2020005700 (P.T.A.B. Apr. 26, 2021)

Juliet Stewart

Patent Trials and Appeals BoardApr 26, 2021

2020005700 (P.T.A.B. Apr. 26, 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 04/26/2021 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 04/26/2021 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 APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9–14 and 21–29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 CLAIMED SUBJECT MATTER2 The claims are directed to makeup application and a corresponding kit. Claims 9, 21, and 28, reproduced below with emphases added and reformatted for improved clarity, are illustrative of the claimed subject matter: 9. A method of forming or shaping an eyebrow on an individual, the steps of said method comprising: applying a hard form non-liquid, non-emollient adhesive material exactly matching skin color but not hair color of the individual directly on said eyebrow and on areas outside of said eyebrow, including within internal spaces of the eyebrow or along an exterior outline of the eyebrow where hair is sparse or missing, to highlight gaps and other defective areas of the eyebrow 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 adhesive surfaces created by said hard form non-liquid adhesive material 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. 2 The claims at issue in this appeal are those included in the amendment submitted February 18, 2019. In response to a first Notice of Defective Appeal dated November 20, 2019, Appellant submitted a marked-up version of those claims on November 22, 2019, showing the amendments with strikethrough and underlining. A second Notice of Defective Appeal, dated January 28, 2020, notified Appellant that the claims should be submitted in clean format for appeal (i.e., no strikethrough or underlining). Appellant appeared to misunderstand the requirement and removed all text subject to strikethrough and underlining. We understand the previously underlined text as part of the pending claims and that it should not have been removed. Appeal 2020-005700 Application 11/708,742 3 21. A method of forming or shaping lips on an individual comprising: applying a hard form non-liquid, non-emollient adhesive material 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. 28. A kit for use in forming or shaping eyebrows and lips, said kit consisting of: at least one hard form non-liquid, non-emollient adhesive material pencil to exactly 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. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Darken & Shape Your Eyebrows – New, Innovative and Simple Eyebrows Sol’n, http://www.eyebrowz.com (“Eyebrowz”). Le Salon: About Your Make-up, http://web.archive.org/web/20030323221554/http://beautysalon.website2g o.com/p222.htm1 (“Le Salon”). Loose Powder Eyeshadow Tips for a Dummy, http://community.ebay.com/t5/Archive-Health-Beauty/Loose-Powder- Eyeshadow-Tips-for-a-Dummy-gt-Me-o/td-p/1689039 (“Ebay”). Appeal 2020-005700 Application 11/708,742 4 REJECTIONS Claims 9–14 and 21–29 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 9–14 and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Eyebrowz and Ebay. Claims 21–27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Le Salon and Ebay. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Le Salon. OPINION Background The appeal presently before us is the third appeal involving the pending application. The claims now before us are substantially similar to those involved in the second appeal (Appeal No. 2017-007291). That appeal resulted in affirmance of the Examiner’s rejection of claims 9–14, 28, and 29, and a new ground of rejection being entered for claims 21–27. Appellant did not seek rehearing or appeal that decision. The main difference between the claims at issue in the second appeal and those now before us is an amendment removing the recitation of “concealer” and replacing that limitation with “non-liquid, non-emollient adhesive material” which can been seen in italics in the reproduced claims above. The Examiner’s written description rejection, discussed below, involves that limitation. Appeal 2020-005700 Application 11/708,742 5 Written Description “The test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’”3 Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The Examiner has the initial burden of presenting evidence of reasons why persons skilled in the art would not recognize, in the disclosure, a description of the invention defined by the claims and that burden is met when the Examiner points out that the claim reads on embodiments outside the scope of the original written description. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner rejects the claims as lacking written description for, at least, the non-emollient feature added to the claims. Final Act. 8. Specifically, the Examiner explains that “Applicant has now amended the independent claims to require that the concealer be non-emollient.” Id. The Examiner finds that “no such disclosure or distinction has been made in the specification for such a requirement” and that “Applicant has merely provided that the claimed concealer is any well-known concealer that is already available.” Id. Appellant never clearly explains, what, exactly, the term “non- emollient” adds to the claims. Appellant responds, for example, by characterizing the description provided by the Specification as “An Innocent 3 We direct Appellant to the Section 2163 of Manual of Patent Examining Procedure (“MPEP”), which provides a detailed discussion of the written description requirement. Appeal 2020-005700 Application 11/708,742 6 Misinterpretation.”4 Appeal Br. 6 (emphasis omitted). The core of Appellant’s contentions involve this “innocent misrepresentation” in its Specification, including “the unfortunate use of the term ‘concealer,’ as in ‘hard-form concealer,’ when the invented skin-toned eyebrow pencil (aka STEP), as used to apply a counter-intuitive skin-tone adhesive material to brows and lips, is not used as a ‘concealer.’” Appeal Br. 5 (referencing Appendix B of this appeal, which includes a February 18, 2019 letter from the inventor, Juliet Stewart, to the Examiner). Appellant contends that its STEP pencil “has no emollient color core like concealer ‘sticks’; its ‘hard form’ is that of a standard hair-colored brow pencil.” Id. Appellant explains: (1) “The only similarity between my invention and a concealer product is the COLOR”; (2) “This is NOT about a formula; it is about utilizing a Color from an unrelated category (concealer)”; and (3) “I . . . add skin-color to a standard Eyebrow Pencil that already exists in the market.” Id. at 6 (quoting App’x B). Appellant contends that the Specification should have referred to concealer color, rather than concealer. Appeal Br. 6–7 (quoting App’x B). Without providing any specific citation to the Specification, Appellant contends, generally, that the Specification’s “Detailed Description of the Invention clearly states that [my invented makeup tool] is not a concealer product by the description of its [internal non-emolient color core as being a] hard form formula; that differentiates the two [different] formulas.” Id. at 7; see also id. at 48–51. 4 Although now representing herself, Ms. Stewart was previously represented by a registered practitioner when the application was filed and during prosecution, including the prior two appeals. Appeal 2020-005700 Application 11/708,742 7 The Specification explains that “the concealer is applied by pencil 14 wherein the concealer composition 16, typically in a wax or hard form, is within the pencil 14” and “is applied to the skin 12 surrounding the eyebrow, and if necessary portions of the eyebrow, to form an outline 18 of a desired eyebrow 10, the concealer creating an adhesive surface upon which the eyeshadow can adhere.” Spec. 6:6–10. “A standard eyebrow pencil 22 can be used” and “the eyeshadow 19 is applied with the eyebrow pencil 22 to the eyebrow 10 within the formed outline 18.”5 Id. at 6:18, 6:25–26. “The concealer and eyeshadow that may be used in this invention are well known and typically packaged separately and are accompanied by suitable application means.” Id. at 7:8–9 (emphasis added). There is no disclosure of the purportedly new “STEP pencil” alleged by Appellant. Notably, in the prior appeals (2011-011878 and 2017- 007291), there was no dispute that the use of the term “concealer” was a mistake. As is clear from the Specification based on the explanation above, the concealer is used to create an adhesive surface and the concealer is disclosed as being well known. Appellant also makes clear in its briefing that a conventional concealer does not provide written description support for the now-recited “non-emollient adhesive material.” According to Appellant’s own admission, “all standard concealer products are and must be emollient.” Appeal Br. 49 (citing the declaration of Ms. Stewart); see also id. at 50 (“the term ‘hard form concealer’ is a contradiction”). Moreover, by Appellant’s own admission, well known concealers cannot be the alleged 5 Appellant appears to imply that this discussion applies to the concealer application. See Appeal Br. 18. It does not, as clear from the text of the Specification. Appeal 2020-005700 Application 11/708,742 8 “STEP pencil.” See id. at 33 (“no one produces . . . a skin-toned eyebrow pencil”), 34 (“Applicant researched and presented the facts to show that the industry does not produce any skin-toned eyebrow pencils”). We appreciate Appellant’s contentions regarding the nature of what is asserted to be the purported invention. Unfortunately, however, the disclosure of the application relied upon by Appellant does not reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. The argument and declarations provided, which are contrary to the express disclosure of the Specification, do not cure that deficiency. To the extent Appellant believes that the limitations at issue would have been obvious to one skilled in the art in view of the disclosure provided by the Specification, we note that, too, is not sufficient to establish written description support. See Ariad, 598 F.3d at 1352 (“[W]hile the description requirement does not demand any particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).”). Moreover, we additionally note that the broader recitation of “adhesive material,” rather than a “concealer creating an adhesive surface” found in the original claims, is also beyond the scope of support provided by the written description. That is, the disclosure in the Specification is limited to using a concealer, and more specifically, a concealer known in the art at Appeal 2020-005700 Application 11/708,742 9 the time of the invention. There is no guidance as to any other “adhesive” to be used in Appellant’s purported invention. For at least the reasons set forth above, we are not apprised of error in the Examiner’s decision to reject the claims as lacking written description support. Obviousness Much of the dispute regarding the Examiner’s obviousness rejections relates to the “non-emollient” limitation, which, as explained above, lacks sufficient written description support in the original Specification. Without that feature, Appellant is essentially left with the subject matter previously addressed in the prior appeals, and specifically 2017-007291, where those claims were either subject to an Examiner’s rejection that we affirmed or rejected based on our own new grounds of rejection. We decline to opine on patentability of “a hard form non-liquid, non-emollient adhesive material,” for which Appellant has no written description support based on the application before us. Accordingly, we do not reach the obviousness rejections in the instant appeal. Moreover, we note that our previous decision explained that Appellant did not identify error in the Examiner’s finding that Ebay teaches a stick pencil concealer, which would be considered “hard form.” See Appeal No. 2017-007291 (PTAB 2018) at *5 (“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. Appeal 2020-005700 Application 11/708,742 10 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.”); see also id. at *6 (noting that “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,’” and agreeing that “the concealer, which is on the skin, provides an adhesive surface for the eye shadow”). “[A] Board decision in an application is the ‘law of the case,’ and is thus controlling in that application and any subsequent, related application.” MPEP § 706.07(h)(XI). For the reasons explained above, it has already been decided that Ebay teaches a hard form concealer used to create an adhesive surface. Adams Declaration One of the declarations presented by Appellant in this proceeding is the declaration of Joseph A. Adams, Appellant’s “personal and business counsel” (Adams, Declaration ¶ 1), which is presented as a declaration under 37 C.F.R. § 1.132. “When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” 37 C.F.R. § 1.132 (emphasis added). The Adams Declaration does not present evidence to traverse a rejection or objection. Rather, that declaration appears to be arguing for patentability under the guise of a declaration under 37 C.F.R. § 1.132. We address the Adams Declaration below to make Appellant, and more importantly Mr. Adams, aware of the rules for practicing before the Office. Appeal 2020-005700 Application 11/708,742 11 We appreciate that Ms. Stewart is representing herself in this matter. Nevertheless, Mr. Adams is an attorney, but does not appear to be a registered practitioner. It appears that Mr. Adams attempts to practice before the Office as an unregistered practitioner. The rules for practicing before the Office are clearly laid out in Title 37 of the Code of Federal Regulations. “An applicant for patent may file and prosecute the applicant’s own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventor.” 37 C.F.R. § 1.31. “Patent practitioner means a registered patent attorney or registered patent agent under § 11.6.” 37 C.F.R. § 1.32(a)(1). 37 C.F.R. § 11.6 explains that “an attorney . . . who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office.” Practicing before the Office includes a broad range of activities, “includ[ing] . . . giving advice to a client in contemplation of filing a patent application or other document with the Office” and “drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application.” 37 C.F.R. § 11.7(c); see also 37 C.F.R. § 11.7(d) (addressing matters before the Patent Trial and Appeal Board, and referencing 37 C.F.R. § 41.5(a)). CONCLUSION The Examiner’s rejection under 35 U.S.C. § 112, first paragraph is affirmed. We do not reach the Examiner’s rejections under 35 U.S.C. § 103. Appeal 2020-005700 Application 11/708,742 12 DECISION SUMMARY6 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9–14, 21–29 112, first paragraph 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). AFFIRMED 6 We do not reach the obviousness rejections.