Ex Parte Stewart

Patent Trial and Appeal Board

Jun 25, 2018

11708742 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111708,742 02/21/2007
2529 7590
MARK P. STONE
400 Columbus A venue
Valhalla, NY 10595
06/27/2018
FIRST NAMED INVENTOR
Juliet Stewart
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.
402-262 9341
EXAMINER
KALACH, BRIANNE E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
stone92349@msn.com
aleitner.stonelaw@msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIET STEWART
Appeal2017-007291
Application 11/708,742 1
Technology Center 3700
Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 9-14 and 21-29. We have jurisdiction under 3 5
U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION in accordance with 37 C.F.R. § 41.50(b).
1 According to the Appeal Brief, Juliet Stewart, the Applicant and
Appellant, is the real party in interest. App. Br. 1.
Appeal2017-007291
Application 11/708,742
CLAIMED SUBJECT MATTER
Claims 9, 21, and 28 are independent, with claims 10-14, 22-27, and
29 depending from claim 9 or 21. Claims 9, 21, and 28 are illustrative, and
are reproduced below:
9. A method of forming or shaping an eyebrow on an
individual, the steps of said method comprising:
creating adhesive surfacing using a hard form concealer having
a first predetermined color matched to the skin color of the
individual and applying said concealer on the skin of the
individual only on selected areas within or without said
eyebrow, including within internal spaces of the eyebrow
or along an exterior outline of the eyebrow, where hair is
sparse or missing, for forming and shaping said eyebrow;
and thereafter
applying an eyeshadow having a second predetermined color that
matches the desired hair color of the eyebrow over said
adhesive surfaces and underlying skin such that more of
said eyeshadow is absorbed and adhered to said adhesive
surfaces than to said underlying skin of the individual to
create a natural hair looking eyebrow.
21. A method of forming or shaping lips on an individual
compnsmg:
applying a hard form concealer having a first predetermined
color matched to the skin color of the individual to at least
the portion of a lip to be formed or shaped and the
surrounding skin to create an adhesive surface thereon;
and thereafter
applying a lip liner or lipstick having a second predetermined
color that matches the desired color of the lip to said
adhesive surface on the lip and surrounding skin to create
a natural looking lip.
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28. A kit for use in forming or shaping eyebrows and lips, said
kit comprising:
at least one hard form concealer pencil to match the skin tone of
the individual and to provide an adhesive surface;
at least one 1) eyeshadow pencil or powder to provide color to
the eyebrows; or 2) at least one lip liner or lip stick to
provide color to the lips; or both, and
a brush having both a sharp flat bristle structure on one end, and
a fuller angled brush on the other end.
REJECTIONS
1. Claims 9-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tips2 and Ebay Community3.
2. Claims 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Le Salon4 .
3. Claim 28 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Le Salon and Tips.
4. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tips, Ebay Community, and Beautymag5.
2 Make-Up Tips Exclusively Sponsored by Beauty Bridge,
http:! /web.archive.orglweb/20060903060158/http://makeup.
lifetips.comlca V59272/eye-shadowlindex.html.
3 Loose Powder Eyeshadow Tips for a Dummy,
http://community.ebay.com1t5/Archive-Health-Beauty/Loose-Powder-
Eyeshadow-Tips-tor-a-Dummy-gt-Me-oltd-p/1689039.
4 Le Salon: About Your Make-up,
http://web.archive.org/web/20030323221554/http://beautysalon.website2go.
com/p222.html.
5 Beautymagonline.com, Start Make Up Procedure,
http://web.archive.orglweb/20061018104114/http://www.beautymagonline.c
om/pages/j opage2 .htm.
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Application 11/708,742
OPINION
Claims 9-14 and 29
Claim 9 is independent, with claims 10-14 depending therefrom.
Appellant only specifically addresses claim 9. App. Br. 4--10. Appellant,
however, fails to identify any reversible error in the rejection of that claim.
The Examiner cites a combination of teachings from Tips and Ebay
Community as rending claim 9 obvious. The Examiner cites Tips as
teaching
applying an eye shadow with a predetermined color to match the
desired color of the applied shadow to selected areas of the
individual along the intended outline of the eyebrow and within
the internal space covered by the eyebrow where hair is missing
with a brush (Page 3, Lines 8-10, where such establishes a
pattern and fills in the eyebrow shape, where hair is sparse
overall if sections of it are missing and is "selectively" applying
the eyebrow shape to "only" the portion of the eyebrow to be
formed/shaped including the internal spaces of the brow).
Final Act. 2-3. Appellant does not dispute that finding.
The Examiner additionally finds that
[E]bay [C]ommunity teaches that it is known to provide a stick
concealer underneath eye shadow to provide for better adhesion
to the skin (Page 2, Paragraph 4, Lines 3-5, where the adhesive
surface are drawn on with a stick "pencil", where a pencil is hard
form as the applied concealer comes from the stick of the pencil
and rubs off its hard surface and conventional "concealer" is
selected to be a natural shade to correspond with the skin of the
user).
Id. at 3. With respect to the Examiner's findings from Ebay Community,
Appellant responds that the Examiner erred because
1 ). ebay community does not teach or suggest a hard form
concealer, as expressly recited in independent claim 9, and as
defined in Applicant's Specification, since ebay community does
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Application 11/708,742
not disclose a concealer in a wax or hard form; and 2). ebay
community does not disclose a concealer that is selected to match
the skin color of the user, as expressly recited in independent
claim 9.
App. Br. 8. Appellant additionally contends that the Examiner erred in the
findings related to Ebay Community because "the Examiner states that the
concealer disclosed by [E]bay [C]ommunity provides 'better adhesion to the
skin,'" but "independent claim 9 actually recites that the hard form concealer
provides adhesive surfaces for the subsequently applied eye shadow, a
feature of the claimed method not addressed by the Examiner." Id.
Appellant does not dispute the Examiner's finding that Ebay
Community teaches a stick pencil concealer, and offers no explanation as to
why a stick pencil concealer would not be considered a "hard form"
concealer by one skilled in the art. Appellant discloses that the concealer is
applied by pencil 14 in a wax or hard form. Spec. 6. Accordingly,
Appellant's contentions regarding Ebay Community's alleged failure to
teach a "hard form concealer" do not apprise us of Examiner error.
As for the concealer being "color matched to the skin color of the
individual," we note that the claim is not as limited as Appellant contends.
The Specification makes clear that "[t]he term 'matches the color of the
skin' is meant to include not only when the color produced by the concealer
exactly matches the skin but also to include when the color produced is
different from the skin so that a desired cosmetic effect can be produced."
Spec. 6. Rather than using the plain meaning of that phrase, the
Specification provides a lexicographical definition. See In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (An inventor is entitled to be his or her
own lexicographer of patent claim terms by providing a definition of the
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term in the specification with reasonable clarity, deliberateness, and
precision.). Accordingly, Appellant's argument in connection with the
"concealer having a ... color matched to the skin color of the individual"
also does not apprise us of Examiner error because that argument is not
commensurate with the scope of the claim. Moreover, even if the claim
required the concealer to match the exact color of the skin, the Examiner
explains that concealer conventionally would be "selected to be a natural
shade to correspond with the skin of the user." Final Act. 3; see Ans. 9
(concealer by definition is applied to conceal undesired features on the skin
and is known to match the tone of the skin). 6 Appellant offers no evidence
or explanation to the contrary. See, e.g., Reply Br. 4 (alleging, generally,
that "there is no evidence of record supporting th[e Examiner's]
conclusion").
Appellant's contentions related to the adhesion provided by the
concealer also fail to apprise us of Examiner error because those contentions
do not accurately characterize the Examiner's rejection. Contrary to
Appellant's contentions, the Examiner finds that "[E]bay [C]ommunity
teaches that it is known to provide a stick concealer underneath eye shadow
to provide for better adhesion to the skin." Final Act. 3. That is, the
concealer, which is on the skin, provides an adhesive surface for the eye
shadow.
In its Reply Brief, Appellant additionally argues that Ebay
Community does not teach application of concealer to an eyebrow, as well
6 Prior art of record such as Tips supports the Examiner's reasoning by
teaching to conceal dark circles under the eyes using a concealer that blends
with your skin tone and to hide puffiness under the eyes using a concealer
that blends in to look natural. Tips, 2.
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Application 11/708,742
as newly arguing that Ebay Community teaches away from such a targeted
application. Initially, we note that those arguments are neither raised in the
Appeal Brief nor responsive to the Examiner's Answer and, therefore, we do
not consider those arguments. See 37 C.F.R. 41.41(b )(2) ("Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer ... will not be
considered by the Board for purposes of the present appeal"). In fact, the
argument directed to whether Ebay Community teaches application of
concealer to an eyebrow does not address the basis for the Examiner's
rejection. See Ans. 10 (noting that Ebay Community teaches "apply[ing] a
stick concealer underneath a surface to which eyeshadow is to be applied"
and Tips teaches using "eyeshadow ... to form an eyebrow shape," with
Ebay Community "merely modifying the concealer [to] be applied
underneath the eyeshadow of 'Tips' in order to serve as a priming surface
for improved adhesion.").
With respect to the combination of the teachings noted above from
Tips and Ebay Community, the Examiner reasons that
[i]t would have been obvious to one of ordinary skill in the art,
at the time the invention was made to modify the method of using
eye shadow, as taught by [T]ips, with the step of first putting on
concealer, as taught by [E]bay [C]ommunity, in order to allow
the shadow to adhere better to the skin.
App. Br. 3. The Examiner additionally reasons that "it would have been
obvious to one of ordinary skill in the art, at the time the invention was made
to modify the shadow of [T]ips to be any color as decided by the user, as a
matter of user preference." Id.
Appellant does not dispute the Examiner's reasoning in the arguments
presented in the Appeal Brief. Rather, Appellant presents arguments against
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the references individually, when the Examiner relies on their combined
teachings. See, e.g., App. Br. 9-10 (arguing that neither reference asserted
by the Examiner teaches both steps of claim 9); see also Reply Br. 2 ("Tips
fails to teach or suggest a first step of applying a hard form concealer which
matches the skin color of the person being treated, and thereafter as a second
step, applying an eye shadow matching the desired hair color of the
eyebrow."). Appellant further contends that "[t]here is absolutely no
evidence of record suggesting why a person skilled in the art would combine
these two references in any manner rendering the method defined by
independent claim 9 obvious" (Reply Br. 3), but fails to identify any alleged
error in the Examiner's reasoning. There is no requirement that a reference,
itself, suggest the modification proposed by the Examiner. The Reply Brief
does not allege, let alone persuasively argue, any error in the Examiner's
reasoning for the proposed combination.
Claim 29 depends from claim 9, and Appellant does not provide any
argument with respect to that claim separate from those provided with
respect to claim 9. Accordingly, we are not apprised of Examiner error in
the rejection of claim 29.
For the reasons explained above, after considering all of the
arguments presented by Appellant, we are not apprised of Examiner error in
the rejection of claims 9-14 or the rejection of claim 29.
Claims 21-27-New Ground of Rejection
Claim 21 is similar to claim 9, but is directed to using concealer to
provide an adhesive surface for application of lipstick, rather than
eyeshadow for eyebrows. Claims 22-27 depend from claim 21. The
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Examiner rejects claim 21 as being obvious in view of Le Salon. Final Act.
4--5. The Examiner finds that Le Salon teaches
providing a concealer having a first predetermined color matched
to the skin color of the individual and applying said concealer to
the lips and skin surround the lips to create an adhesive surface
thereon; and providing a lip liner or lipstick and applying said lip
liner or lipstick to said adhesive surface on the lips and
surrounding skin to create natural looking lips.
Id. at 4 (citing Le Salon, 3). In the Answer, the Examiner clarifies that the
teaching of applying a concealer to the lips from Le Salon relied on in the
rejection is based on a finding that "a foundation is conventionally a
concealer" (i.e., the foundation in Le Salon is the concealer). Ans. 10. The
Examiner additionally finds that Le Salon teaches using "concealer pencils .
. . to apply concealer" and reasons that "[i]t would have been obvious to one
of ordinary skill in the art, at the time the invention was made to modify the
concealer of [L]e [S]alon to be a pencil type concealer ... as a matter of user
preference." Final Act. 5. The Examiner reasons that "it would have been
obvious to one of ordinary skill in the art, at the time the invention was made
to modify the method of le salon to be any color [of lipstick], including a
matching lip color, as a matter of user preference." Id.
Appellant responds that "there is no suggestion in '[L]e [S]alon' of
the use of a hard form concealer as disclosed and claimed by Applicant, nor
is there any recognition of the advantages of using a hard form concealer to
form or shape lips in accordance with the method specifically defined by
independent claim 21." App. Br. 11; see also Reply Br. 8. Appellant further
contends that "there is no factual evidence of record supporting th[ e
Examiner's] conclusion" that "a foundation is conventionally a concealer
element which also matches the surrounding skin tone to which it is applied
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to serve as a foundation of uniform skin color for the user." Ans. 9.
Appellant disputes the Examiner's reasoning of" 'user preference' [a] s an
improper ground for rejection because it is a conclusory statement which is
not supported by any evidence of record." App. Br. 11.
We are persuaded that the Examiner has failed to establish that one
skilled in the art would consider foundation to be concealer. See, e.g.,
Beautymag, 2 (distinguishing between foundation and concealer, explaining
that you should "[ m Jake sure your concealer is exactly the same as, or
slightly lighter than your foundation colour"). Nevertheless, the evidence
cited by the Examiner in the Final Action readily supports a conclusion of
obviousness regarding claims 21-27. We take this opportunity to cure any
deficiencies in the Examiner's rejection and designate a new ground of
rejection. See 37 C.F.R. § 41.50(b).
Le Salon teaches applying foundation and powder to lips to inhibit
removal of lipstick (i.e., to provide an adhesive surface for lipstick). See Le
Salon, 3 (the section titled "Lasting Lipstick" explains to "[c]over your lips
with foundation and powder," then "[a]pply lipstick and powder again" and
"[r]eapply your lipstick and it will last all day"). For eyebrow makeup, Le
Salon additionally teaches to "[s]troke a concealer pencil over [the
eyebrows], followed by translucent powder." Id. at 2. We find this section
of Le Salon teaches providing an adhesive surface using a concealer pencil
(i.e., "a hard form concealer") to adhere a powder applied subsequently
thereto. To the extent there is any dispute as to whether one skilled in the art
would read Le Salon as teaching use of a concealer pencil to provide an
adhesive surface, such an understanding is supported by Ebay Community.
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See, e.g., Ebay Community, 2 (discussing use of stick concealer to improve
adherence of eyeshadow powder).
With respect to modifying Le Salon to use a hard form concealer to
provide an adhesive surface, one skilled in the art would have made such a
modification because use of a hard form concealer, such as a concealer
pencil instead of foundation and powder, provides better precision in the
application of the base adhesive surface. Indeed, Beautymag supports this
reasoning, explaining that "a firm or stick concealer ... keeps the coverage
precise." Beautymag, 2.
As for the "concealer having a first predetermined color matched to
the skin color of the individual," we note our discussion above in connection
with the same limitation recited in claim 9. The Specification explains that
"another aspect of this invention is for forming or shaping lips" and "the
term 'matches the color of the skin' is meant to include not only when the
color produced by the concealer exactly matches the skin but also to include
when the color produced is different from the skin so that a desired cosmetic
effect can be produced." Spec. 7. We find that the discussion in Le Salon
noted above teaches a color of the foundation that produces "a desired
cosmetic effect," consistent with the meaning provided by the Specification.
Moreover, even if the claim required matching a specific color, such an
arrangement would have been obvious because a person would have
concealer that matches their skin color, as the general purpose of concealer
is to conceal "trouble areas" on an individual's face, for example, and
therefore, use of such a color would be a matter of convenience and cost
effectiveness. See Beautymag, 2 (discussing use of concealer for "trouble
areas such as eye bags, cuprous, pimples, freckles etc." and explaining that
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one should "[m]ake sure your concealer is exactly the same as, or slightly
lighter than your foundation colour"); see also Tips, 2 (discussing the use of
concealer that blends with your skin tone to hide dark circles).
The "lip liner or lipstick having a second predetermined color that
matches the desired color of the lip" does not require any particular color.
Indeed, the plain language of the claim makes clear that "second
predetermined color" is any "desired color." Moreover, to the extent there is
any room for debate on the scope of that limitation, the Specification makes
clear that "[t]he term 'matches the color of the desired color of the lips' is
meant to include not only when the color produced by the lip liner exactly
matches the lips but also to include when the color produced is different
from the lip color so that a desired cosmetic effect can be produced." Spec.
7. By selecting and applying a color of lipstick, the user produces their
desired cosmetic effect.
Based on our findings and reasoning set forth above, we reject claim
21 as obvious over Le Salon, Ebay Community, and Beautymag. We adopt
the Examiner's findings related to claims 22-27. Final Act. 4---6; Ans. 4--6.
Accordingly, those claims are also rejected as obvious over Le Salon, Ebay
Community, and Beautymag.
Claim 28
Claim 28 is directed to a kit including a "hard form concealer pencil,"
"eyeshadow pencil or powder ... or ... lip liner or lip stick," and "a brush."
Notably, there is no real limitation as to any particular type or color of
concealer pencil or any particular type or color of eyeshadow pencil,
eyeshadow powder, lip liner, or lip stick. The brush is specified as "having
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both a sharp flat bristle structure on one end, and a fuller angled brush on the
other end."
The Examiner finds that Le Salon teaches the features of claim 28,
other than "a [single] brush having both a sharp flat bristle structure on one
end and a fuller angled brush on the other end." Final Act. 6. The Examiner
finds that Tips teaches an angled brush and reasons that including that
feature with the teachings of Le Salon to form the recited kit would have
been obvious so a person would have these components available at the
same time during makeup applicaton, noting that "the individual
components of the applicant's kit are already available as prior art" and
available "by simply purchasing the aforementioned components." Id. at 6-
7. The Examiner further explains that "in order to complete the steps of 'Le
Salon' the user would have the claimed tools of the concealer, colored lip
stick and shadow" and "'Tips' provides disclosure that when making up the
area around the eyes, an angled brush is to be used to apply eyeshadow."
Accordingly, the Examiner reasons that "'Tips' provides disclosure for why
one skilled in the art would find such a tool desirable to use when using
eyeshadow" because"[ o ]ne skilled in the art looking at both 'LeSalon' and
'Tips' would provide a user with ample evidence to include the claimed
tools in their cosmetic kit in order to make up the face." Ans. 11.
Appellant does not identify error in the Examiner's findings or
reasoning. Initially, we note that Appellant does not dispute the Examiner's
findings. Further, contrary to Appellant's contentions (App. Br. 11-13), the
Examiner provides reasons, noted above, as to why one skilled in the art
would include the combination of elements. Appellant's contention that
"[t]he Final[] Action fails to provide any evidence why a person skilled in
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the art would select only the items recited in claim 28 for a kit" (id. at 13) is
not commensurate with the scope of the claim because the claim is not
limited to only those elements. Appellant's Reply Brief does not identify
further alleged errors.
For at least these reasons, we are not apprised of Examiner error in the
rejection of claim 28.
DECISION
We AFFIRM the Examiner's decision to reject claims 9-14, 28, and
29.
We REVERSE the Examiner's decision to reject claims 21-27.
We enter a NEW GROUND OF REJECTION of claims 21-27 on the
basis that these claims are unpatentable under 35 U.S.C. § 103.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ...
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ...
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure §1214.01.
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)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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