12227610 (P.T.A.B. Jun. 17, 2015)

Ex Parte Sloan

Patent Trial and Appeal BoardJun 17, 2015

12227610 (P.T.A.B. Jun. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/227,610 03/20/2009 Ashley Sloan HODA112USA 4603 24339 7590 06/17/2015 JOEL D. SKINNER, JR. SKINNER AND ASSOCIATES 212 COMMERCIAL ST. HUDSON, WI 54016 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 06/17/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ASHLEY SLOAN ____________________ Appeal 2013-006750 Application 12/227,610 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and JILL D. HILL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 18–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a method of handling a hair treatment substance. Claim 18, reproduced below, is illustrative of the claimed subject matter: Appeal 2013-006750 Application 12/227,610 2 18. A method of handling at least one hair treatment substance, the method including the steps of: 18.1 providing a tinting bowl device that includes a receptacle in the form of a base bowl defining a bowl interior and a plurality of receptacles each in the form of a liner, shaped complementarily with respect to, and nested within, said interior, wherein each liner that has, immediately below it, one of a receptacle in the form of the base bowl, and a receptacle in the form of a liner, is detachably fixed to that receptacle; 18.2 placing, at least one said substance in an uppermost one of said e [sic] liners; 18.3 after at least one substance in the uppermost liner has been used on hair, removing the uppermost liner together with any of the at least one substance remaining therein, from a remainder of the tinting bowl device whereby the liner immediately below that uppermost liner becomes the uppermost liner; and 18.4 repeating steps 18.2 and 18.3. REJECTION Claims 18–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rodriguez (US 2005/0067320 A1, pub. Mar. 31, 2005) in view of Ibsch (US 2,542,413, pub. Feb. 20, 1951). Final Act. 3. OPINION The Examiner concluded that it would have been obvious to employ Ibsch’s laminated vessel 10/14 in place of the mixing bowl 36 used by Rodriguez in a typical method of hair coloring treatment. Id. at 3–4. As the Examiner’s rejection is predicated on such substitution, Appellant’s argument that the Examiner considered the repeating steps, 18.2 and 18.3, to be met by reusing Rodriguez’s vessel (App. Br. 9) is inapposite. Ans. 4. Repeating can be accomplished without washing in the proposed combination. Id. at 2–3. We also cannot agree with Appellant’s contention Appeal 2013-006750 Application 12/227,610 3 that the fact that Rodriguez contemplates reusing mixing bowl 36 would teach away from using disposable bowls to avoid such reuse. See App. Br. 7. The Examiner properly characterized washing as simply a preferred embodiment or alternative which does not criticize or discredit others. Final Act. 5–6 (citing In re Fulton, 391 F.3d 1195,1201 (Fed. Cir. 2004)). An express disclosure of such alternatives is not necessary to demonstrate that the prior art did not “teach away” from those alternatives. See App. Br. 10. Nevertheless, as the Examiner correctly points out, Appellant’s assertion that Rodriguez does not contemplate a non-cleaning or disposable “alternative” is clearly inaccurate. Ans. 5; Rodriguez ¶¶ 37–38, Figs. 1, 2 (substituting disposable bowls 132 for the reusable one 36). The Examiner’s proposed combination does not involve “shopping bags and flammable gas storage tankers” as asserted by Appellant. App. Br. 8. Rather, it involves substituting structurally similar containers for similar, albeit not identical uses, in that both contain small amounts of different liquids. We agree with the Examiner that Ibsch’s laminated vessel which provides clean surfaces without washing was, despite being described only as intended to contain food-related items, reasonably pertinent to the problem of washing bowls in the hairdressing industry. Ans. 3–4. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). The problems encountered by Appellant were not unique to haircare. See, e.g., In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). “[F]amiliar items may have obvious uses beyond their primary purposes[.]” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007); see also MPEP § 904.01(c) (Articles intended to be used or operated on do not necessarily define the scope of the relevant prior art). Appeal 2013-006750 Application 12/227,610 4 DECISION The Examiner’s rejection of claims 18–20 under 35 U.S.C. § 103(a) is affirmed. 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). AFFIRMED cda