Ex Parte Sonstegard et al

Patent Trials and Appeals Board

Jun 10, 2019

14350297 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/350,297 04/07/2014
164 7590 06/12/2019
KINNEY & LANGE, P.A.
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
FIRST NAMED INVENTOR
Lois J. Sonstegard
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.
L506.12-0012 1771
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
06/12/2019 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):
uspatdocket@kinney.com
dabulmer@kinney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOIS J. SONSTEGARD and GEORGE STODOLA
Appeal2017-009537
Application 14/350,297 1
Technology Center 3700
Before DONALD E. ADAMS, JOHN G. NEW, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-17 (App. Br.
2). Examiner entered rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify "LJL, Inc." as the real party in interest (Appellants'
December 5, 2016 Appeal Brief (App. Br.) 2).
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Application 14/350,297
STATEMENT OF THE CASE
Appellants' disclosure "relates to apparatus for holding, securing and
styling hair" (Appellants' Specification (Spec.) 1:4--5). Claim 1 is
representative and reproduced below:
1. A device for styling hair, comprising:
a first flexible, deformable elongated body member, composed
of a material, having a length and having first and second
end portions;
a second flexible, deformable elongated body member,
composed of the material, having first and second end
portions connected to the first and second end portions of
the first body member, respectively, the second body
member having a length that is less than the length of the
first body member, so that a gap is formed between the first
body member and the second body member through which
hair may be inserted;
an attachment mechanism configured to secure the first end
portion of the first body member to the second end portion
of the first body member in a rounded configuration in
which the first and second body members are deformed into
a rounded shape with the second body member positioned
inside a circumference of the first body member.
(App. Br. 20.)
Grounds of rejection before this Panel for review:
Claims 1-3 and 5 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Rocchisani. 2
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Rocchisani and Harvie. 3
2 Rocchisani, US 3,259,302, issued July 5, 1966.
3 Harvie, US 2008/0223389 Al, published Sept. 18, 2008.
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Claims 9-11 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Rocchisani and Adams. 4
Claims 1, 3, 5, 9, 10, and 11 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over the combination of Horman 5 and Harrison. 6
Claims 2 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Horman, Harrison, and Sonstegard. 7
Claim 4 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Horman, Harrison, and Fala. 8
Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Horman, Harrison, and Elkins. 9
Claims 12-14 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Horman, Harrison, and Crowley. 10
Claims 15-17 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Horman, Harrison, and Stuhler. 11
Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Rocchisani teaches Appellants' claimed invention?
4 Adams et al., US 6,681,451 Bl, issued Jan. 27, 2004.
5 Horman, US 6,311,699 Bl, issued Nov. 6, 2001.
6 Harrison et al., US 2007/0131239 Al, published June 14, 2007.
7 Sonstegard, US 6,189,543 Bl, issued Feb. 20, 2001.
8 Fala, US 2008/0202548 Al, published Aug. 28, 2008.
9 Elkins, US 5,957,141, issued Sept. 28, 1999.
10 Crowley et al., US 2005/0039771 Al, published Feb. 24, 2005.
11 Stuhler, US 2012/0138077 Al, published June 7, 2012.
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Application 14/350,297
FACTUAL FINDINGS (FF)
FF 1. Appellants' Figure 1 is reproduced below:
-~---"\' .--i8
_,o-., r
16............... --'-·t\"'.- l4 / / ----- ./ /'//
2V o ), -- ,,-~// ,____ / ~'j/ ------_.-///
'- __ ,,.,. ... ~-12 +_../" Fig. 1
20
Appellants' "FIG. 1 is a diagram illustrating a bun holder in an open position
according to an embodiment of [Appellants'] ... invention" (Spec. 2:6-7).
FF 2. Appellants' Figure 2 is reproduced below:
Fig. 2
Appellants' "FIG. 2 is a diagram illustrating the bun holder of [Appellants']
FIG. 1 in a closed position" (Spec. 2:8).
FF 3. Appellants disclose:
FIGS. 1 and 2 illustrate bun holder 10 according to an
embodiment of the present invention. Bun holder 10 includes
first member 12 and second member 14 attached to each other
at first end 16 and second end 18 of bun holder 10. First
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member 12 is longer than second member 14, so that bun
holder 10 forms a "C" shape so that first member 12 and second
member 14 separates to form gap 20 as shown in FIG. 1. Gap
20 allows hair to be inserted therethrough to anchor bun holder
10 in place in a woman's hair. Once hair is inserted through
gap 20 of bun holder 10, bun holder may be curled into a
circular configuration as shown in FIG. 2, with first member 12
and second member 14 forming concentric circles. Bun holder
10 may be secured in the circular configuration by any of a
plurality of fastening arrangements/attachment mechanisms,
including a strap 22 and button 24 (made, for example, of high
density polyethylene), as shown in the exemplary embodiment
of FIGS. 1 and 2, a male/female closure (made, for example, of
molded plastic or die cut pieces), a clamp and extension
closure, or others. The mechanism for securing bun holder 10
in a circular configuration may, in one embodiment, be located
between first member 12 and second member 14, so that the
securing mechanism is somewhat hidden from view when bun
holder 10 is closed.
(Spec. 3:23--4:5.)
FF 4. Rocchisani's Figure 6 is reproduced below:
Rocchisani's "FIGURE 6 shows a practical application, for clamping the
walls of a bag in the neighbourhood of its opening, ... [wherein] the
material of the bag 5 is gathered together and introduced between the
members 1 and 2 which have been bent" (Rocchisani 2:36--41) (emphasis
omitted).
5
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FF 5. Rocchisani's Figure 7 is reproduced below:
~
,.,:--~--~~--·'
1(@><_<""2 ~-'
-~;
~ ........ "'rr. ... .-t
f : .
/ 1 , \ .. 5 ~i)\
_ .. ,..._-......,.,....,.....
FlG.·7
Rocchisani's "FIGURE 7 shows the apparatus and the bag of FIGURE 6
after effecting the bending and maintaining the latter by the use of the press
fastener" (Rocchisani 2:42--44).
FF 6. Rocchisani discloses:
In the embodiment of FIGURES 3 to 7, there can be seen two
equal strips 1 and 2 formed in one or more materials having the
properties of flexibility and elasticity and of appropriate
thicknesses. These strips are joined in the neighbourhood of
their ends by the male and female parts 4 and 3 of a press
fastener mounted through their double thickness.
(Rocchisani 2:23-29 (emphasis added).)
ANALYSIS
Examiner finds that Rocchisani anticipates the device set forth in
Appellants' claim 1 (see Ans. 12 2; see also FF 4--5; cf FF 1-3). We are not
persuaded.
Rocchisani discloses devices comprising "two equal strips" of
material (FF 6; see also App. Br. 6; see also Reply Br. 2). As Appellants
explain, the configuration of the device set forth in Appellants' claimed
invention, and illustrated in Appellants' FIG. 2, "is only geometrically
possible if the second body member ... has a length ... that is less than the
12 Examiner's May 11, 2017 Answer.
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length ... of the first body member," we are not persuaded by Appellants'
contention that "Rocchisani does not [implicitly] teach ... first and second
members of different lengths" (App. Br. 6; see FF 1-2; cf FF 5).
As illustrated in Rocchisani' s Fig. 7, Rocchisani' s device fails to
achieve the geometric requirements of Appellants' claimed invention (see
FF 5). In sum, Examiner failed to establish a factual basis on this record to
support a finding that any other embodiment set forth in Rocchisani' s
disclosure meets the geometric requirements of Appellants' claimed
invention (see Ans. 2-3; cf Reply Br. 2 (Appellants contend that "as shown
in all figures of Rosiccani, first and second members of equal length, when
connected and closed, lie flat against each other"); see also App. Br. 7-10;
FF 6).
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that Rocchisani teaches Appellants' claimed invention.
The rejection of claims 1-3 and 5 under 35 U.S.C. § 102(b) as being
anticipated by Rocchisani is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 7. Examiner finds that although Rocchisani discloses "the device of
[Appellants'] claim 1," wherein "body members are formed of a flexible,
bendable material," "Rocchisani is silent with regard to the exact material
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used to form the body members" and "does not disclose at least one of the
first and second body members are covered with cloth on at least one side
(Ans. 3--4; see also FF 6).
FF 8. Harvie
relates to a hair accessory for receiving and retaining a bundle
of hair, to a method of making such a hair accessory, and to
methods of styling hair and instructing others to style hair using
such a hair accessory. The hair accessory comprises a thin,
resilient ductile metallic member, which is continuously formed
or comprises a generally rectangular ductile metallic member
having a pair of longitudinal ends.
(Harvie ,r 48; see Ans. 3.)
FF 9. Harvie discloses that "the ductile metallic member may be covered
with a material such as fabric or tape attached with an adhesive such as glue
or tape" (Harvie ,r 78; see Ans. 3).
FF 10. Adams discloses a prior art cable tie "made of a flexible, tough,
slightly rubbery material such as SANTOPRENE 101-87 thermoplastic
rubber made by Monsanto Corporation" (Adams 1:58-61; see Ans. 4).
FF 11. Horman "relates generally to hair accessories, and more particularly
to a clamp that securely grasps and holds fine hair in place" (Horman 1 :8-
10).
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FF 12. Horman's Figure 1 is reproduced below:
Horman's "FIG. 1 shows ponytail holder 10 including a first rounded arm 11
with first formation 15, a second rounded arm 12 with second formation 17,
a hinge 13, and a fastening mechanism 14," wherein formations 15, 17
include elastic slings defining non-slip rubber-type teeth 23,24 that each
have "two planar sloping clamping faces 25 and a pointed linear apex 26"
(emphasis omitted) (Horman 2:67-3:4; id. at 3:13-15; id. at 3:39--41; see
also id. at 3:7-9 (Horman's "fastening mechanism 14 includes latch 37
protruding from an end of the first arm, and a hook 38 located within an end
of the second arm," wherein "[t]he outer surfaces of the two rounded arms
form a substantially cylindrical shape when the ponytail holder is closed");
Ans. 5).
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FF 13. Horman's Figure 11 is reproduced below:
Fifi .l l
Horman's "FIG. 11 is a perspective view of a ... ponytail holder [70] shown
in the open condition, having bridge-type elastic slings [71, 72] with flat
non-slip rubber-type gripping surfaces" (Horman 2:31-34; see id. at 4:50-
54; see also Ans. 5).
FF 14. The flat gripping surface of elastic slings 71, 72 illustrated in
Horman's FIG. 11 are not toothed and, therefore, differ from the toothed
elastic slings illustrated in Horman's FIG. 1 (see Horman 4:50-54).
FF 15. Horman discloses that "the non-slip rubber-type material is
[preferably] a silicone rubber of durometer value in the range 10-50, and
preferably about 30" (Horman 4:10-12; see Ans. 5 ("Horman teaches the
second flexible, deformable elongated body is made of non-slip rubber ...
but is silent with regard to the material used to construct the first elongated
body")).
FF 16. Examiner finds that "Horman is silent with regard to the material
from which the first body member is made and thus, does not teach the first
body member being made of the same flexible, deformable material as the
second body member" (Ans. 5; see id.).
FF 17. Examiner finds that Harrison discloses a hair styling device, wherein
"first and second [ elongated] bodies can be made of the same flexible,
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deformable material which can be a thermoplastic elastomer or rubber"
(Ans. 6 (citing Harrison ,r,r 61---62)).
FF 18. Examiner finds that "the combination [of Horman and Harrison]
does not disclose the attachment mechanism comprises a strap attached to
the first end portion of the first body member and a button attached to the
second end portion of the first body member" or "at least one of the first and
second body members includes at least one aperture formed as a clasp for
receiving a decorative item" and relies on Sonstegard to make up for these
deficiencies in the combination of Horman and Harrison (Ans. 7-8).
FF 19. Examiner finds that the combination of Horman and Harrison
does not disclose a first piece having a first disc, a post, and a
retaining element; a second piece having a second disc and a
tube, the post of the first piece being insertable into the tube of
the second piece and being retained by the retaining element of
the first piece, wherein the first disc and the second disc each
provide a surface to display design ornamentation,
and relies on Fala to make up for this deficiency in the combination of
Horman and Harrison (Ans. 9).
FF 20. Examiner finds that although the combination of Horman and
Harrison discloses "first and second body members ... composed of [a]
foam material (neoprene)," "the combination is silent with regard to [a]
neoprene material being closed cell neoprene" and relies on Elkins to make
up for this deficiency in the combination of Horman and Harrison (Ans. 11).
FF 21. Examiner finds that the combination of Horman and Harrison "does
not disclose at least one gem attached to at least one of the first and second
body members by an attachment mechanism selected from the group
consisting of gluing, sewing, stitching and heat processing" or "at least one
gem integrally formed in at least one of the first and second body members"
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and relies on Crowley to make up for this deficiency in the combination of
Horman and Harrison (Ans. 12-13).
FF 22. Examiner finds that the combination of Horman and Harrison
does not disclose ... a bun anchor insertable into an interior
opening inside a circumference of the second body member, the
bun anchor including a securing portion for securing the bun
anchor into place and a mounting portion for mounting
decorative accessories, wherein the mounting portion includes a
receptacle for securably receiving decorative accessories and
the securing portion is selected from the group consisting of
bendable anchors, a pin, and a flexible loop
and relies on Stuhler to make up for this deficiency in the combination of
Horman and Harrison (Ans. 14--15).
ANALYSIS
The rejection of claim 7 over the combination of Rocchisani and Harvie:
Appellants' claim 7 depends from and further limits the first and
second body members of Appellants' claim 1 to require that they "are
covered with cloth on at least one side" (App. Br. 21 ).
Based on the combination of Rocchisani and Harvie, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious "to modify the first and/or second body member of
the device disclosed by Rocchisani to be covered with cloth on at least [one]
side as taught by Harvie in order to provide the device with a decorative
exterior, enhancing the aesthetics thereof' (Ans. 3; see FF 1-9). We are not
persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Harvie makes up for the deficiency in Rocchisani
discussed above (see Ans. 3; cf App. Br. 17 (Appellants contend that Harvie
fails to make up for the deficiencies in Rocchisani); see also id. at 1 7-19).
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The rejection of claims 9-11 over the combination of Rocchisani and
Adams:
Appellants' claim 9 depends from and further limits the first and
second body members of Appellants' claim 1 to require that they are
"composed of a rubber material" (App. Br. 21 ). Appellants' claims 10 and
11 depend from Appellants' claim 9 (see id.).
Based on the combination of Rocchisani and Adams, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious "to construct the device disclosed by Rocchisani of
a thermoplastic elastomer as it is well-known and common practice to
construct such devices of thermoplastic elastomers as demonstrated by
Adams et al. as these materials impart the desired flexibility and durability to
the device" (Ans. 4; see FF 1-7 and 10). We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Adams makes up for the deficiency in Rocchisani
discussed above (see Ans. 4; cf App. Br. 17 (Appellants contend that Adams
fails to make up for the deficiencies in Rocchisani); see also id. at 17-19).
The rejection of claims 1, 3, 5, 9, 10, and 11, over the combination of
Horman and Harrison:
Appellants' claim 1 is reproduced above. Appellants' claims 3, 5, 9,
10, and 11 depend directly or indirectly from Appellants' claim 1.
Based on the combination of Horman and Harrison, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious
to modify the device disclosed by Horman such that the first
and second body be made of the same flexible, deformable
thermoplastic elastomer or rubber ( e.g. neoprene) material as
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Harrison et al. demonstrates this is a well-known practice in the
art and it has been held to be within the general skill of a
worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design
choice.
(Ans. 6.) We are not persuaded.
Appellants' claim 1 requires, inter alia, first and second flexible,
deformable elongated body members, which have first and second end
portions (see App. Br. 20; FF 1-3). Examiner asserts that
Horman discloses a device ... comprising: a first elongated
body member (11, 12) having a length and having first and
second end portions ... [and] a second flexible, deformable
elongated body member ... [71, 72] having first and second
end portions connected to the first and second end portions of
the first body member.
(Ans. 5.) We are not persuaded.
Notwithstanding Examiner's assertion to the contrary, Horman
discloses two sets of first and second elongated body members-a first set
defined by first rounded arm 11 and first formation 15, including bridge-type
elastic sling 71 and a second set defined by second rounded arm 12 and
second formation 17, including bridge-type elastic sling 72 (see FF 12-15).
Appellants' claim 1 further requires
an attachment mechanism configured to secure the first end
portion of the first body member to the second end portion of
the first body member in a rounded configuration in which the
first and second body members are deformed into a rounded
shape with the second body member positioned inside a
circumference of the first body member.
(App. Br. 20 (emphasis added); FF 1-3.)
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Examiner asserts that Horman discloses
an attachment mechanism ( 14) configured to secure the first
end portion of the first body member to the second end portion
of the first body member in a rounded configuration in which
the first and second body members are deformed into a rounded
shape with the second body member positioned inside a
circumference of the first body member.
(Ans. 5.) We are not persuaded.
Notwithstanding Examiner's assertion to the contrary, Horman's
attachment mechanism, or "fastening mechanism 14 includes latch 3 7
protruding from an end of the first arm [11], and a hook 38 located within an
end of the second arm [12]" (FF 12 (emphasis added)). Horman further
discloses that the ends of the first and second arms 11, 12 that are not
associated with fastening mechanism 14, i.e. second ends of the first and
second arms 11, 12, are connected through hinge 13 (id.). Thus, contrary to
Appellants' claim 1, Horman's device can only be fastened if both sets of
first and second elongated body members are connected to each other
through hinge 13 and, further, it is the outer surfaces of Horman's combined
first and second sets of elongated body members that "form a substantially
cylindrical shape when the ponytail holder is closed" and fastened (FF 12).
Further, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that Horman in combination with Harrison
could be read to suggest a device wherein rounded arm, i.e. 11, is connected
to a formation, i.e. 15, and comprises an attachment, or fastening,
mechanism configured to secure the first and second end portions of the
rounded arm 11, i.e. first body member, in a rounded configuration in which
rounded arm 11 and formation 15are deformed into a rounded shape with
formation 15 positioned inside a circumference of rounded arm 11 ( cf App.
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Br. 20). Therefore, we are not persuaded by Examiner's assertion that the
semi-circular gap between Horman's first arm 11 and first formation 15 or,
alternatively second arm 12 and second formation 17 satisfy the
requirements of an attachment mechanism or rounded configuration as set
forth in Appellants' claim 1 (see id.).
In addition, Examiner failed to establish that Harrison's disclosure
"first and second [ elongated] bodies can be made of the same flexible,
deformable material which can be a thermoplastic elastomer or rubber"
makes up for the foregoing deficiencies in Horman (FF 17; see generally
12-16).
For the foregoing reasons, we agree with Appellants' intimation that
Examiner's interpretation of Horman is not consistent with Horman' s
disclosure (see App. Br. 14; see generally id. at 10-17). For the same
reasons, we also agree with Appellants' contention that neither Horman nor
Harrison makes obvious Appellants' claimed invention (see App. Br. 14
("The combination of Horman and Harrison does not disclose or suggest the
use of first and second elongated body members, wherein the second
elongated body member has a length less than that of the first as recited in
[Appellants'] claim 1, nor do they teach the attachment mechanism of
[Appellants'] claim 1 "); id. at 16 ("Harrison does not teach a rounded
configuration, an attachment mechanism, and first and second body
members of unequal lengths as recited in [Appellants'] claim 1; see
generally id. at 10-17); Reply Br. 2-3).
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The rejection of claims 2 and 8 over the combination of Horman, Harrison,
and Sonstegard:
Appellants' claim 2 depends from and further limits the attachment
mechanism of Appellants' claim 1 to comprise "a strap attached to the first
end portion of the first body member and a button attached to the second end
portion of the first body member" (App. Br. 20). Appellants' claim 8
depends from and further limits the first and second body members of
Appellants' claim 1 to "include[] at least one aperture formed as a clasp for
receiving a decorative item" (id. at 21 ).
Based on the combination of Horman, Harrison, and Sonstegard,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious, with respect to Appellants' claim 2,
"to modify the attachment mechanism disclosed by the combination of
Horman and Harrison et al. such that the male-female mechanism be
replaced with a button and strap with button hole mechanism as Sonstegard
demonstrates these attachment mechanisms are art-recognized functional
equivalents" and, with regard to Appellants' claim 8, "to modify the first
elongated body of the combination of Horman and Harrison et al. to include
at least one aperture formed as a clasp as taught by Sonstegard in order
allow the device to retain decorative items to further enhance the aesthetic
appeal of the hair styling device" (Ans. 8-9; see FF 12-18). We are not
persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Sonstegard makes up for the deficiency in the
combination of Horman and Harrison discussed above (see Ans. 8-9; cf
App. Br. 17 (Appellants contend that Sonstegard fails to make up for the
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deficiencies in the combination of Horman and Harrison); see also id. at 17-
19).
The rejection of claim 4 over the combination of Horman, Harrison, and
Fala:
Appellants' claim 4 depends from and further limits the attachment
mechanism of Appellants' claim 1 to comprise:
a first piece having a first disc, a post, and a retaining element;
a second piece having a second disc and a tube, the post of the
first piece being insertable into the tube of the second piece
and being retained by the retaining element of the first piece,
wherein the first disc and the second disc each provide a surf
ace to display design ornamentation.
(App. Br. 21.)
Based on the combination of Horman, Harrison, and Fala, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious
to modify the male-female attachment means disclosed by the
combination of Horman and Harrison et al. such that the male
member/post extend from a flat disc and the female member be
a tube extending from a flat disc such that insertion of the post
in the tube provides retention via the retaining element of the
post as Fala demonstrates this is a well-known male-female
attachment means configuration in the art. The combination of
Horman, Harrison et al. and Fala provides disc surfaces which
are capable of displaying ornamental designs
(Ans. 10.) We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Fala makes up for the deficiency in the
combination of Horman and Harrison discussed above (see Ans. 10; cf FF
12-17 and 19; App. Br. 17 (Appellants contend that Fala fails to make up for
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the deficiencies in the combination of Horman and Harrison); see also id. at
17-19).
The rejection of claim 6 over the combination of Horman, Harrison, and
Elkins:
Appellants' claim 6 depends from and further limits the first and
second body members of Appellants' claim 1 to require that they "are
composed of closed cell foam material" (App. Br. 21 ).
Based on the combination of Horman, Harrison, and Elkins, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious
to modify the hair styling device of the combination of Horman
and Harrison et al. such that the neoprene first and second
bodies be of closed cell neoprene as it is well-known in the art
for neoprene hair styling devices to be of closed-cell neoprene
in order to impart a desired waterproof, non-absorbent device as
demonstrated by Elkins; furthermore, it has been held to be
within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice.
(Ans. 11.) We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Elkins makes up for the deficiency in the
combination of Horman and Harrison discussed above (see Ans. 11; cf . FF
12-17 and 20; App. Br. 17 (Appellants contend that Elkins fails to make up
for the deficiencies in the combination of Horman and Harrison); see also id.
at 17-19).
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Application 14/350,297
The rejection of claims 12-14 over the combination of Horman, Harrison,
and Crowley:
Appellants' claim 12 depends from and further limits Appellants'
claim 1 to "further compris[ e] at least one gem attached to at least one of the
first and second body members" (App. Br. 21). Appellants' claim 13
depends from Appellants' claim 12. Appellants' claim 14 depends from and
further limits Appellants' claim 1 to
further compris[ e] at least one gem integrally formed in at least
one of the first and second body members, wherein at least one
of the first and second body members is composed of a plastic
material, and the at least one gem is molded into at least one of
the first and second body members during formation of the at
least one of the first and second body members.
(App. Br. 22.)
Based on the combination of Horman, Harrison, and Crowley,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious, with respect to Appellants' claims 12
and 13,
to modify the hair styling device disclosed by the combination
of Horman and Harrison et al. such that at least one gem glued
to the first body member as Crowley demonstrates it is well-
known in the art to provided glued gems to the exterior surfaces
of hair styling devices to enhance the aesthetics of the device
and allow the device to further decorate the user's hair
and, with respect to Appellants' claim 14,
to modify the hair styling device disclosed by the combination
of Horman and Harrison et al. such that at least one gem be
implanted in the first body member as Crowley demonstrates it
is well-known in the art to provided such decorative gems on
body portions of hair styling devices to enhance the aesthetics
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Appeal2017-009537
Application 14/350,297
of the device where attachment, gluing or implanting means are
all demonstrated to be functionally equivalent.
(Ans. 12-13.) We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Crowley makes up for the deficiency in the
combination of Horman and Harrison discussed above (see Ans. 12-14; cf.
FF 12-17 and 21; App. Br. 17 (Appellants contend that Crowley fails to
make up for the deficiencies in the combination of Horman and Harrison);
see also id. at 17-19).
The rejection of claims 15-17 over the combination of Horman, Harrison,
and Stuhler:
Appellants' claim 15 depends from and further limits Appellants'
claim 1 to "further compris[ e]: a bun anchor insertable into an interior
opening inside a circumference of the second body member, the bun anchor
including a securing portion for securing the bun anchor into place and a
mounting portion for mounting decorative accessories" (App. Br. 22).
Appellants' claims 16 and 17 depend from Appellants' claim 15 (id.).
Based on the combination of Horman, Harrison, and Stuhler,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious
to modify the device disclosed by the combination of Horman
and Harrison et al. such that the device be provided in
combination with a bun anchor including a securing portion
having bendable anchors for securing the bun anchor into place
and a mounting portion having a receptacle for mounting
decorative accessories where the bun anchor is inserted inside a
circumference of the second body member as Sthuler
demonstrates it is well-known and common practice in the art
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to use such bun anchors and hair retaining devices together so
that the hair appears more voluminous and thicker.
(Ans. 15.) We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Stuhler makes up for the deficiency in the
combination of Horman and Harrison discussed above (see Ans. 14--15; cf.
FF 12-17 and 22; App. Br. 17 (Appellants contend that Stuhler fails to make
up for the deficiencies in the combination of Horman and Harrison); see also
id. at 17-19).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rocchisani and Harvie is reversed.
The rejection of claims 9-11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rocchisani and Adams is reversed.
The rejection of claims 1, 3, 5, 9, 10, and 11 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Horman and Harrison is reversed.
The rejection of claims 2 and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Horman, Harrison, and Sonstegard is
reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Horman, Harrison, and Fala is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Horman, Harrison, and Elkins is reversed.
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Application 14/350,297
The rejection of claims 12-14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Horman, Harrison, and Crowley is
reversed.
The rejection of claims 15-17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Horman, Harrison, and Stuhler is
reversed.
REVERSED
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