2020005700 (P.T.A.B. Jul. 8, 2021)

Juliet Stewart

Patent Trials and Appeals BoardJul 8, 2021

2020005700 (P.T.A.B. Jul. 8, 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. 11/708,742 02/21/2007 Juliet Stewart 402-262 9341 7590 07/08/2021 Juliet Stewart c/o Joseph H. Adams 76 Burd Street Nyack, NY 10960 EXAMINER KALACH, BRIANNE E ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 07/08/2021 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 JULIET STEWART Appeal 2020-005700 Application 11/708,742 Technology Center 3700 Before JAMES P. CALVE, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Pursuant to 37 C.F.R. § 41.52(a), Appellant1 filed a Request for Rehearing on May 24, 2021 (“Req. Reh’g”) seeking reconsideration of our Decision on Appeal mailed April 26, 2021 (“Dec.”). We have jurisdiction under 35 U.S.C. § 6(b). This Decision on Request for Rehearing incorporates the Decision on Appeal, including any abbreviations defined 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the sole inventor, Juliet Stewart. Appeal Br. 8. Appeal 2020-005700 Application 11/708,742 2 therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). We DENY Appellant’s Request. OPINION A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. At best, Appellant’s Request is based on a disagreement with our Decision, which is not a basis for rehearing. For that reason, we deny Appellant’s request. We appreciate Appellant’s frustration noted in the Request for Rehearing. See, e.g., Req. Reh’g 2. That frustration, however, is based on a misunderstanding of the Patent Laws. See id. at 2 (asserting that “I have had possession of my invention from 2006, one year prior to filing for my patent”); 10 (alleging without reference to the originally-filed application that “I can state the fact that I had ‘possession of the claimed subject matter’, i.e. my method of applying makeup to the eyebrows (and to the lips in a similar fashion)”) (emphases omitted); 11 (“Prior to filing my original patent application, with the assistance of counsel, I had ‘possession’ often of the ‘Claimed Subject Matter’, as demonstrated by these facts” because “I owned and operated my own retail studio in Nyack, New York” and “created and regularly applied my ‘claimed subject matter’ as part of that business.”). The problem is with the description provided by the originally-filed patent application, not with Appellant’s purported use of the claimed invention. We appreciate that Appellant is not a patent practitioner and, therefore, provide a brief explanation below of what “possession” means in connection with the written description requirement. Appeal 2020-005700 Application 11/708,742 3 As the Court of Appeals for the Federal Circuit has acknowledged, “[t]he term ‘possession’ . . . has never been very enlightening” because “[i]t implies that as long as one can produce records documenting a written description of a claimed invention, one can show possession.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Nevertheless, “the hallmark of written description is disclosure.” Id. The Federal Circuit has made clear that to show possession there must be sufficient written disclosure of the claimed invention in the specification. Id. The Federal Circuit explained that “whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Accordingly, Appellant does not apprise us of sufficient basis for modifying our Decision. CONCLUSION We deny Appellant’s request for rehearing. Appeal 2020-005700 Application 11/708,742 4 DECISION SUMMARY Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 9–14, 21–29 112, first paragraph Written Description 9–14, 21–29 9–14, 29 103(a) Eyebrowz, Ebay 21–27 103(a) Le Salon, Ebay 28 103(a) Le Salon Overall Outcome 9–14, 21–29 Final Outcome of Appeal After Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9–14, 21–29 112, first paragraph Written Description 9–14, 21–29 9–14, 29 103(a) Eyebrowz, Ebay 21–27 103(a) Le Salon, Ebay 28 103(a) Le Salon Overall Outcome 9–14, 21–29 TIME PERIOD FOR RESPONSE 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). DENIED