Ex Parte Jeong et al

Patent Trials and Appeals Board

Nov 7, 2016

12681435 - (D) (P.T.A.B. Nov. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/681,435 04/02/2010
61174 7590 11/09/2016
MAXON LAW GROUP, PLLC.
625 ELDEN ST. SUITE 102
HERNDON, VA 20170
FIRST NAMED INVENTOR
Haewon Jeong
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A3-1350 4310
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
11/09/2016 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):
maxonip@icloud.com
clo@maxonip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAEWON JEONG, HAKCHAN KIM, JOOHO KIM,
CHANGGYU YOO, and JIYOUNG PARK
Appeal2015-001482
Application 12/681,435
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Haewon Jeong et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 9--12, 14, 15, and 17, which
are all the pending claims. See Br. 5. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the real party in interest is AmorePacific
Corporation. Br. 3.
Appeal2015-001482
Application 12/681,435
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a mascara brush for
eyelash makeup." Spec. i-f 2. 2 Claim 9, reproduced below, is the sole
independent claim and is representative of the subject matter on appeal.
9. A mascara brush comprising:
a generally-cylindrical core defining an axis, a
circumferential surface surrounding the core, said
circumferential surface being defined by opposite first and
second half-circumferential surfaces;
a plurality of coaxial plate comb teeth projecting from the
first half-circumferential surface in a continuous repeating
pattern; and
a plurality of coaxial hairs projecting from the second
half-circumferential surface in an arc extending approximately
180 degrees.
EVIDENCE
The Examiner relied on the follo\~1ing evidence in rejecting the claims
on appeal:
Gueret US 6,681,777 B2 Jan.27,2004
Rebours US 7,856,994 B2 Dec. 28, 2010
Kim ("Kim '739") KR 20-0378739 Mar. 18, 2005
Kim ("Kim '525") KR 20-0416525 Feb. 16,2006
Lee KR 20-0433657 Dec. 12, 2006
2 References made herein to Appellants' Specification refer to the
version of the Specification dated March 12, 2012, which includes paragraph
numbering.
2
Appeal2015-001482
Application 12/681,435
REJECTIONS
The following rejections are before us for review:
I. Claims 9, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Gueret.
II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Gueret, and Kim '739.
III. Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee, Gueret, and Kim '525.
IV. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Gueret, and Rebours.
ANALYSIS
Rejection I - Claims 9, 11, and 17 as unpatentable over Lee and Gueret
Appellants present arguments against Rejection I of independent
claim 9, and do not assert any separate arguments for patentability of claims
11 and 17 also subject to Rejection I. See Br. 14--22. We select claim 9 as
representative of the issues that Appellants present in the appeal of this
rejection, with claims 11 and 17 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner found that Lee discloses a mascara brush, substantially
as claimed, including "disc-type plates ( 40) formed on one side and repeated
along the length of the brush core ( 41) with hairs, or bristles, (34) formed on
an opposite side of the plate comb tooth region and also extending along the
length of the brush core." Final Act. 3--4 (citing Lee, Figs. 1-2). The
Examiner explained that "[ e Jach half of the core's exterior constitutes a
circumferential surface surrounding the core." Id. at 4. According to the
3
Appeal2015-001482
Application 12/681,435
Examiner, "Lee discloses two separate applicator cores (32 & 42), [and]
these cores are joined together ( 41) to form a single core (32 & 42) for the
brush (see Figs 1-3)." Id.
Appellants argue that Lee fails to disclose or suggest "a plurality of
coaxial plate comb teeth projecting from the first half-circumferential
surface in a continuous repeating pattern," and "a plurality of coaxial hairs
projecting from the second half-circumferential surface in an arc extending
approximately 180 degrees," as recited in claim 9. See Br. 17, 19-20. In
particular, Appellants assert that "no plurality of coaxial plate comb teeth
project from opposite half-circumferential surfaces of the alleged brush core
41" of Lee. Id. at 19. According to Appellants, Lee teaches that "a second
cylindrical portion 40 attaches to the core 20, and extends parallel to the core
20" and "[a] plurality of ridge 43 projects from this second parallel portion
40." Id.
We are not persuaded by Appellants' argument because it is not
responsive to the rejection presented by the Examiner. The Examiner did
not rely on element 20 of Lee for teaching a core, but, instead, the Examiner
pointed to elements 32 and 42 in combination. See Final Act. 4. As the
Examiner further explains, "the two half circumferential surfaces ...
together form a 'generally cylindrical core"' (Ans. 4), and "this single
compound core has two circumferential surfaces (since both portions of the
core are cylindrical they each comprise at least a half-circumferential surface
as claimed) and from each of these respective surfaces, the comb plate disc
teeth and bristles each respectively project" (id. at 5). In this regard,
Appellants do not specifically address or identify error in the Examiner's
position in the rejection as presented. Moreover, to the extent that
4
Appeal2015-001482
Application 12/681,435
Appellants' argument suggests that Lee fails to disclose a core having a
single, unitary part from which the teeth and hairs project, we note that the
broadest reasonable interpretation of claim 9, read in light of the
Specification, does not require a unitary core. We find nothing in the claim
or the Specification that would exclude a brush core made up of more than
one part. Thus, Appellants' arguments do not apprise us of error in the
Examiner's findings regarding the disclosure of Lee, which are supported by
a preponderance of the evidence.
Appellants argue that Gueret does not disclose a "plurality of coaxial
plate comb teeth or hairs [that] project from opposite half-circumferential
surfaces of the support 2." Br. 20 (underlining omitted). Appellants assert
that "[t]he Examiner does not explain with sufficient specificity how the
teeth or hairs can be molded unitarily with the alleged core 11, which is
actually the bulge." Id. at 21. According to Appellants, "[i]f the Examiner
intended the core as the element 31, then the molded one would have to
change the principle of the operation." Id.
Appellants' arguments regarding the disclosure Gueret are not
persuasive of error because they are not responsive to the rejection
articulated by the Examiner. As discussed supra, the Examiner relied on
Lee for disclosing plate comb teeth and hairs projecting from a core, and did
not rely on Gueret for disclosing these features. 3 See Final Act. 3--4.
3 The Examiner relied on Gueret solely for disclosing a mascara brush
having a core and hairs that are molded from "elastic" material. See Final
Act. 4 (stating that "Lee discloses the invention essentially as claimed except
for the core and hairs being elastic"). However, as pointed out by
Appellants, claim 9 no longer recites the term "elastic." See Br. 20
(explaining that Appellants deleted the term "elastic" from the claims in an
5
Appeal2015-001482
Application 12/681,435
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 9, and of dependent claims 11 and 17 falling therewith, under
35 U.S.C. § 103(a) as being unpatentable over Lee and Gueret.
Rejections II-IV - Claims 10, 12, 14, and 15 as unpatentable over
Lee, Gueret, and one of Kim '739, Kim '525, and Rebours
With respect to the rejections of claims 10, 12, 14, and 15, which
depend from claim 9, Appellants do not set forth any additional substantive
arguments separate from the arguments discussed supra. Accordingly, for
the same reasons that Appellants' arguments do not apprise us of error in
Rejection I, Appellants also do not apprise us of error in Rejections II, III, or
IV. Thus, we likewise sustain the rejections of claims 10, 12, 14, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Lee and Gueret, with
one of Kim '739, Kim '525, and Rebours.
DECISION
We AFFIRM the Examiner's decision rejecting claims 9, 11, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Lee and Gueret.
We AFFIRM the Examiner's decision rejecting claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Lee, Gueret, and Kim '739.
amendment dated May 3, 2013). As such-because the rejection relied on
Gueret solely for disclosing a feature no longer recited in the claims (i.e.,
elastic core and hairs }-the Examiner's findings regarding the disclosure of
Gueret, and the associated reasoning articulated as to why it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Lee's mascara brush such that the core and hairs are molded from
elastic material, appear to be no longer material to the rejection subject to
appeal. See Final Act. 4--5.
6
Appeal2015-001482
Application 12/681,435
We AFFIRM the Examiner's decision rejecting claims 12 and 14
under 35 U.S.C. § 103(a) as being unpatentable over Lee, Gueret, and
Kim '525.
We AFFIRM the Examiner's decision rejecting claim 15 under
35 U.S.C. § 103(a) as being unpatentable over Lee, Gueret, and Rebours.
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)(l )(iv).
AFFIRMED
7