GOMES CONCEPTS LLC

Patent Trials and Appeals Board

Nov 29, 2021

2021003004 (P.T.A.B. Nov. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
16/799,529 02/24/2020 Barbara Gomes 2755BG01UTL8USCIP1 1059
75207 7590 11/29/2021
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
11/29/2021 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):
eofficeaction@appcoll.com
patent@gearhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BARBARA GOMES
____________

Appeal 2021-003004
Application 16/799,529
Technology Center 3700
____________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 7–9 and 13–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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Application 16/799,529
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THE INVENTION
Appellant’s invention is a tool for treating cuticles. Spec. 2. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A cosmetic cuticle apparatus, comprising:
an elongated handle portion having a circular cross-section,
a first end, and a second end,
wherein the elongated handle portion has a cross-sectional
thickness that is greater at a middle portion of the elongated
handle portion than at either the first end or the second end,
wherein the elongated handle flares outward at each of the
first end and the second end to a flared edge from a central
point of the elongated handle, and
wherein a frustoconical portion is formed from the flared
edge to a terminal portion at each of the first end and the second
end, the frustoconical portion forming a receptacle on each of
the first end and the second end of the handle portion;
a cuticle buffer coupled to the receptacle at the first end of
the elongated handle portion,
wherein the cuticle buffer comprises a top surface and an
arcuate periphery, and
wherein a width of the top surface of the cuticle buffer is
less than a width of the arcuate periphery of the cuticle buffer;
and
a “V” -shaped cuticle cleaner having a pointed top and a
“V” -shaped cross-section, the “V” -shaped cuticle cleaner
being coupled to the receptacle at the second end of the
elongated handle portion.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Weissenburger US 4,946,389 Aug. 7, 1990
Singer US 6,289,901 B1 Sept. 18, 2001
Wittke-Kothe US 2008/0078085 A1 Apr. 3, 2008
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The following rejections are before us for review:
1. Claims 9, 13, 15, and 16 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. Claim 13 is are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
3. Claims 7, 8, 13, 14, and 17–20 are rejected under 35 U.S.C. § 103
as unpatentable over Wittke-Kothe and Weissenburger.
4. Claims 9, 15, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Wittke-Kothe, Weissenburger, and Singer.
OPINION
Objection to Drawings
The Examiner objects to Appellant’s drawings. Final Act. 2. In the
Appeal Brief, Appellant attempts to traverse the objection. Appeal Br. 14.
However, an Examiner’s objection to drawings is reviewable by petition
under 37 C.F.R. § 1.181 and is not within the jurisdiction of the Board. Ex
Parte Frye, 94 U.S.P.Q.2d 1072 (BPAI 2010); MPEP § 1201. We decline to
entertain Appellant’s traverse of the objection.
Indefiniteness – Claim 13
Claim 13 depends from claim 7 and adds the limitation: “wherein the
cuticle buffer, the V-shaped cuticle cleaner, and the elongated handle portion
are a singular structure.” Claims App. The Examiner considers that
claim 13 is indefinite because it is purportedly unclear how the removable
coupling attachment can be a singular structure. Final Act. 4.
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Appellant notes that, in claim 7, the cuticle buffer is coupled to a
receptacle at the first end of the elongated handle and the V-shaped cleaner
is coupled to a receptacle at the second end of the handle. Appeal Br. 26;
see also Claims App. claim 7. Appellant argues that, when read in light of
the Specification, a person of ordinary skill in the art would understand that
“singular structure” in claim 13 refers to a completed assembly. In
accordance with such understanding, Appellant contends that the claim is
definite. Id. In response, the Examiner interprets “singular structure” as a
monolithic one-piece device. Ans. 10.
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
It is well settled that claim language can provide substantial guidance
as to the meaning of particular terms.” Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In addition, “the
person of ordinary skill in the art is deemed to read the claim term not only
in the context of the particular claim in which the disputed term appears, but
in the context of the entire patent, including the specification.” Id. at 1313.
Appellant’s Specification discloses that various tools are “coupled to”
the handle portion. Spec. 6. Claim 7, from which claim 13 depends, recites
tools that are “coupled to” the handle portion by means of receptacles.
Claims App. The recitations of tools being “coupled to” to the ends of the
handle portion in claim 7 provide context for the meaning of the term
“singular structure” as it appears in claim 13. Given that context, a person
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of ordinary skill in the art would understand that “singular structure” in
claim 13 refers to a completed assembly where tools are coupled to the
handle portion and not a “monolithic structure” as the Examiner construes it.
Ans. 10. With that in mind, we do not agree with the Examiner that the
language of claim 13 creates an internal inconsistency and think that the
claim is sufficiently definite. Thus, we do not sustain the Examiner’s
Section 112 indefiniteness rejection of claim 13.
Written Description
Claims 9, 15, and 16
The specification of a patent as filed must “contain a written
description of the invention.” 35 U.S.C. § 112. A specification has an
adequate written description when it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date” of the patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology. Id.
The Examiner faults Appellant for not providing more written
description for the threadable connection limitations in claims 9, 15, and 16.
Final Act. 3. Throughout the Specification, Appellant repeatedly refers to
the variously tools being “secured to,” “coupled to,” and “removably
coupled to” the handle portion. See e.g., Spec. 7, 10, 15. Elsewhere, the
Specification teaches that a tool, such as a cuticle pusher, has a protrusion
that is “inserted” into a receiving portion of the handle. Id. at 15. It is not
clear to us whether Appellant intends to convey that merely “inserting” a
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protrusion into a receiving portion accomplishes an actual coupling, a
securing, or a removable coupling of two components. In the regard, we are
somewhat sympathetic with the Examiner’s predicament in trying to
understand Appellant’s written description as it is somewhat less than a
model of clarity. Nevertheless, as best that we can understand Appellant’s
disclosure, it describes coupling and securing in a generic manner and, with
the possible exception of a threaded coupling, fails to disclose the specific
means by which the coupling or securing is accomplished. Notwithstanding,
we think that a person of ordinary skill in the art would be able to envisage a
myriad of means by which a tool can be coupled or secured to the end of a
handle.
Nevertheless, Appellant does appear to disclose at least one specific
means of accomplishing a removable coupling:
[T]he cuticle pusher 110 and the cuticle cleaner 120 are
threadably coupled to the handle portion 140. In other
examples, the cuticle pusher 110 and the cuticle cleaner 120 are
removably coupled by threading to the handle portion 140.
Spec. 11. Appellant’s disclosure on page 11 of the Specification regarding
“coupling by threading” is a specific example of a means for coupling or
securing a tool to the handle portion. One skilled in the art would view that
disclosure, contrary to the Examiner’s determination, as generally applicable
to the various embodiments including “the embodiment with the
frutsoconical portion” (Final Act. 3). With that in mind, it is our opinion
that Appellant has demonstrated possession of the claimed subject matter
and, therefore, do not sustain the Examiner’s written description rejection of
claims 9, 15, and 16.
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Claim 13
The Examiner considers that Appellant did not adequately disclose
that the buffer, cleaner, and handle are a singular structure. Final Act. 3–4.
In connection with our consideration of the Section 112 indefiniteness
rejection of claim 13 hereinabove, we have determined that the Examiner
uses an incorrect construction of “singular structure.” When the claim
language is properly construed, as discussed above, Appellant provides
adequate written description disclosure of “singular structure.”
We do not sustain the Examiner’s Section 112 written description
rejection of claim 13.
Unpatentability of claims 7, 8, 13, 14, and 17–20
over Wittke-Kothe and Weissenburger
Claim 7
The Examiner finds that Wittke-Kothe discloses the invention
substantially as claimed except for the handle flaring at each end and
forming receptacles, for which the Examiner relies on Weissenburger.
Appeal Br. 5–6. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art at the time the invention was made to
modify Wittke-Kothe by the teachings of Weissenburger to achieve the
claimed invention. Id. at 6. According to the Examiner, a person of
ordinary skill in the art would have done this to allow the buffer and cleaner
to be removable and replaceable and to provide a stable and secure grip
during use. Id.
Appellant argues that Wittke-Kothe fails to disclose a handle that is
thicker in the middle than it is at each end. Appeal Br. 30–31. Appellant
criticizes the Examiner for removing cushion layers 24 at each end of
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Wittke-Kothe’s handle in order to read the thickness limitation onto Wittke-
Kothe. Id. Appellant also argues that Wittke-Kothe’s cleaner is not V-
shaped as claimed. Id.
In response, the Examiner observes that the handle body of Wittke-
Kothe is comprised of a middle portion and then two recessed areas each of
which accommodates a sleeve comprised of a soft gripping surface.
Ans. 11. According to the Examiner, the middle portion is thicker than the
ends when taking into account only the recessed areas, but not the sleeves. 2
Id. The Examiner points to element 104 depicted in Figure 16 of Wittke-
Kothe as satisfying the V-shaped limitation of claim 7. Ans. 11. The
Examiner provides an annotated version of an excerpt of Figure 11 in
support of this finding. Id.
With respect to the Examiner’s findings regarding the sleeves of
Wittke-Kothe, omitting an element and its function in a combination where
the remaining elements perform the same functions is generally considered
as involving only routine skill in the art. In re Karlson, 311 F.2d 581, 584
(CCPA 1963). However, in the instant case, the Examiner does not find, and
neither do we, that Wittke-Kothe’s sleeves can be omitted without affecting
the operability of the device. Indeed, the Examiner’s rejection expressly
acknowledges the importance of a user having a proper grip on the

2 We note that Wittke-Kothe discloses alternative handle shapes. Wittke-
Kothe ¶ 48 (“other shapes that are ergonomically suitable”). This disclosure
arguably could support a finding and conclusion that it would have been
obvious to modify Wittke-Kothe to conform to the handle portion shape of
claim 7, but the Examiner makes no findings and provides no analysis in
support of this possibility. Notwithstanding, no inference should be drawn
from our failure to make a new ground of rejection on this issue. See
Manual of Patent Examining Procedure, § 1213.02.
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instrument. Final Act. 6 (“stable and secure grip during use”). When the
sleeves are included in the “handle portion” of Wittke-Kothe, which, in our
opinion, they should be, Wittke-Kothe fails to satisfy the thickness limitation
of claim 7. We have also reviewed Figure 16 of Wittke-Kothe and its
corresponding disclosure in paragraphs 64–66 thereof and, in our opinion,
the Examiner’s findings regarding the V-shaped limitation of claim 7 are not
supported by the record before us.
The Examiner’s findings of fact are not supported by a preponderance
of the evidence and, therefore, the Examiner’s legal conclusion of
unpatentability is not well-founded. In view thereof, we do not sustain the
Examiner’s unpatentability rejection of claim 7.
Claim 14
Claim 14 is an independent claim that is substantially similar in scope
to claim 7. Claims App. The Examiner’s rejection of this claim suffers
from the same infirmity that was identified above with respect to claim 7.
Thus, for essentially the same reason expressed above in connection with
claim 7, we do not sustain the rejection of claim 14.
Claims 8, 13, and 17–20
These claims depend, directly or indirectly, from either claim 7 or
claim 14. Claims App. They each stand with the independent claim from
which they depend. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(explaining that dependent claims are nonobvious if the independent claims
from which they depend are nonobvious).)
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Unpatentability of Claims 9, 15, and 16
over Wittke-Kothe, Weissenburger, and Singer
These claims depend, directly or indirectly, from either claim 7 or
claim 14. Claims App. The Examiner’s rejection of these claims suffers
from the same infirmity that was identified above with respect to claim 7,
which infirmity is not cured by any findings of fact derived from the Singer
reference. Final Act. 6. Consequently, we do not sustain the Examiner’s
unpatentability rejection of claims 9, 15, and 16.

CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Bases Affirmed Reversed
9, 13, 15, 16 112 Written Description 9, 13, 15, 16
13 102 Indefiniteness 13
7, 8, 13, 14,
17-20
103 Wittke-Kothe,
Weissenburger
7, 8, 13, 14,
17-20
9, 15, 16 103 Wittke-Kothe,
Weissenburger, Singer
9, 15, 16
Overall
Outcome
7-9, 13-20

REVERSED