Ex Parte Roualdes

Patent Trial and Appeal Board

Nov 22, 2016

12858109 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/858, 109 08/17/2010
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
11/25/2016
FIRST NAMED INVENTOR
Marine Roualdes
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.
365752US41 5196
EXAMINER
SHAH, NIYATI DILIP
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
dcdocketing@novakdruce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARINE ROUALDES
Appeal2014-006998
Application 12/858,109
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marine Roualdes ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated July 17, 2013 ("Final Act."), rejecting claims 1-5 and 8-16. 1 An oral
hearing was held on November 15, 2016. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies L'OREAL as the real party in interest. Appeal
Br. 2.
Appeal2014-006998
Application 12/858, 109
The disclosed subject matter "relates to a cosmetic product
applicator." Spec. 1. Claims 1 and 16 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A head for dispensing and applying cosmetic
product, comprising:
a base, wherein the base comprises an upper
plate;
a first tooth having a base end;
two teeth adjacent to the first tooth, each of
the two teeth protruding from a base end located on
the base as far as a free end located away from the
upper plate;
a product dispensing hole which opens
through an upper surface of the upper plate, the
product dispensing hole extending through the
upper plate;
a retainer for the cosmetic product on the
upper plate,
wherein the retainer connects the first tooth
to each of the two adjacent teeth, the retainer and
teeth are connected to each other by the retainer
forming a partition wall having a closed contour
along a directing surface of the base, wherein the
partition wall protrudes from the upper surface of
the upper plate beyond the dispensing hole; and
wherein
the base comprises a lower passage for
introducing a neck of a container;
the product dispensing hole is in fluidic
communication with the lower introduction passage
to allow the dispensing of product and opens
downwardly in a lower surface of the base and
towards the introduction passage;
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Appeal2014-006998
Application 12/858, 109
the product dispensing hole is permanently
open; and
the retainer partition wall protrudes beyond
the dispensing hole from the upper surface of the
upper plate over the whole closed contour along a
directing surface of the base.
REJECTIONS
1. Claim 16 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1-3, 5, 8, 10, 11, and 13-15 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Yde (US 2009/0025247 Al,
published Jan. 29, 2009) and Desmond (US 2006/0289026 Al, published
Dec. 28, 2006).
3. Claims 1, 4, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yde and uesmond.
4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Y de, Desmond, and Romano (US 5,803,093, issued Sept.
8, 1998).
DISCUSSION
Rejection 1
The Examiner rejected claim 16 under 35 U.S.C. § 112, second
paragraph, stating that the following phrases lack sufficient antecedent basis:
"the direction" and "the height." Final Act. 2. Appellant does not present
arguments contesting this Rejection. See Appeal Br. 4--5. Rather, in the
Appeal Brief, Appellant sets forth certain potential amendments that,
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Appeal2014-006998
Application 12/858, 109
according to Appellant, would overcome this Rejection. See, e.g., id. at 5
("This rejection will be overcome by reciting 'a direction' and 'a height' in
place of 'the direction' and 'the height', respectively."). Because Appellant
does not present arguments asserting error in this Rejection, we summarily
affirm.
Rejections 2 through 4
Independent claim 1 recites an "upper plate" that includes "an upper
surface," as shown with emphasis above. See Appeal Br. 14 (Claims App.).
Independent claim 16 also recites an "upper plate" that includes "an upper
surface." See id. at 16-17 (Claims App.). For each of Rejections 2, 3, and
4, the Examiner relied on the combination of elements 12, 52, 56, and 62 in
Y de as the recited "upper plate." See Final Act. 3 (Rejection 2), 8 (Rejection
3), 12 (Rejection 4).
Appellant contends that "Y de does not disclose an upper plate."
Appeal Br. 8 (addressing Rejection 2), 9 (relying on prior arguments to
address Rejection 3), 10 (relying on the argument that "Yde does not
disclose an upper plate" to address Rejection 4). According to Appellant,
"[a] plate, as is well understood by those skilled in the art, consistent with
[Appellant's S]pecification, is defined as a smooth thin flat piece of
material"2 whereas "[t]he construction suggested by the Examiner comprises
a skirt, which is tubular and a cylindrical part which is perpendicular to the
cylindrical part and which is neither flat, nor thin." Id. at 6.
2 For this proposed construction, Appellant relies on the online
version of the Merriam-Webster Dictionary. See Appeal Br. 6.
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Appeal2014-006998
Application 12/858, 109
In response, the Examiner references Figure 5 of Y de and provides (as
"Reference Figure 1 ") a modified version of Figure 5 from Y de with no
reference numerals. See Ans. 2. According to the Examiner, the modified
figure "better illustrate[ s] the plate according to Y de referenced by the
Examiner." Id. The Examiner then states: "Therefore, the partition wall
according to Y de does protrude beyond the upper plate and the product
dispensing hole according to Y de does open through the upper surface of the
upper plate and does extend through the upper plate." Id. at 3.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). Here, the Examiner
does not address Appellant's proposed construction and does not propose an
alternative construction of the upper "plate." Although we do not determine
that the dictionary definition provided by Appellant necessarily represents
the broadest reasonable construction of the upper "plate," we do agree with
Appellant that the Examiner has not demonstrated that the relied-upon group
of structures provide an upper "plate" under a reasonable construction of that
term. See, e.g., Y de, Fig. 6 (showing elements 12, 52, 56, and 62). 3
3 Although the Specification sets forth an exemplary embodiment
depicting plate 34 as a flat horizontal surface, the broadest reasonable
construction of "upper plate" is not necessarily limited to that disclosed
embodiment. See Spec. 10 (describing plate 34 as "generally perpendicular
relative to the axis X-X"' shown in Figures 2 and 3); see also In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are not to be
read into the claims from the specification.").
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Application 12/858, 109
As to the Examiner's reliance on the modified version of Figure 5 of
Y de, we agree with Appellant (Reply Br. 2) that that figure does not clarify
why the relied-upon structures provide an "upper plate."
For these reasons, we do not sustain the rejections of claim 1
(Rejections 2 and 3) or claim 16 (Rejection 4). As to Rejections 2 and 3, we
also do not sustain the rejection of claims 2-5 and 8-15, which depend from
claim 1.
DECISION
We AFFIRM the decision to reject claim 16 under 35 U.S.C. § 112,
second paragraph and REVERSE the decision to reject claims 1-5 and 8-16
under 35 U.S.C. § 103(a).4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
4 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
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