Ex Parte Singer et alDownload PDFPatent Trial and Appeal BoardMay 17, 201814335166 (P.T.A.B. May. 17, 2018) Copy Citation 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 2 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/\ 3 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. 4 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). 5 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. 6 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. 7 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 8 Copy with citationCopy as parenthetical citation