Ex Parte Singer et al

Patent Trial and Appeal Board

May 17, 2018

14335166 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/335,166
72960 7590
Casimir Jones, S.C.
FILING DATE
07/18/2014
05/21/2018
2275 Deming Way Ste 310
Middleton, WI 53562
FIRST NAMED INVENTOR
Michelle Lyn Singer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SING-34025/US-2/0RD 8760
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
docketing@casimirjones.com
pto .correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE LYN SINGER and EV AN LAURENCE SINGER
Appeal2017-006087
Application 14/335,166
Technology Center 3700
Before DEMETRA J. MILLS, ERIC B. GRIMES and JEFFREY N.
FREDMAN, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b ).
We reverse.
Appeal2017-006087
Application 14/335, 166
STATEMENT OF CASE
The following claim is representative.
1) A process for making a hair bun comprising the steps of:
a. gathering a portion of hair desired to form into a hair bun, and
putting a band around said portion of hair closest to hair roots to form a
ponytail,
b. placing said portion of hair formed into a ponytail into an open-
ended flexible tube having a first open end positioned nearest said hair roots
and a second open end most distal from said hair roots, and
c. spreading hair at an end of the ponytail, furthest from the hair roots,
around an edge of said second open end of said tube, and continually rolling
said tube and hair together in an outward motion, wrapping hair underneath
said tube, and moving said second open end towards said first open end, until
a hair bun is formed.
Cited Reference
Carriedo
Grounds of Rejection
US2014/0048094 Al Feb.20,2014
Claims 1-3, 5, 6, and 9 are rejected under 35 U.S.C. § I02(a)(2) as
being anticipated by Carriedo.
Claim 11 is rejected under 35 U.S.C. § 103 as being obvious over
Carriedo.
FINDINGS OF FACT
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Appeal2017-006087
Application 14/335, 166
The Examiner's findings of fact are set forth in the Final Action at
pages 2-8. The following facts are highlighted.
1. Figure 3 of the Specification is reproduced below.
Figure 3 shows "hair being spread around the edge of the end of an open-
ended flexible tube 13, and the tube 13 and hair being rolled together in an
outward motion." Spec. 3.
2. Figures 6A and 6B of Carriedo are reproduce below.
FtG_. fJ/\
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Appeal2017-006087
Application 14/335, 166
Figure 6A of Carriedo shows placement of hair bun tube/ring.
Figure 6B shows rolling direction of hair around bun tube/ring of
Carriedo.
Once a pony tail is formed using a tie 30, the hair
extending through the tie is extended outward from the scalp
and the distal end of the collection of hair is placed through
the open circle formed by the main ring .... Once inserted over the
end
of the hair collection, the hair ends are placed in contact with
the grasping hooks 15 extending from the straps 14 wrapped
around the tube 12. The tube 12 is then rotated about its
centerline toward the scalp (see FIG. 6B) and continuously
rolled until it fits snugly against the scalp and is completely
encompassed by the hair wrapped around it, forming a bun
that is held firmly in position.
Carriedo i-f 3 5.
3. Figure 1 of Carriedo, with Appellants' annotations, is reproduced
below.
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Appeal2017-006087
Application 14/335, 166
f'lG, 'l
Figure 1 of Carriedo, with Appellants' letter and directional
annotations, shows a hair accessory 10 comprised of a flexible tube
12 formed into a ring and combined with a plurality of straps 14.
Carriedo i-f25. Appellants' annotations are added to show A
(surface of one open end); B inside surface of ring; C (surface of
the other open end - underneath and hidden in the image); and D
outside surface of the ring. Reply Br. 4.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
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Appeal2017-006087
Application 14/335, 166
Anticipation Rejection
The Examiner finds that Carriedo teaches each element claimed. In
particular, regarding claim 1, step c ), the Examiner finds that
After placing the ponytail into the open ended tube, a user then
spreads ends of the hair strands of the ponytail, furthest from the
roots, around an edge end of second bottom open end of the tube (see
Figs 6A-6B) and continually rolls the tube and hair together in an
outward motion [0028] (see Fig 6B) wrapping the hair strands of the
ponytail underneath the tube [0028] and this motion constitutes
moving the second open end towards the first open end (because this
language is broad) until a base of the head is reached and a hair bun is
formed [0008 & 0028] (see Figs 1-6C).
Ans. 2-3.
Appellants contend that
The claims require a number of elements associated with the open-
ended flexible tube. For example, its first end is positioned nearest
the hair roots and during the continual rolling, the second end is
moved towards the first open end. The first open end has a position
("a first open end positioned nearest the hair roots"). And the second
open end moves towards it. This feature is entirely lacking from
Carriedo and therefore Carriedo cannot anticipate or render obvious
the claims.
Reply Br. 3, FPL
The dispositive issue in the case is whether Carriedo teaches claim 1,
step c): "spreading hair at an end of the ponytail, furthest from the hair
roots, around an edge of said second open end of said tube, and continually
rolling said tube and hair together in an outward motion, wrapping hair
underneath said tube, and moving said second open end towards said first
open end, until a hair bun is formed." Italicized emphasis added.
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Appeal2017-006087
Application 14/335, 166
ANALYSIS
We do not find that the Examiner has provided evidence in the prior
art to support a prima facie case of anticipation. We are persuaded by
Appellants' argument that Carriedo does not disclose claim 1, step ( c ):
"spreading hair at an end of the ponytail, furthest from the hair roots, around
an edge of said second open end of said tube, and continually rolling said
tube and hair together in an outward motion, wrapping hair underneath said
tube, and moving said second open end towards said first open end, until a
hair bun is formed." In particular, the rolling of Carriedo' s tube does not
move the second open end of the tube toward the first open end of the tube
until a hair bun is formed, as claimed (FFl, FF2). In Carriedo,
When Carriedo' s ring is rolled about its center line, it is
inverted. Sides A and C swap locations and D becomes the inside and
B, the outside. On the next roll, it returns to its original position. The
relative position of side A and C to each other always remains the
same. One open end does not move towards the other under any
circumstance, let alone during a continual rolling process. After one
roll, the ''first open end" will now be further from the hair roots than
the second open end (because it reversed positions), violating the
claimed position language.
Reply Br. 4, italicized emphasis added.
Because Carriedo does not teach claim 1, step c ), "moving said
second open end towards said first open end, until a hair bun is formed," the
anticipation rejection is reversed.
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Appeal2017-006087
Application 14/335, 166
Obviousness Rejection
The pending obviousness rejection is reversed for the same reasons,
discussed above, as the anticipation rejection.
CONCLUSION OF LAW
The cited references do not support the Examiner's anticipation and
obviousness rejections, which are reversed.
REVERSED
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