Ex Parte Thiebaut

Board of Patent Appeals and Interferences

Aug 18, 2009

11079359 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LAURE THIEBAUT
__________

Appeal 2009-003323
Application 11/079,359
Technology Center 1700
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Decided: August 18, 2009
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-29 and 31-48. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
The subject matter on appeal is directed to an applicator having a
backing sheet that includes a weakened zone or a cutout enabling the
backing sheet to be separated into a first part and a second part. The first
Appeal 2009-003323
Application 11/079,359

part and the second part of the backing sheet both include a projecting part
that projects beyond the periphery of the applicator to provide a gripping
portion which is at least large enough to be grasped without touching the
surface of the applicator.
Claim 1, reproduced below, is the only independent claim on appeal.

1. An article for the application of a product comprising:

at least one applicator including a first face having an
application surface and a second face, opposite the first, at least
partially covered by an adhesive layer, the first face holding the
product to be applied;

a backing sheet covering the adhesive layer, before a first
use, wherein the backing sheet includes at least one of a
weakened zone or a cutout extending at least partially beneath
the applicator and enabling the backing sheet to be separated
into at least a first part and a second part, such that one of said
first and second parts can be removed from the adhesive layer
while the other of said first and second parts remains covering a
portion of said adhesive layer; and

wherein the backing sheet projects beyond the applicator
on at least one part of a periphery of the applicator on each side
of the weakened zone or the cutout such that a projecting part
which projects beyond the periphery of the applicator provides
a gripping portion which is at least large enough to be grasped
without touching the application surface, wherein said first and
second parts respectively include first and second projecting
parts, and wherein said first part is selectively removable to
provide a partially removed state in which said first part is
absent from said second face of said article while said second
part remains covering a portion of said second face.

App. Br. 24, Claims Appendix.1

1 Appeal Brief dated December 26, 2007.
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The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 2, 4, 6, 7, 9-29, 31, and 33-48 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Strong2 and
Porcelli.3
(2) Claims 3, 5, 8, and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Strong, Porcelli, and LaPrade.4
B. ISSUES
(1) Has the Appellant identified reversible error in the Examiner’s
determination that Porcelli would have suggested a backing sheet having a
gripping portion that “is at least large enough to be grasped without touching
the application surface” as recited in claim 1?
(2) Has the Appellant identified reversible error in the Examiner’s
conclusion that the subject matter recited in certain dependent claims would
have been obvious to one of ordinary skill in the art in view of the combined
teachings of Strong and Porcelli?
C. FINDINGS OF FACT
1. Strong
Strong Figure 3, reproduced below, illustrates an applicator pad.
Strong 1:45-46, 49-50.

2 US 5,636,406 to Strong issued June 10, 1997.
3 US 5,794,774 to Porcelli issued August 18, 1998.
4 US 6,159,497 to LaPrade issued December 12, 2000.
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Strong Figure 3 depicts an applicator.
The applicator pad 10 includes an applicator pad body 15 having an
applicator surface 16 and an opposed adhesive surface 17. Strong 2:1-3.
An adhesive 24 is provided on the adhesive surface 17 for releasably
securing the applicator pad to a human hand. Strong 2:37-40.
A removable liner 26 covers the adhesive surface 17 to the marginal
edge surface 18. 3:10-12.
The liner 26 may be provided in two sections 27 and 28, abutting
along mating edges 29 and 30 that span the adhesive surface of the
applicator pad body. The edges 29 and 30 may be lifted successively to
remove the associated liner section from the pad. Strong 3:15-19.
2. Porcelli
Porcelli discloses an applicator that may be attached to a fingertip.
Porcelli 3:45-47.
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The underside of the applicator base is coated with a layer of pressure-
sensitive adhesive. Porcelli 4:16-20.
A removable liner in the form of a carrier disc is adhered to the
adhesive layer. Porcelli 4:34-38.
Porcelli discloses that the diameter of the disc is “somewhat greater
than” the applicator base to define a peripheral flange (14F) which facilitates
the removal of the disc to expose the pressure-sensitive adhesive layer.
Porcelli 4:38-43.
D. PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 405 (2007); Graham v. John Deere Co., 383
U.S. 1, 13 (1966).
A person of ordinary skill is not an automaton but is a person of
ordinary creativity. KSR, 550 U.S. at 421. One of ordinary skill in the art is
presumed to have skills apart from what the prior art references expressly
disclose. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
E. ANALYSIS
1. Issue (1)5

5 As to rejection (1), the Appellant does not present separate arguments for
claims 2, 4, 6, 7, 9-29, 31, 33, 35, 37, 39, and 43. See App. Br. 14-22.
Therefore, the patentability of these claims stands or falls with the
patentability of claim 1. The Appellant has not presented separate
arguments for rejection (2). App. Br. 22. Therefore, we have considered
this ground of rejection based on the arguments advanced in support of the
patentability of claim 1.
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The Examiner found that Porcelli discloses a removable liner (i.e.,
carrier disc) that projects beyond the periphery of the applicator and is “at
least large enough” for grasping by the user. Ans. 3.6
Indeed, Porcelli expressly discloses:
The diameter of disc 14 is somewhat greater than that of
circular base 11 to define a peripheral flange 14F which
facilitates the removal of the carrier disc to expose the pressure-
sensitive adhesive layer . . . .

Porcelli 4:38-43 (emphasis added).
We find that this disclosure in Porcelli would have reasonably
suggested to one of ordinary skill in the art that the peripheral flange 14F “is
at least large enough to be grasped without touching the application surface”
as recited in claim 1. In this regard, we note that the Appellant has failed to
direct us to any portion of the Appellant’s Specification that describes the
dimensions of a flange within the scope of claim 1.
Despite the teachings of Porcelli, the Appellant argues that the flange
is not “large enough to be grasped without touching the application surface.”
App. Br. 9-10. For support, the Appellant measures the peripheral flange
(14F) of the backing sheet (14) in Porcelli Figure 2 and argues that it is
approximately 1/130th of an inch. App. Br. 11-13.
The Appellant’s argument is not persuasive of reversible error.
Porcelli does not disclose that the figures are to scale. Therefore,
measurements taken from Porcelli Figure 2 are not sufficient to establish that
the peripheral flange 14F is approximately 1/130th of an inch. See In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description

6 Examiner’s Answer dated March 24, 2008.
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in the specification of quantitative values, arguments based on measurement
of a drawing are of little value.”).
In sum, the Appellant has failed to direct us to any evidence
establishing that the peripheral flange 14F in Porcelli is not “large enough to
be grasped without touching the application surface” as recited in claim 1.
2. Issue (2)
a. Claim 34
Claim 34 recites that both the first and second projecting parts of the
backing sheet project only beyond a portion of the periphery of the
applicator. App. Br. 30, Claims Appendix.
The Appellant argues that Porcelli describes a flange that projects
beyond the entire periphery of an applicator. The Appellant argues that, at
best, the combination of Strong and Porcelli would result in an applicator
with a flange that extends beyond the entire periphery of the applicator.
App. Br. 15.
We disagree. We find that a backing sheet design is based on a
number of considerations, including ease of removal and cost. For example,
one of ordinary skill in the art would have understood that the larger the
flange on a backing sheet, the easier the backing sheet is removed from an
applicator. See, e.g., Porcelli 4:38-43. That being said, one of ordinary skill
in the art would have also understood that as the size of the backing sheet
increases, the cost of the backing sheet increases. In the case of a large
applicator, such as the glove-shaped applicator of Strong, this cost increase
could be substantial.
We find that it would have been within the skill of the ordinary artisan
to balance these two competing considerations by forming a flange on only a
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portion of a backing sheet that has a size facilitating its removal from an
applicator. Similarly, we find that it would have been within the skill of the
ordinary artisan to form a flange or projecting part on only a portion of both
of the backing sheet sections 27 and 28 of Strong to facilitate removal and
minimize cost.
b. Claim 47
Claim 47 recites that the “backing sheet projects beyond the applicator
a non-uniform amount around the periphery of the applicatory [sic,
applicator].” App. Br. 32, Claims Appendix.
The Examiner explains:
[I]t would have been [an] obvious matter of design choice to
modify Porcelli by providing the backing to have a non-uniform
shape for aesthetic appeal. A change in shape is found to be
obvious to one having ordinary skill in the art.

Ans. 6.
The Appellant argues that Porcelli describes a flange that projects
beyond an applicator by about 1/130th of an inch. The Appellant argues that
varying the amount of projection of a flange that is so minute would not
have been an obvious matter of design choice for the purpose of “aesthetic
appeal.” App. Br. 21.
The Appellant’s argument is not persuasive of reversible error. As
discussed above, the measurements taken from Porcelli Figure 2 do not
establish that the flange 14F is approximately 1/130th of an inch. Thus, there
is no evidence on this record that the flange 14F is so minute that it would
not have been obvious to vary the shape of the backing sheet for the purpose
of aesthetic appeal.

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c. Claims 36, 41, 42, and 48
Claims 36, 41, 42, and 48 are directed to the size of the first and/or
second projecting part of the backing sheet. For example, claim 36 recites
that the second projecting part “is at least large enough to be held between
the thumb and forefinger of a user without touching the applicator surface,”
and claim 48 recites that the “second projecting part is larger than said
portion of said second face of said article that remains covered in the
partially removed state.” App. Br. 30, 32, Claims Appendix.
The Appellant argues that Porcelli describes a flange that projects
1/130th of an inch beyond the periphery of the applicator. The Appellant
argues that such a minute projection “does not provide the structural features
of a grasping portion that avoids the need to touch an applicator surface.”
App. Br. 16.
As discussed above, the Appellant has failed to provide any credible
evidence establishing that the flange of Porcelli is as small as 1/130th of an
inch. Instead, Porcelli discloses that the diameter of the backing sheet (14)
is “somewhat greater” than that of the base of the applicator to define a
peripheral flange (14F) that facilitates the removal of the backing sheet.
Porcelli 4:38-43. We find that this disclosure in Porcelli would have
reasonably suggested to one of ordinary skill in the art that the peripheral
flange 14F is at least large enough to be held between a thumb and
forefinger without touching the applicator surface.
In addition, the Examiner determined that it would have been obvious
to one of ordinary skill in the art to optimize or increase the size of the
flange 14F to prevent contamination. Ans. 8.
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The Appellant argues that Porcelli is “completely unconcerned with
contacting the application surface.” For support, the Appellant directs our
attention to an embodiment in Porcelli which is said to describe a user
“exerting direct pressure on the applicator in order to remove it from a
plastic dome, in which it is housed.” App. Br. 14; Porcelli 6:25-31.
The embodiment relied on by the Appellant relates to removing an
applicator from a sealed package, not removing a backing sheet from an
applicator. According to this embodiment, a user would contact the plastic
dome, not the applicator surface itself, to release the applicator from the
sealed package. Porcelli 6:25-31. Contrary to the Appellant’s argument,
this embodiment shows that Porcelli is concerned about preventing
contamination and maintaining a hygienic applicator surface.
In sum, the Appellant has failed to direct us to any evidence
establishing that the size of the first and/or second projecting part recited in
claims 36, 41, 42, and 48 would have been outside the skill of the ordinary
artisan.
d. Claim 38
Claim 38 recites that “at least one of a weakened zone or a cutout has
a curved profile such that said when said first part is absent said second part
includes a curved recess.” App. Br. 30, Claims Appendix.
The Examiner explained that the particular shape of the weakened
zone or cutout recited in claim 38 does not carry any patentable weight
because the Appellant has not demonstrated that the claimed shape provides
any new, significant attributes to the invention. Ans. 9.
Indeed, the Appellant has not directed us to any evidence establishing
that the claimed shape of the weakened zone or cutout has a particular
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mechanical function. Thus, the shape of the weakened zone or cutout
recited in claim 38 is found to relate to ornamentation only and cannot be
relied on to patentably distinguish the claimed applicator from the applicator
of Strong. In re Seid, 161 F.2d 229, 231 (CCPA 1947).
e. Claim 40
Claim 40 recites that the applicator projects beyond the second part of
the backing sheet “by an amount which is larger than half the size of the
applicator in said partially removed state.” App. Br. 31, Claims Appendix.
The Appellant argues that the combined teachings of Strong and
Porcelli fail to suggest the subject matter of claim 40. App. Br. 17.
We disagree. Strong discloses that backing sheet or liner 26 may be
provided in two sections 27 and 28, abutting along mating edges 29 and 30.
Strong discloses that edges 29 and 30 may be lifted successively to remove
the associated liner section from the applicator. Strong 3:15-19; Strong Fig.
5. Strong Figure 5 suggests that when liner section 27 is removed from the
applicator of Strong, the applicator projects beyond the liner section 28 “by
an amount which is larger than half the size of the applicator” as recited in
claim 40. The Appellant has failed to establish otherwise.
f. Claims 44-46
Claim 1 recites that a first part of the backing sheet “is selectively
removable to provide a partially removed state in which said first part is
absent from said second face of said article while said second part remains
covering a portion of said second face.” App. Br. 24, Claims Appendix.
Claims 44-46 further define the “selectively removable” limitation recited in
claim 1. See App. Br. 19-20. For example, claim 46 recites:
An applicator as recited in claim 1, wherein, in said
partially removed state, said applicator is supported by said
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second part at a first portion of said second face of said article,
and a second portion of the applicator projects from said second
part without any support.

App. Br. 32, Claims Appendix.
Strong discloses that liner sections 27 and 28 may be successively
removed from the applicator. Strong 3:15-19; Strong Fig. 5. That is, when a
first liner section (e.g., liner section 27) is removed from the applicator, the
applicator is supported by the second liner section (e.g., liner section 28) at a
first portion of the applicator and a second portion of the applicator projects
from the second liner section without any support. Thus, we find that Strong
suggests a “selectively removable” liner section as recited in claims 44-46.
The Appellant has failed to establish otherwise.
F. CONCLUSIONS OF LAW
The Appellant has not identified reversible error in the Examiner’s
determination that Porcelli would have suggested a backing sheet having a
gripping portion that “is at least large enough to be grasped without touching
the application surface” as recited in claim 1.
The Appellant has not identified reversible error in the Examiner’s
conclusion that the subject matter recited in certain dependent claims would
have been obvious to one of ordinary skill in the art in view of the combined
teachings of Strong and Porcelli.
G. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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tc
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 22314
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