Ex Parte Stewart

Patent Trial and Appeal Board

Oct 3, 2013

11708742 (P.T.A.B. Oct. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JULIET STEWART
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Appeal 2011-011878
Application 11/708,742
Technology Center 3700
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Before: JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/708,742

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 9-28. Claims 1-8 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 9, 15, 21, and 28 are independent. Claim 9, reproduced below,
is illustrative of the claimed subject matter:
9. A method of forming or shaping an eyebrow on an
individual comprising:
two steps, wherein said first step is providing a hard form
concealer having a first predetermined color matched to the
skin color of the individual and applying said concealer in
feather like strokes to the skin of the individual along the
intended outline of the eyebrow and within the internal space
covered by the eyebrow where hair is missing, to create
adhesive surfaces thereon;
wherein said second step is providing an eyeshadow
having a second predetermined color that matches the desired
hair color of the eyebrow and applying said eyeshadow such
that more of said eyeshadow is absorbed and adhered to said
adhesive surfaces than to the underlying skin of the individual
to create a natural hair looking eyebrow.

REJECTIONS
1. Claims 9-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tips1, Handyman2, Le Salon3, and Beautymag4;

1Make-Up Tips Exclusively Sponsored by Beauty Bridge,
http://web.archive.org/web/20061022142435/http://make-
up.lifetips.com/cat/64167/genera...(last visited 07/16/2010).
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2. Claims 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Le Salon; and
3. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Le Salon, Tips, Handyman, and Beautymag.

OPINION
Claims 9-20 – Tips/Handyman/Le Salon/Beautymag
Appellant argues claims 9-20 as a group. See Ans. 10, 14-19. We
select claim 9 as representative. Claims 10-20 stand or fall with claim 9.
Initially, Appellant argues that no motivation has been established for
combining the teachings of Tips, Handyman, Le Salon, and Beautymag.
App. Br. 10, 18; Reply Br. 3. This argument is unpersuasive because the
Examiner explains that it would have been obvious to modify the method of
Tips to include the concealer of Handyman in order to allow the eyeshadow
to better adhere to the skin, it would have been obvious to further modify the
method of Tips to have the concealer applied in hard form as taught by Le
Salon because Le Salon teaches that hard form concealer is well known in
the art, and it would have been obvious to apply the cosmetics in the

2HowTOHandyman.com: How to Apply Eyeshadow Correctly,
http://www.howtohandyman.com/Detailed/Lifestyle/Personal-Care-
andStyle/Other-Personal-Care-
andStyle/How_to_Apply_Eyeshadow_Correctly_31187.html (last visited
07/16/2010).
3Le Salon: About Your Make-up,
http://web.archive.org/web/20030323221554/http://beautysalon.
website2go.com/p222.html (last visited 07/16/2010).
4Beautymagonline.com, Start Make Up Procedure,
http://web.archive.org/web/20061018104114/http://beautymagonline.com/pa
ges/jopage2.htm (last visited 07/16/2010).
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proposed modified Tips in feather-like strokes as taught by Beautymag in
order to create a more natural looking brow. Ans. 11-12. Appellant does
not challenge the specific explanation provided by the Examiner.
Appellant further argues that the Examiner’s finding that Tips
discloses forming or shaping an eyebrow is incorrect. App. Br. 16.
Appellant acknowledges that Tips discloses filling in hair in an over-plucked
eyebrow using an eyebrow pencil or an angle brush with shadow, but
contends that Tips does not teach or suggest forming or shaping an eyebrow.
Id. However, Appellant fails to offer any explanation regarding why filling
in missing eyebrow hair cannot be considered forming or shaping an
eyebrow. Appellant further contends that it is unclear whether the “shadow”
referred to in Tips is even eyeshadow. Id. It is clear from the earlier
reference to “eyeshadow” on page 3 of Tips that “shadow” refers to
eyeshadow and Appellant offers no alternate interpretation for “shadow.”
Appellant presents additional arguments attacking the references
individually. App. Br. 16-17. For example, Appellant argues that Tips does
not disclose use of the concealer as claimed, that Handyman does not teach
or suggest using eyeshadow to create an eyebrow, that Le Salon does not
suggest creating brows, and that Beautymag does not teach or suggest using
a concealer that matches an individual’s skin tone. App. Br. 16-17.
However, the Examiner does not rely on the individual references disclosing
the features argued by Appellant. See Ans. 4-6. These arguments are
unpersuasive because they attack the references individually rather than the
combination proposed by the Examiner. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
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Appellant additionally argues that the rejection is improper because
the references themselves do not provide a teaching, suggestion or
motivation for the proposed combination. App. Br. 17, 18. This argument is
unpersuasive because no such requirement exists. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.”).
Appellant also argues that “the fact that the Examiner has to combine
four separate references to state that the invention claims are obvious
actually provides a basis for Appellant to submit that the invention claims
are indeed novel and non-obvious.” App. Br. 17. However, the number of
references alone does not weigh against obviousness. See In re Gorman,
933 F.2d 982, 986 (Fed. Cir. 1991) (“The criterion, however, is not the
number of references, but what they would have meant to a person of
ordinary skill in the field of the invention.”).
Appellant alleges that the rejection must be based on impermissible
hindsight because the references themselves fail to provide a teaching,
suggestion or motivation for the proposed combination. App. Br. 18. As
noted above, the Examiner provides an explanation for the proposed
modifications to Tips and Appellant offers no persuasive explanation
regarding why the Examiner’s reasoning is based on impermissible
hindsight.
For these reasons, we are not apprised of error and we sustain the
rejection of claims 9-20.

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Claims 21-27 – Le Salon
Claims 21-27 are directed to a method of forming or shaping lips on
an individual. Appellant’s Briefs generally allege that the combination of
references also fails to teach or suggest various features recited in claims 21-
27. App. Br. 10, 19; Reply Br. 3. However, Appellant does not point to any
specific error in the rejection. Thus, we are not apprised of error and we
sustain the rejection of claims 21-27.

Claim 28 – Le Salon/Tips/Handyman/Beautymag
Claim 28 is directed to a kit for forming or shaping eyebrows and lips.
Appellant relies on the arguments discussed above regarding claims 9-20
and 21-27 for the patentability of claim 28. See App. Br. 10, 14-19 and
Reply Br. 3. These arguments are unpersuasive for the reasons set forth
above. We also sustain the rejection of claim 28.

DECISION
We AFFIRM the Examiner’s decision to reject claims 9-28.
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

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