Ex Parte TranDownload PDFPatent Trial and Appeal BoardDec 15, 201411767499 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/767,499 06/23/2007 CHRISTINE DUNG TRAN 5562 PA01 1450 45543 7590 12/15/2014 THOMAS J. TIGHE, ESQ. P.O. BOX 22900 SAN DIEGO, CA 92192-2900 EXAMINER DOAN, ROBYN KIEU ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 12/15/2014 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 CHRISTINE DUNG TRAN ____________________ Appeal 2012-007064 Application 11/767,499 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and EDWARD A. BROWN, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christine Dung Tran (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3–6, and 19–25.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION. 1 The Examiner has indicated that claims 26–33, which are the only other claims pending in the application, are allowable. Final Act. 5 (filed Jan. 19, 2011). Appeal 2012-007064 Application 11/767,499 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter.2 1. A device for creating a sharply defined acrylic margin on a fingernail comprising: (a) a central body; (b) a plurality of spaced elongated arms radiating out from the central body; (c) each arm including a rigid blade end remote from the body; and (d) each blade end defining a respective profile that allows the blade end to operationally fit over a respective fingernail size at an angle of incidence for masking an area of a fingernail during application of the acrylic, or for scoring semi- hardened acrylic and scraping off excess acrylic. 2 Claim 19, which is the only other independent claim involved in this appeal, is directed to a device comprising an elongated midsection with two blades having the limitations called for in claim 1 at opposing ends of the midsection. Claims 21, 23, and 25 recite a “method according to claim 1,” and claims 22 and 24 recite a “method according to claim 21” and a “method according to claim 23,” respectively. Appeal Br. 12, Claims App. (emphasis added); see also Amendment 3 (filed Oct. 29, 2010). The term “method” lacks antecedent basis in claim 1, which is directed to a “device,” not a method. For purposes of this appeal, we presume that Appellant intended the term “method” to be “device” in claims 21–25, and we construe these claims accordingly. However, in the event of further prosecution of these claims, the Examiner and Appellant should consider appropriate amendment to correct this inconsistency. Claims 31–33, which were not rejected by the Examiner, likewise are deserving of correction, as they recite a “device according to claim 26,” but claim 26 recites a “method.” Amendment 3, 4 (filed Oct. 29, 2010). Appeal 2012-007064 Application 11/767,499 3 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Goldman Baltierra Carter US 1,589,339 US 5,755,239 US 6,357,451 B1 June 15, 1926 May 26, 1998 Mar. 19, 2002 Chu Baxter US 2003/0089378 A1 US 2008/0092914 A1 May 15, 2003 Apr. 24, 2008 REJECTIONS (1) Claims 1, 3, 5, and 19–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, and Baltierra. (2) Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, Baltierra, and Carter. (3) Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, Baltierra, and Goldman. OPINION Rejection (1) In contesting this rejection, Appellant contends that Baxter is not available as prior art against Appellant’s claims. Appeal Br. 5. In support of this contention, Appellant relies on a Declaration under 37 C.F.R. § 1.131 and supporting evidence purporting to show that Appellant conceived and reduced to practice the claimed invention prior to June 29, 2006, which, according to Appellant, precedes the WIPO publication of the PCT application from which the Baxter patent issued. Id. The Examiner, on the other hand, contends that Appellant’s Declaration and supporting evidence do not disqualify Baxter as prior art against Appellant’s claims because Appeal 2012-007064 Application 11/767,499 4 Baxter is available as prior art as of February 3, 2005, the filing date of Provisional Application 60/649,680 (hereinafter “Provisional Application”), from which Baxter claims priority under 35 U.S.C. § 119(e). Ans. 8. According to Appellant, Baxter is not entitled to the priority date of the Provisional Application because the Provisional Application fails to show arms that are laterally saddle-shaped as in Baxter. Appeal Br. 5. Appellant urges that this is significant because Appellant’s independent claims 1 and 19 “each include a limitation of having a profile that allows the blade to ‘operationally fit’ over a fingernail at an angle of incidence” for masking an area, scoring, or scraping off excess material. Id. Thus, according to Appellant, the “operationally fit” language in claims 1 and 19 requires that the blade end be laterally saddle-shaped. Id. Appellant’s argument that the Provisional Application lacks support for a laterally saddle-shaped blade profile fails to apprise us of error in the Examiner’s determination that Baxter is entitled to priority to the Provisional Application, and thus is available as prior art against Appellant’s claims, for the teachings for which the Examiner relied on Baxter, as of February 3, 2005, the filing date of the Provisional Application. As correctly pointed out by the Examiner (Ans. 8–9), the Examiner did not rely on Baxter for a saddle-shaped blade profile, but, rather, relied on Baxter only for its teaching of a nail device having a central hub with radiating arms including blades extending therefrom in an order around the central hub of progressively larger range in sizes, which is disclosed in the Provisional Application. See Ans. 5–6 (discussing Baxter’s teachings); Appeal Br., Evidence App., Provisional Application. Appellant’s Declaration under 37 C.F.R. § 1.131 and supporting evidence, at best, show conception of the claimed invention Appeal 2012-007064 Application 11/767,499 5 by Appellant in 2006, and, thus, are ineffective to disqualify Baxter as prior art against Appellant’s claimed invention for the purpose for which the Examiner has applied Baxter. Appellant also argues that “there is no teaching, suggestion, or motivation to combine Chu with Baxter and Baltierra to create the subject invention.” Appeal Br. 6. This argument is unavailing because the Supreme Court has stated that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted) (cited with approval in KSR, 550 U.S. at 418). The Examiner has articulated reasoning with rational underpinning to support the proposed combination of Chu with Baxter and Baltierra. Specifically, the Examiner found that Baxter discloses a nail tool comprising a central body and a plurality of arms radiating out from the central body with end blades sized for use with different ranges of fingernail size and arranged around the body in an order of progressively larger size ranges. Ans. 5 (citing Baxter, Fig. 5). The Examiner then determined that it would have been obvious to modify Chu by providing the blades of different sizes radiating out from a central body as taught by Baxter in order to provide one device with a plurality of arms having a variety of sizes accommodating different fingers of the user. Id. This reasoning has rational underpinnings. See Chu, para. 32 (disclosing manicure tools having a guide head and lower edge constructed in different sizes and shapes used for different size and Appeal 2012-007064 Application 11/767,499 6 shape nails); Baxter, paras. 7 (describing an applicator with a central hub and a plurality of different sized protruding portions spaced apart around the hub) and 19 (emphasizing that an advantage of such an arrangement is that each protrusion of the applicator is of a different size than the others so that the applicator can be used for different sizes of nails). The Examiner also found that Chu does not specify the blade end being of a rigid material, but that Baltierra discloses a nail device being made of rigid material. Ans. 5. The Examiner then determined that it would have been obvious to make Chu’s blade ends of a rigid material to retain their shape during manicuring operations. Id. This reasoning also has rational underpinnings because the tools of both Chu and Baltierra are used for scraping material off the nail surface. See Chu, para. 37 (describing removing manicure material by moving the lower edge of the tool in a scraping motion); Baltierra, col. 2, ll. 40–42 (describing scraping the pterygium membrane as the edge is pulled back along the nail from the cuticle). Appellant argues that Baltierra is non-analogous to Appellant’s invention. Appeal Br. 7. We do not agree with Appellant. The Federal Circuit has explained that “[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill in the art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). Criteria for determining whether prior art is analogous may be summarized as “(1) whether the art is form the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Appeal 2012-007064 Application 11/767,499 7 Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting Clay, 966 F.2d at 659). Baltierra satisfies both prongs of the analogous art test. First, Baltierra and Appellant’s invention both are in the field of manicuring appliances. See Baltierra, col. 1, ll. 7–8 (stating that the invention “pertains generally to the field of manicuring appliances”); Spec. 1 (stating that the invention, “relates in general to the art of fingernail painting,” and provides a tool, thereby placing Appellant’s invention in the field of manicuring appliances). Moreover, both Appellant’s tool and Baltierra’s tool are used for scraping material off nails. See Spec. 2 (describing a rigid blade that can be used to scrape excess paint off the nail); Baltierra, col. 2, ll. 26–28, 40–42 (describing a tool made of material that is sufficiently rigid to retain its shape during manicuring operations, including scraping the pterygium membrane as the edge is pulled back along the nail from the cuticle). Appellant additionally argues that Baxter and Chu teach away from one another. Appeal Br. 6–7; Reply Br. 5–7. More specifically, according to Appellant, Chu, as modified in view of Baltierra, comprises a rigid manicure tool for scraping and blocking nail polish applied by a brush, while Baxter’s applicator arms could not be used to scrape or apply freshly mixed acrylic material because they are rubbery and resilient, and, thus, do not Appeal 2012-007064 Application 11/767,499 8 operatively fit over any range of fingernails and cannot be used to scrape. Id. Appellant contends that the respective functions and characteristics of the tools are so diametrically opposed and, thus, dramatically incompatible with one another as to be uncombinable. Appeal Br. 7; Reply Br. 6. Appellant’s teaching away arguments are not pertinent to the combination of Chu and Baxter proposed by the Examiner, and thus do not identify error in the rejection. The Examiner did not propose to modify either Chu or Baxter to employ the material disclosed in the other. Rather, as discussed above, the Examiner determined it would have been obvious to modify Chu by providing the blades of different sizes radiating out from a central body as taught by Baxter in order to provide one device with a plurality of arms having a variety of sizes accommodating different fingers of the user. Ans. 5. The differences in functions and material characteristics of the respective manicure tools of Chu and Baxter would not have discouraged a person of ordinary skill in the art from applying to Chu’s manicure tools Baxter’s teaching of providing the plurality of different sized and shaped blades in a unitary appliance radiating outwardly from a central hub. Appellant adds that Baxter’s arms are resilient and, thus, do not satisfy the “operationally fit” limitations of claims 1 and 19. Appeal Br. 7; Reply Br. 7. This argument is not convincing because it attacks Baxter individually, rather than the combination of references relied on in the rejection. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner found that Chu satisfies the “operationally fit” Appeal 2012-007064 Application 11/767,499 9 limitation of claims 1 and 19. Ans. 4; see Chu, para. 31 (disclosing a rearward curve and a longitudinal curve of the lower edge such that when the tool is placed on the finger the lower edge “mates substantially flushly with the top surface of the . . . nail”). Claims 1 and 19 require each blade to define a profile that allows the blade to operationally fit over a fingernail “at an angle of incidence . . . for masking . . . or for scoring . . . .” Appeal Br. 11, Claims App. (emphasis added). These claims do not specify any particular angle of incidence for which this operational fit must be achieved. Thus, this limitation does not patentably distinguish independent claims 1 and 19 over Chu’s lower edge profile. For the above reasons, Appellant’s arguments do not apprise us of error in the Examiner’s rejection of claims 1 and 19. Thus, we sustain the rejection of claims 1 and 19, as well as their dependent claims 3, 5, 20, and 25, for which Appellant does not present any separate arguments for patentability, as unpatentable over Chu, Baxter, and Baltierra. Claims 21 and 22, on the other hand, specify that the angle of incidence is an acute angle, and claims 23 and 24 specify that the angle of incidence is an obtuse angle. Appeal Br. 12, Claims App. In addressing these limitations, the Examiner states that “Chu’s device is capable to operationally fit over a respective fingernail size at acute 45 degrees angle or 135 degrees obtuse angle; the claims are directed to the intended use language and since Chu’s device is capable to perform such intended use, it meets the claimed language.” Ans. 6. Appellant’s Specification describes a blade end “profile that operationally fits over the fingernail . . . for masking an area of the fingernail during painting.” Spec. 2. The Specification defines the term “fit” as Appeal 2012-007064 Application 11/767,499 10 meaning that “a particular blade end has a profile that closely fits over a small range of fingernail profiles such that the blade end can be successfully used . . . to mask a portion of a fingernail within the range during painting to create a sharply defined and smoothly curving margin.” Id. at 3. Additionally, the Specification discloses that “since the blade ends fit over their respective fingernails from side to side, paint applied on one side of a blade end will not bleed over to the other side of the blade end.” Id. Thus, consistent with Appellant’s Specification, we construe the terminology “operationally fit over a fingernail at an angle of incidence for masking an area of the fingernail during painting” in claim 19 as requiring the end of the blade to closely follow the contour of the fingernail without any material gaps through which manicure material could pass. The end profile of Chu’s nail tool appears to be configured to closely follow the contour of the fingernail when the tool is oriented at a right angle to the top surface of the nail. See Chu, Figs. 8, 10, 12. Appellant argues that an arm end designed for a fit at a right angle of incidence would leave gaps along the fingernail sides if the arm were applied at a different angle of incidence. Reply Br. 8–9. Appellant’s argument has merit. The Examiner does not point to any evidence or set forth any technical reasoning to establish a sound basis that the end profile of Chu’s blades, with their particular longitudinal curves and rearward curves, would allow the blade end to closely follow the contour of the fingernail without any material gaps at either an acute or obtuse angle of incidence, as called for in claims 21–24. Thus, we do not sustain the rejection of claims 21–24 as unpatentable over Chu, Baxter, and Baltierra. Appeal 2012-007064 Application 11/767,499 11 Rejection (2) Claim 4 requires “a centered mark on each blade for use in aligning said each end blade with the longitudinal axis of a fingernail.” Appeal Br. 11, Claims App. The Examiner found that Chu does not disclose such a centered mark, and relied on Carter as teaching this feature. Ans. 7. Specifically, the Examiner found that the intersection 36 of parallel lines 30 and curved lines 34 and the space between two central parallel lines is a centered mark for aligning the artificial nail with the longitudinal axis of the user’s finger. Id. (citing Carter, col. 4, ll. 14–21). The passage of Carter cited by the Examiner describes the substantially curved lines and substantially parallel lines as providing the technician with “one or more reference lines useful in forming the imitation nail on the finger nail.” Carter, col. 4, ll. 14–21; see also id., col. 6, ll. 3–7 (disclosing same). Carter does not discuss centered marks or aligning a centered mark with the longitudinal axis of the fingernail. For the reasons expressed by Appellant (Reply Br. 9), we agree that the space between two adjacent ones of the even number of parallel lines of Carter cannot reasonably be considered to be a “centered mark” as called for in claim 4. Thus, we do not sustain the rejection of claim 4 as unpatentable over Chu, Baxter, Baltierra, and Carter. Rejection (3) Claim 6 depends from claim 1 and further requires “a blade end profile that is asymmetrical with respect to a long axis of a fingernail.” Appeal Br. 11, Claims App. Claim 6, however, does not define an orientation of the blade relative to the long axis of the fingernail. Any blade structure, regardless of its end profile, is capable of being oriented relative to Appeal 2012-007064 Application 11/767,499 12 a long axis of a fingernail such that its blade end profile is asymmetrical relative to the long axis of the fingernail. Accordingly, without a specified orientation of the structure of the blade relative to the long axis of the fingernail, the limitation “asymmetrical with respect to a long axis of a fingernail” does not present a structural limitation on the blade end profile at all. However, a claim construction that renders phrases in a claim superfluous is improper. See, Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous); Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (holding that allowing a patentee to argue that terms in a claim “are merely superfluous would render the scope of the patent ambiguous, leaving examiners and the public to guess about which claim language the drafter deems necessary to his claimed invention and which language is merely superfluous, nonlimiting elaboration”). Thus, some meaning must be ascribed to the phrase “asymmetrical with respect to a long axis of a fingernail” in order to construe claim 6. For the reason discussed above, in the absence of a recitation of a specified orientation of the structure of the blade relative to the long axis of the fingernail, a person of ordinary skill in the art would not know what meaning to ascribe to the phrase “asymmetrical with respect to a long axis of a fingernail” so as to determine the metes and bounds of claim 6. Therefore, claim 6 is indefinite. Having determined that claim 6 is indefinite, we cannot sustain the rejection of claim 6 under 35 U.S.C. § 103(a) because to do so would require speculation as to the scope of the claim. See In re Steele, 305 F.2d 859, 862- 63 (CCPA 1962) (holding that the Board erred in affirming a rejection of Appeal 2012-007064 Application 11/767,499 13 indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 6 under 35 U.S.C. § 112, second paragraph, as being indefinite, for the reason discussed above. DECISION The Examiner’s decision rejecting claims 1, 3, 5, 19, 20, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, and Baltierra is AFFIRMED. The Examiner’s decision rejecting claims 21–24 under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, and Baltierra is REVERSED. The Examiner’s decision rejecting claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, Baltierra, and Carter is REVERSED. The Examiner’s decision rejecting claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Chu, Baxter, Baltierra, and Goldman is REVERSED. Claim 6 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Appeal 2012-007064 Application 11/767,499 14 FINALITY OF DECISION Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejection(s) of one or more claims, 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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Appeal 2012-007064 Application 11/767,499 15 If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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-IN-PART; 37 C.F.R. § 41.50(b) rvb Copy with citationCopy as parenthetical citation