Ex Parte Dobler et alDownload PDFPatent Trial and Appeal BoardJun 18, 201511899718 (P.T.A.B. Jun. 18, 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. 11/899,718 09/07/2007 Sven Dobler 7828 1400 7590 06/19/2015 Paul M. Denk Suite 170 763 S. New Ballas Rd. St. Louis, MO 63141 EXAMINER DOAN, ROBYN KIEU ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 06/19/2015 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 DALE BEAL and SVEN DOBLER1 ____________ Appeal 2013-002657 Application 11/899,718 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. GEIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s rejection of claims 12–14.2 Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Orlandi, Inc. as the real party in interest. Br. 4. 2 Appellants canceled claims 1–11 and those claims are not before us on this Appeal. Br., Claims App; see also id. at 6. Appeal 2013-002657 Application 11/899,718 2 THE CLAIMED SUBJECT MATTER The claimed subject matter relates to an “applicator for cosmetic products.” Spec. 2:9. Claim 13 is the sole independent claim and recites: 13. An applicator for transferring a non-liquid cosmetic from a bulk source to a consumer for sampling at the site of usage of said applicator, said sampling being provided upon a selected area of the consumer's body, without staining the remainder of the consumer, comprising: a card, generally planar, having a raised area and a fold line bisecting said card and said raised area; said raised area including a pattern of separated individual bosses mutually spaced apart within a border, said pattern having the shape of a pair of lips, with the upper lip positioning above said fold line, and the lower lip positioning below said fold line, said bosses adapted to collect cosmetic from the bulk source; said raised area adapting to allow the consumer to apply lipstick across the raised area bosses from the bulk source of cosmetic for collecting the cosmetic sample and the placing the cosmetic sample upon a consumer's body for evaluation by the consumer; said applicator including said card being one ply, said raised areas being two spaced apart second plies, and a third ply affixing to said card, with said second plies adjoining to said third ply wherein said raised area is oriented opposite said card; said raised area being formed by one of mechanical embossing or printing, wherein said printing being one of silkscreen, offset, rotogravure, or flexography, and said flexography including one of conventional inks, offset inks, flexo inks, ultraviolet cured inks, and thermographic heat set inks; and said card having at least two notches exposed along lateral edges on the perimeter of said card, at least one notch locating above said fold line, and at least one notch locating below said fold line, said notches being aligned for mutual interlocking when a consumer closes said card by folding along Appeal 2013-002657 Application 11/899,718 3 said fold line and placing the raise area and any remaining cosmetic on the interior of said card when folded, said notches retaining said card closed after usage of said applicator, and said card when closed resisting inadverted opening and no portion of the perimeter of said card when closed extending outwardly of any other portion of said card. THE REJECTION ON APPEAL The Examiner rejected claims 12–14 as obvious under 35 U.S.C. § 103(a) over Wallschlaeger (US 4,995,408; iss. Feb. 26, 1991) in view of Beal (US 4,611,611; iss. Sept. 16, 1986) and Elliott (US 4,006,819; iss. Feb. 8, 1977). ANALYSIS Rejection of Claim 13 Appellants argue that the Examiner erred in finding that Wallschlaeger teaches or discloses the claimed ply structure. Br. 15. Appellants’ argument relies on the claim limitation “said card being one ply, said raised areas being two spaced apart second plies, and a third ply affixing to said card, with said second plies adjoining to said third ply wherein said raised area is oriented opposite said card.” Br., Claims App.; see also id. 15. As described in Appellants’ Specification (Spec. 10, ll. 12‒ 23), and as illustrated in Appellants’ figure 3, the claimed third ply is intermediate the card and the raised areas. The Examiner found that Wallschlaeger disclosed the recited structure, referring to figures 2 and 4. Ans. 8; Final Act. 2–3. We agree with Appellants that Wallschlaeger does not teach or suggest the claimed structure. Figure 2 of Wallschlaeger is shown below: Appeal 2013-002657 Application 11/899,718 4 Figure 2 depicts an embodiment of the Wallschlaeger invention. The Examiner found that Wallschlaeger disclosed “a third ply (7) affixed to said card [9] (see fig. 2) and the second plies (raised areas 3) adjoining to the third ply (7, see fig. 2) and wherein the raised area being oriented opposite said card.” Ans. 8. The Examiner’s finding is in error. The claim requires that the third ply be affixed to the card and that the second plies adjoin to the third ply such that the raised area (i.e., the third ply) is oriented opposite the card. Br., Claims App. That is, “the first and third ply adjoins, and the second pl[ies] are applied to the third ply, opposite the first ply.” Br. 15. In Wallschlaeger, the first ply or card (9) is attached to the third ply (7) via second plies (3). Wallschlaeger, Fig. 2. The third ply (7) is not attached to the card (9) on one side, with the second plies (3) attached on the opposite side of the card. See id. The Examiner has not provided any additional reasoning explaining why the structure of Wallschlaeger (or any other reference) would teach or suggest the claimed structure. As such, we conclude that the Examiner has failed to establish a prima facie case of obviousness. For this reason, we reverse the Examiner’s rejection of claim 13. Appeal 2013-002657 Application 11/899,718 5 Rejection of Claim 12 Claim 12 depends from claim 13. We therefore reverse the Examiner’s rejection of claim 12 for the reasons stated with respect to claim 13, supra. Rejection of Claim 14 Claim 14 depends from claim 13. We therefore reverse the Examiner’s rejection of claim 14 for the reasons stated with respect to claim 13, supra. CONCLUSION We reverse the Examiner’s rejection of claims 12–14 under 35 U.S.C. § 103(a). REVERSED JRG Copy with citationCopy as parenthetical citation