Ex Parte Ozuna et alDownload PDFPatent Trial and Appeal BoardJan 29, 201612427638 (P.T.A.B. Jan. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/427,638 04/21/2009 66078 7590 02/02/2016 KOLISCH HARTWELL, P,C Mattel Customer Number 200 PACIFIC BUILDING 520 SW YAMHILL STREET PORTLAND, OR 97204 FIRST NAMED INVENTOR Melissa Ozuna 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. MAT3Zl22 7294 EXAMINER FERNSTROM, KURT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/02/2016 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): docketing@khpatent.com chuck@khpatent.com veronica@khpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MELISSA OZUNA, CHRISTINE KIM, and ERIKA KANE Appeal2013-002271 Application 12/427,638 Technology Center 3700 Before EDWARD A. BROWN, NEIL T. POWELL, and FRANCES L. IPPOLITO, Administrative Patent Judges. IPPOLITO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. Appeal2013-002271 Application 12/427 ,63 8 CLAIMED SUBJECT MATTER Claim 17, reproduced below, is illustrative of the claimed subject matter. 17. A toy set, comprising: two manikin hands, each hand at least partially posable and having a plurality of fingers, where each finger includes an inset and contiguous nailbed at least partially defined by a raised concave lip, so that the each finger is configured to receive and removably secure an artificial fingernail that is inserted into the nailbed at a distal end. REJECTION I. Claims 1-12, 15, 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Traub (US 5,782,379, iss. July 21, 1998), Brown (US 7,503,764 B2, iss. Mar. 17, 2009), and Brekke (US 2,223,842, iss. Dec. 3, 1940). II. Claims 13, 14, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Traub; Brown; Brekke, and Shibahashi (US 4,920,991, iss. May 1, 1990). III. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Traub, Brown, Brekke, and Pratt (US 5,433,643, iss. July 18, 1995). 2 Appeal2013-002271 Application 12/427 ,63 8 Rejection I Claims 1-5, 7-12, and 15 ANALYSIS Appellants present arguments for independent claim 1, and assert that dependent claims 2-5, 7-12, and 15 should likewise be allowable. App. Br. 24--29. The Examiner finds that Traub discloses a toy set comprising a pair of hands with fingernails. Final Act. 2. The Examiner adds that it would have been obvious for a skilled artisan to modify Traub with Brown's hands to provide "a more realistic model of a person's hands." Id. The Examiner further acknowledges that Brown does not disclose fingertips with a nailbed into which an artificial fingernail may be inserted. Id. (citing Brown 3 :25- 26). The Examiner cites to Brekke for this feature and asserts it would have been obvious to "modify the device of Traub by providing fingertips each having an open and contiguous nailbed into which an artificial fingernail may be inserted for the purpose of allowing a user to more easily replace the fingernails as desired." Id. 2- 3(citing Brekke, 2: 11-29). Appellants argue that the term "manikin hand" would be understood by a skilled artisan as "a realistic model of a human hand," which Appellants assert requires a three-dimensional shape of a human hand with individual fingers. App. Br. 25. Appellants argue that Traub's device has an upper housing that gives the ornamental appearance of hands and fingers, but does not disclose a "manikin hand having a plurality of fingers." App. Br. 26. We are not apprised of any Examiner error based on these arguments. Traub discloses a toy set with a pair of simulated hands 28 (with fingers 30) 3 Appeal2013-002271 Application 12/427 ,63 8 having removable, replaceable fingernails 12 formed from an upper housing. See Final Act. 2; see Traub, 6:19--27, Fig. 2. While Appellants may argue that Traub' s hands are not sufficiently "realistic" in appearance to teach "manikin hands," (App. Br. 25-26), purely ornamental features cannot be relied upon for patentability. In re Seid, 161F.2d229, 231 (C.C.P.A. 1947) (Features that relate to ornamentation only and have no mechanical function whatsoever cannot be relied upon for patentability of a claim in a utility patent application.). Appellants further argue the combination of Brown's hands and Brekke' s fingers with Traub' s toy set would render the Traub device unsuitable for its intended purpose, destroy its stated and intended utility, and change Traub's principle of operation. App. Br. 26-29; Reply Br. 3. More specifically, Appellants contend that the slide assembly of Traub is configured to advance the artificial fingernails from the magazine to the hoider at the simuiated fingertip, and wouid not be capabie of advancing the fingernails to the tips of the fingers of the manikin hands because the Traub housing "would be remote from the tips of the fingers of the manikin hands." App. Br. 27. Appellants add that the proposed modification "would remove the ability to insert the artificial fingernail from beneath the artificial finger, as the modified nailbed would be insert [sic.] and contiguous, and would require that the user remove and insert each fingernail individually from the distal end of the artificial finger." Id. at 28. Appellants' arguments are not persuasive. The Examiner correctly determined that Appellants identified the intended purpose, utility, and principle of operation of Traub's device too narrowly. Although Traub describes a slide assembly for advancing artificial fingernails outwards from 4 Appeal2013-002271 Application 12/427 ,63 8 magazine assemblies (Traub, 2:1-3:5), Traub's disclosure is directed, more generally and broadly, to a toy for dispensing and holding artificial finger nails. Traub, 1: 1-3. Furthermore, as the Examiner discerns, Traub's device works on the basic principle of receiving and holding artificial fingernails in a nailbed for dispensing. See Ans. 6. The Examiner's position is consistent with Traub's disclosure, which states that the objects of its invention include "the provision of a device for dispensing and holding an artificial fingernail for decoration; the provision of a toy for dispensing and holding a plurality of artificial fingernails for decoration by a child." Traub, 2:6-16. Accordingly, we agree with the Examiner that the replacement of Traub' s hands with those described in Brown and Brekke would not change the principle of operation of Traub, and the modified device would serve the same purpose and have the same utility of providing a device that allows a user to decorate artificial fingernails. See Ans. 7. In addition, Appeiiants aiso argue that the Examiner has not articulated a sufficient reason for the modification of Traub with Brown's hands. App. Br. 26. However, the Examiner stated in the Final Office Action that it would have been obvious for a skilled artisan to modify Traub with Brown's hands to provide "a more realistic model of a person's hands." Final Act. 2. The Examiner's position is persuasive and consistent with Brown's disclosure of providing realistic artificial hands for manicure training. See Brown, 1 :46-56. Moreover, the Examiner finds that the substitution of the simulated hands taught by Traub with the simulated hands of Brown would have yielded entirely predictable results, as each reference teaches different types of hands attached to a base. Ans. 5. Appellants assert that even if such a 5 Appeal2013-002271 Application 12/427 ,63 8 substitution were made, the resulting device would be inoperative. However, as discussed above, we do not agree with Appellants that the proposed combination would render Traub inoperable for its intended purpose. For the reasons provided and based on the record before us, we sustain the rejection of claim 1. Because Appellants rely upon the assertions made with respect to claim 1, and do not raise additional arguments directed to the rejections of claims 2-5, 7-12, and 15 (App. Br. 29), we sustain the rejections of claim 2-5, 7-12, and 15 for the same reasons set forth above. Claim 6 Claim 6 depends from claims 1, 4, and 5, and further recites "the toy set of claim 5, wherein the concavity defined by the inner surface of the raised lip forms a pair of slots running the length of the longitudinal sides of the raised iip." The Examiner takes the position that Brekke' s "fingernail inserted into the nailbed as shown in Figures 2-5 does not appear to have linear longitudinal sides, but rather appears to extend outward at the point where it extends beyond the fingertip." Ans. 7. The Examiner argues "[t]his suggests that a lip portion of the nailbed covers the fingernail along its longitudinal sides, and that the fingernail engages a slot on each side." Id. However, Appellants explain that Brekke is silent on longitudinal slots and, provides, instead, that a nail may be retained frictionally after insertion into cuticle groove I. Reply Br. 5. Specifically, Brekke discloses [ t ]he shape of said nail portion, as shown in Fig. 11, is concavo or convexo and is of oval outline. Said nail is so shaped and is of 6 Appeal2013-002271 Application 12/427 ,63 8 such resiliency that it may be slightly bent and inserted into the cuticle groove I and said nail will thereafter spread and tightly abut the side walls of said groove and thus be frictionally held therein. Brekke, 2:14-21. Looking to the cited sections of Brown (e.g., Figs. 2-5 and 8-11), we cannot discern whether longitudinal slots are necessarily present based on the Examiner's reasoning. Accordingly, we are persuaded of error by Appellants' argument that the Examiner has not established sufficiently that Brekke discloses "a pair of slots running the length of the longitudinal sides of the raised lip." For the foregoing reasons, we do not sustain the Examiner's rejection of claim 6. Claims 17, 19, and 20 For independent claim 17 and its dependent claims 19 and 20, Appellants rely on the same arguments discussed with respect to claim 1. App. Br. 30-31. For the same reasons discussed above with regard to claim 1, we sustain the Examiner's rejection of claims 17, 19, and 20. Rejections II and III With regard to claims 13, 14, 16, and 18, Appellants rely on the same arguments discussed with respect to claim 1. App. Br. 30-33. For the same reasons discussed above with regard to claim 1, we sustain the Examiner's rejection of claims 13, 14, 16, and 18. DECISION 7 Appeal2013-002271 Application 12/427 ,63 8 We sustain the Examiner's decision rejecting claims 1-5 and 7-20. We reverse the Examiner's decision rejecting claims 6. 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-IN-PART 8 Copy with citationCopy as parenthetical citation