Ex Parte AzarDownload PDFPatent Trial and Appeal BoardJan 30, 201512334521 (P.T.A.B. Jan. 30, 2015) Copy Citation 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. 12/334,521 12/15/2008 Donna Azar Azar-001 8441 82574 7590 02/02/2015 Yen Jung Sung 30-47 37 St. Astoria, NY 11103 EXAMINER DOAN, ROBYN KIEU ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 02/02/2015 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 DONNA AZAR ___________ Appeal 2013-000989 Application 12/334,521 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and ERIC C. JESCHKE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Donna Azar (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 6 and 7 under 35 U.S.C. § 112, second paragraph, as indefinite;1 (2) claim 8 under 35 U.S.C. § 112, fourth paragraph, as an improper dependent claim; (3) claims 1 and 4–8 under 35 1 The Examiner includes dependent claim 8 in the heading of this rejection. See Ans. 4. Claim 8 calls for “[a] kit for performing the method of claim 1.” See Appeal Br. 24, Claims App. Claim 8 does not call for the trademark/trade name Pantone®. See id.; see also id. at 23–24 (claims 6, 7); Ans. 4–5. We consider the Examiner’s inclusion of claim 8 in this rejection to be a typographical error. Appeal 2013-000989 Application 12/334,521 2 U.S.C. § 103(a) as unpatentable over Scancarella (US 6,726,900 B2; iss. Apr. 27, 2004) and Ganguly (US 2005/0142084 A1; pub. June 30, 2005); (4) claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Scancarella, Ganguly, and Blin (US 2007/0020205 A1; pub. Jan. 25, 2007); (5) claims 9, 10, and 15 under 35 U.S.C. § 103(a) as unpatentable over Scancarella, Ganguly, and Huang (US 2003/0152410 A1; pub. Aug. 14, 2003); (6) claims 11–14 and 16–19 under 35 U.S.C. § 103(a) as unpatentable over Scancarella, Ganguly, Huang, and Blin; and (7) claim 20 under 35 U.S.C. § 103(a) as unpatentable over Scancarella, Ganguly, Huang, Blin, and Dumler (US 6,612,764 B2; iss. Sept. 2, 2003). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a system and related method that employ a pigmented crème-to-powder formulation for application to eyebrows.” Spec. para. 1; Fig. 2. Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method for applying eyebrow makeup comprising, while in a crème state, applying a crème- to-powder formulation to an eyebrow, or to skin at a location corresponding to an eyebrow, wherein the crème-to-powder formulation has a matte color adapted for application as eyebrow makeup and a viscosity from 1,000 centipoise to 10,000,000 centipoise. Appeal 2013-000989 Application 12/334,521 3 ANALYSIS Indefiniteness Claims 6 and 7 Dependent claim 6 calls for the method of claim 1, wherein the crème-to-powder formulation has a color selected from certain color values from the Pantone® matching system. See Appeal Br. 23–24, Claims App. Claim 7 depends from claim 6 and similarly calls for the Pantone® matching system. See id. at 24. The Examiner finds that “[t]he claim scope is uncertain since the trademark or trade name cannot be used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.” Ans. 4–5. Appellant contends that “[t]here are no hard and fast rules for the use of trademarks in claims . . . . The purpose of avoiding use of trademarks is that they typically refer to a product source rather than the product itself and, more importantly, the underlying product can change while the trademark remains the same.” Appeal Br. 19 (citing MPEP § 608.01(v); MPEP § 2173.05(u)). Appellant further contends that [n]o such problem arises with the use of Pantone® - indeed, quite the opposite. Pantone® is a well-known, industry-standard color categorization system. “If the trademark has a fixed and definite meaning, it constitutes sufficient identification unless some physical or chemical characteristic of the article or material is involved in the invention.” MPEP [§] 608.01(v)(I). In this case, the use of Pantone® to define the colors provides exactly the sort of fixed and definite Appeal 2013-000989 Application 12/334,521 4 meaning required of 35 U.S.C. § 112, and involves no underlying physical or chemical characteristics. Appeal Br. 19. Appellant’s argument is persuasive. The test for definiteness under 35 U.S.C. § 112, second paragraph, 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) (citations omitted). The Specification describes that “Pantone® is widely used in industry to provide a standard for the selection and indication of color. The Pantone® matching system (PMS) employs a number to broadly indicate a particular color.” Spec. para. 29. The Specification further describes the PMS color values called for in claims 6 and 7. See id. Here, the Examiner finds that “[t]he claim scope is uncertain.” See Ans. 4. However, the Examiner acknowledges that the “Pantone[®] color matching system is well known in the art.” See id. at 6 (emphasis added). In other words, the Examiner understands with reasonable clarity what is being claimed, when viewed in light of the Specification. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). We agree with Appellant that “the Pantone® trademark [is not used in claims 6 or 7] to identify a material or product, but to describe, in an industry-standard manner, a color. The Pantone® color-coding system . . . create[s] a standardized color coding scheme [i.e., a color matching system well known in the art].” See Reply Br. 1; see also Ans. 6. Appeal 2013-000989 Application 12/334,521 5 Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claims 6 and 7 under 35 U.S.C. § 112, second paragraph. Improper Dependent Claim Claim 8 The Notice of Appeal (filed January 1, 2012) states, “Applicant hereby appeals to the Board of Patent Appeals and Interferences [now the Patent Trial and Appeal Board] from the last decision of the examiner.” In the Final Action (mailed August 31, 2011, hereinafter “Final Act.”), the Examiner rejects claim 8 under 35 U.S.C. § 112, fourth paragraph, as an improper dependent claim. Final Act. 2; see also Ans. 5. Specifically, the Examiner finds that claim 8 “fail[s] to further limit the subject matter . . . claim[ed] . . . or . . . [fails] to [incorporate by reference] all the limitations of the claim upon which it depends.” See id.; see also Ans. 5. Appellant does not address this rejection in the Appeal Brief (filed April 1, 2012) or in the Reply Brief (filed October 9, 2012). See Appeal Br. and Reply Br., generally. As such, Appellant has waived any argument of error, and we summarily sustain the Examiner’s rejection of claim 8 under 35 U.S.C. § 112, fourth paragraph. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal).2 2 See also Manual of Patent Examining Procedure (MPEP) § 1205.02 (8th Ed., Rev. 9, Aug. 2012) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Appeal 2013-000989 Application 12/334,521 6 Obviousness over Scancarella and Ganguly Claims 1 and 4–8 Independent claim 1 calls for a method for applying eyebrow makeup including the step of “applying a crème-to-powder formulation to an eyebrow, or to skin at a location corresponding to an eyebrow,” and “wherein the crème-to-powder formulation has a matte color.” See Appeal Br. 23, Claims App. The Examiner finds that Scancarella discloses the method of claim 1 except that “[Scancarella] fails to show the formula being in a [crème-to-powder] form with a matte color.” See Ans. 5. The Examiner relies on Ganguly for disclosing that “it is known in the art to have a [crème- to-powder] formulation with a pigment for eye[] makeup.” Id. at 5–6. The Examiner concludes that it would have been obvious “to modify the semi- solid formula of Scancarella with the [crème-to-powder] formulation as taught by [Ganguly] in order to achieve a dry effect as well as [get] a precise placement of color.” Id. at 6. The Examiner further concludes that “it would have been an obvious matter of design choice to construct the color formulation of [Scancarella and Ganguly] with a matte color, since such modification is a mere change in the color of the known composition, the change in color is well known in the art.” Id. Appellant contends that [t]he Examiner admits that neither of Ganguly and Scancarella discloses a matte composition, but argues that it would be obvious to provide a matte composition as this involves a mere change in color, which is well known in the art . . . . The Examiner offers no evidentiary support for this assertion, however. Reply Br. 2 (citing Ans. 6); see also Appeal Br. 11–12. Appeal 2013-000989 Application 12/334,521 7 Appellant’s argument is persuasive. Here, the Examiner takes the position that modifying the combined teachings of Scancarella and Ganguly to include a color formulation in a matte color “would have been an obvious matter of design choice.” See Ans. 6. Jurisprudence when used in this manner amounts to a per se rule of obviousness, which rules are disdained by our reviewing court. See In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Per se rules used in this manner short circuit the Graham inquiry. These rejections, instead of being based on reasoning with rational underpinnings, are based on this per se rule. Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, the Examiner has not provided any factual evidence to show why a person of ordinary skill in the art would have chosen, from a variety of makeup finishes, to make the color formulation of the combined teachings of Scancarella and Ganguly in a matte color. Moreover, the Examiner’s statement that “such [a] modification is a mere change in the color of the known composition” (see Ans. 6) is not supported in the record by underlying factual evidence, and thus cannot properly serve as a basis for concluding that it would have been obvious to a person of ordinary skill in the art to specifically make the color formulation of the combined teachings of Scancarella and Ganguly in a matte color instead of other types of makeup finishes. As such, the Examiner has not made a prima facie case of Appeal 2013-000989 Application 12/334,521 8 obviousness with respect to the rejection of the method called for in claim 1. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of independent claim 1 and its dependent claims 4–8 as unpatentable over Scancarella and Ganguly. Obviousness over Scancarella, Ganguly, and Blin Claims 2 and 3 Claims 2 and 3 depend directly from claim 1. See Appeal Br. 23, Claims App. The Examiner’s rejection of claims 2 and 3 as unpatentable over Scancarella, Ganguly, and Blin (see Ans. 6) is based on the same deficient findings and conclusions discussed above with respect to independent claim 1. Blin is not relied upon to remedy the deficiencies of Scancarella and Ganguly discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejection of claims 2 and 3 as unpatentable over Scancarella, Ganguly, and Blin. Obviousness over Scancarella, Ganguly, and Huang Claims 9, 10, and 15 Independent claim 9 calls for a kit including, similar to independent claim 1, a “crème-to-powder formulation having a matte color.” See Appeal Br. 24, Claims App. Claims 10 and 15 depend directly from claim 9. See id. at 25–26. The Examiner’s rejection of claims 9, 10, and 15 as unpatentable over Scancarella, Ganguly, and Huang (see Ans. 7) is based on the same deficient findings and conclusions discussed above with respect to independent claim 1. Huang is not relied upon to remedy the deficiencies of Scancarella and Ganguly discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejection of claims 9, 10, and 15 as unpatentable over Scancarella, Ganguly, and Huang. Appeal 2013-000989 Application 12/334,521 9 Obviousness over Scancarella, Ganguly, Huang and Blin or Scancarella, Ganguly, Huang, Blin, and Dumler Claims 11–14 and 16–20 Claims 11–14 and 16–20 depend either directly or indirectly from claim 9. See Appeal Br. 25–27, Claims App. The Examiner’s rejections of claims 11–14 and 16–19 as unpatentable over Scancarella, Ganguly, Huang, and Blin (see Ans. 8) and claim 20 as unpatentable over Scancarella, Ganguly, Huang, Blin, and Dumler (see id. at 8–9) are based on the same deficient findings and conclusions discussed above with respect to independent claim 9. Huang, Blin, and Dumler are not relied upon to remedy the deficiencies of Scancarella and Ganguly discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejections of claims 11–14 and 16–19 as unpatentable over Scancarella, Ganguly, Huang, and Blin and claim 20 as unpatentable over Scancarella, Ganguly, Huang, Blin, and Dumler. DECISION We REVERSE the decision of the Examiner to reject claims 6 and 7 under 35 U.S.C. § 112, second paragraph. We AFFIRM the decision of the Examiner to reject claim 8 under 35 U.S.C. § 112, fourth paragraph. We REVERSE the decision of the Examiner to reject claims 1–20 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2013-000989 Application 12/334,521 10 hh Copy with citationCopy as parenthetical citation