10373986 (B.P.A.I. Aug. 11, 2009)

Ex Parte Werner

Board of Patent Appeals and InterferencesAug 11, 2009

10373986 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MELANIE R. WERNER __________ Appeal 2009-005185 Application 10/373,986 Technology Center 3700 __________ Decided: August 11, 2009 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-7.1 1 This Appeal is related to Appeal No. 2009-007460, decided concurrently herewith. Appeal 2009-005185 Application 10/373,986 2 We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claims 1 and 4 are representative of the claims on appeal, and read as follows: 1. An eyeliner pencil comprising: an elongate portion having a top end, which is gripped by the user, the elongate portion having a central axis; and a marking portion extending from the elongate portion at the top end of the elongate portion at a fixed angular relationship between 5° and 175° with the central axis, the marking portion for marking an eyelid a color, the marking portion made of the color and a material that is to mark the eyelid, the elongate portion positioned about the marking portion until a point where the marking portion extends from the elongate portion, the marking portion includes a solid color tube. 4. A method for applying eyeliner to an eye lid comprising the steps of: gripping an elongate portion of an eye liner pencil, the elongate portion having a central axis; and marking the eyelid a color with a marking portion of the eye liner pencil that extends from the elongate portion at the top end of the elongate portion at a fixed angular relationship of between 5° and 175° with the central axis of the elongate portion, the marking portion made of the color and a material that is to mark the eyelid, the elongate portion positioned about the marking portion until a point where the marking portion extends from the elongate portion, the marking portion includes a solid color tube that flares to a tip which is at the fixed angular relationship. The Examiner relies on the following evidence: Appeal 2009-005185 Application 10/373,986 3 Patier WO 96/35351 Nov. 14, 1996 Mueller US 2,901,100 Aug. 25, 1959 We reverse. ISSUE The Examiner concludes that claims 1-7 are rendered obvious by the combination of Patier and Mueller. Appellant contends that there is nothing in the prior art relied upon by the Examiner that would have enabled the ordinary artisan to make the claimed liner pencil. Thus, the issue on appeal is: Has Appellant demonstrated that the Examiner erred in failing to provide any fact findings or reasons as to why the method of forming the claimed liner pencil would have been within the level of skill of the ordinary artisan? FINDINGS OF FACT FF1 According to the Specification, “the present invention relates to an eyeliner [or lipliner] pencil having a curved tip, or a straight angled tip.” (Spec. 1.) FF2 The Specification teaches the following method to make the tip of the pencil: Fabricate the pencil . . . and insert “color” as usual. Step 1. Holding the eyeliner pencil . . . tip . . . in the DOWNWARD position, pour boiling water to ONE side of the pencil . . . for 15-30 seconds. Appeal 2009-005185 Application 10/373,986 4 This process of adding heat gently slowly draws eyeliner color out of the tube . . . . The heating process also creates the wooden (pencil-like) case to form the appropriate angle/edge at the point where the color exits the pencil 10. Step 2: Immediately after applying (liquid) heat, turn the eyeliner tip . . . UPWARDS. Using fingers and hand, apply gentle pressure to the OPPOSITE, unheated side of the wand carefully forming and bending tip . . . to desired angle. Step 3: Allow eyeliner pencil . . . to cool at room temperature. (Id. at 4.) FF3 The Examiner rejects claims 1-7 under 35 U.S.C. § 103(a) as being obvious over the combination of Patier and Mueller (Ans. 3). FF4 The Examiner finds that Patier teaches the pencil and method substantially as claimed (id.). FF5 The Examiner notes that Patier “fails to show the marking portion extending from the elongate portion at a fixed angular relationship between 5 degree and 175 degree with the central axis and the marking portion being curved where the marking portion extends from the elongate portion.” (Id. at 3-4.) FF6 The Examiner cites Mueller for teaching a “cosmetic applicator . . . comprising an elongate portion . . . and a central axis, a marking portion . . . having a top end . . . with a fixed angular relationship between 5 and 175 degrees.” (Id. at 4.) Appeal 2009-005185 Application 10/373,986 5 FF7 The Examiner concludes: It would have been obvious to one having an ordinary skill in the art at the time the invention was made to employ the curved shaped of the tip portion as taught by Mueller et al into the cosmetic pencil of McMurrey [sic, Patier] in order to provide an accurate outline to the surface of the user’s body. (Id.) PRINCIPLES OF LAW The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[I]n order to render an invention unpatentable for obviousness, the prior art must enable a person of ordinary skill to make and use the invention.” In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing Beckman Instruments, Inc. v. LKB Producter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)). While the analysis under 35 U.S.C. § 103 allows flexibility in determining whether a claimed invention would have been obvious, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. “We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined Appeal 2009-005185 Application 10/373,986 6 to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). ANALYSIS Appellant argues that “there is nothing to enable one skilled in the art how to take the applicator that is made of wood or cardboard or fiber or plastic and cause the liner crayon . . . of Patier to have a fixed angular relationship.” (App. Br. 12.) Appellant argues that, as the ordinary artisan would understand, if one were to try and just bend the liner crayon, it would break off (id.). Appellant argues that neither Patier nor Mueller teach how to make a liner crayon having a curve or bend at the tip; whereas the instant Specification teaches the use of heat to make the claimed liner crayon (id.). The Examiner does not respond to the above argument, nor does the Examiner make any fact findings as to a method of forming the claimed liner pencil based on the teachings of the cited references. As the prior art must enable the ordinary artisan to make the claimed invention, and as the Examiner has not made any fact findings or provided any reasons as to why the method of forming the claimed liner pencil would have been within the level of skill of the ordinary artisan, we are compelled to reverse the rejection. CONCLUSION OF LAW We conclude that Appellant has demonstrated that the Examiner erred in failing to provide any fact findings or reasons as to why the method of Appeal 2009-005185 Application 10/373,986 7 forming the claimed liner pencil would have been within the level of skill of the ordinary artisan. We are thus compelled to reverse the rejection of claims 1-7 under 35 U.S.C. § 103(a) as being obvious over the combination of Patier and Mueller. REVERSED alw ANSEL M. SCHWARTZ SUITE 304 201 N. CRAIG STREET PITTSBURGH, PA 15213