it would have taken
impermissible hindsight and specifically chosen prior art
features to alter the applicator device of Gueret to address
the content of appellant’s claims. It is for this reason that
the rejections are reversed.
In summary, this panel of the board has:
reversed the rejection of claims 1 through 3, 5, 6, and
12 through 16 under 35 U.S.C. § 103 as being unpatentable over
Gueret in view of Buehrer, Bell, and Kitamura; and
reversed the rejection of claims 7 through 11 under 35
U.S.C. § 103 as being unpatentable over Gueret in view of
Buehrer, Bell, and Kitamura, and Yokosuka.
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Application 08/410,931
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The decision of the examiner is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
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Application 08/410,931
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ICC/dal
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Application 08/410,931
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CHRISTOPHER C. DUNHAM
COOPER AND DUNHAM
1185 AVENUE OF THE AMERICAS
NEW YORK, NY 10036