Ex Parte Werner

Board of Patent Appeals and Interferences

Aug 11, 2009

10922049 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MELANIE R. WERNER
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Appeal 2009-007460
Application 10/922,049
Technology Center 3700
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Decided: August 11, 2009
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Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3 and 5. 1

1 This Appeal is related to Appeal No. 2009-005185, decided concurrently
herewith.
Appeal 2009-007460
Application 10/922,049

2
We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claims 1 and 5 are the independent claims on appeal, and read as
follows:
1. An eye liner pencil for an eyelid of a user comprising:

a first section and at least a second section, the first section fits on top
of the second section, each section having an elongate portion having a top
end, which is gripped by the user, the elongate portion having a central axis;
and
a marking portion extending from the elongate portion at the top end
of the elongate portion at a fixed angular relationship between 5° and 175°
with the central axis, the marking portion for marking an eyelid a color, the
marking portion made of the color and a material that is to mark the eyelid,
the elongate portion positioned about the marking portion until a point where
the marking portion extends from the elongate portion, the marking portion
includes a solid color tube, the top end of the elongate portion and the
marking end of the second section extending from the elongate portion
through the hole into the hollow portion of the elongate portion of the first
section and the top end of the elongate portion of the second section friction
fitting with the hollow portion of the elongate portion of the first section.

5. A method for coloring an eyelid of a user comprising the steps of:

gripping an elongate portion of a first section of an eye liner pencil,
the elongate portion having a central axis;
marking the eyelid a color with a marking portion of the eye liner
pencil that extends from the elongate portion of the first section at the top
end of the elongate portion at a fixed angular relationship of between 5° and
175° with the central axis of the elongate portion, the marking portion made
of the color and a material that is to mark the eyelid, the elongate portion
positioned about the marking portion until a point where the marking portion
extends from the elongate portion, the marking portion includes a solid color
tube that flares to a tip which is at the fixed angular relationship;
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Application 10/922,049

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separating the first section from a second section of the pencil which
has a tip of a color tube that extends from a top end of an elongate portion at
a fixed angular relationship of between 5° and 175° from a central axis of
the elongate portion of the second section that extends through a hole at a
bottom end of the first section into the hollow portion of the first section;
and
coloring the eyelid with the tip of the second section.

The Examiner relies on the following evidence:

McMurrey US 6,568,529 May 27, 2003
Mueller US 2,901,100 Aug. 25, 1959

We reverse.

ISSUE
The Examiner concludes that claims 1-3 and 5 are rendered obvious
by the combination of McMurrey and Mueller.
Appellant contends that there is nothing in the prior art relied upon by
the Examiner that would have enabled the ordinary artisan to make the
claimed liner pencil.
Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in failing to provide any fact findings or reasons as to why
the method of forming the claimed liner pencil would have been within the
level of skill of the ordinary artisan?

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Application 10/922,049

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FINDINGS OF FACT
FF1 According to the Specification, “the present invention relates to an
eye liner [or lipliner] pencil having a curved tip, or a straight angled tip that
is formed from a plurality of sections.” (Spec. 1.)
FF2 The Specification teaches the following method to make the tip of the
pencil:
Fabricate the pencil . . . and insert “color” as usual.

Step 1. Holding the eyeliner pencil . . . tip . . . in the
DOWNWARD position, pour boiling water to
ONE side of the pencil . . . for 15-30 seconds.
This process of adding heat gently slowly draws
eye liner color out of the tube . . . .

The heating process also creates the wooden
(pencil-like) case to form the appropriate
angle/edge at the point where the color exits the
pencil 10.

Step 2: Immediately after applying (liquid) heat, turn the
eye liner tip . . . UPWARDS. Using fingers and
hand, apply gentle pressure to the OPPOSITE,
unheated side of the wand carefully forming and
bending tip . . . to desired angle.

Step 3: Allow eye liner pencil . . . to cool at room
temperature.

(Id. at 6.)

FF3 The Examiner rejects claims 1-3 and 5 under 35 U.S.C. § 103(a) as
being obvious over the combination of McMurrey and Mueller (Ans. 3).
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FF4 The Examiner finds that McMurrey teaches the pencil and method
substantially as claimed (id.).
FF5 The Examiner notes that McMurrey “fails to show the marking
portion of each section having a top end at a fixed angular relationship
between 5 and 175 degrees with the central axis.” (Id. at 3-4.)
FF6 The Examiner cites Mueller for teaching a “cosmetic applicator . . .
comprising an elongate portion . . . and a central axis, a marking portion . . .
having a top end . . . with a fixed angular relationship between 5 and 175
degrees.” (Id. at 4.)
FF7 The Examiner concludes:
It would have been obvious to one having an ordinary skill in
the art at the time the invention was made to employ the curved
shaped of the tip portion as taught by Mueller et al into the
cosmetic pencil of McMurrey in order to provide an accurate
outline to the surface of the user’s body.

(Id.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“[I]n order to render an invention unpatentable for obviousness, the prior art
must enable a person of ordinary skill to make and use the invention.” In re
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Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing Beckman Instruments,
Inc. v. LKB Producter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. “We must still be careful not to
allow hindsight reconstruction of references to reach the claimed invention
without any explanation as to how or why the references would be combined
to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

ANALYSIS
Appellant argues that “there is nothing to enable one skilled in the art
how to take the applicator that is made of wood or cardboard or fiber or
plastic and cause the applicator portion . . . of McMurrey to have a fixed
angular relationship.” (App. Br. 12.) Appellant argues as the ordinary
artisan would understand, if one were to try and just bend the liner crayon, it
would break off (id.). Appellant argues that neither McMurrey nor Mueller
teach how to make a liner crayon having a curve or bend at the tip; whereas,
the instant Specification teaches the use of heat to make the claimed liner
crayon (id.).
The Examiner does not respond to the above argument, nor does the
Examiner make any fact findings as to a method of forming the claimed liner
pencil based on the teachings of the cited references. As the prior art must
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enable the ordinary artisan to make the claimed invention, and as the
Examiner has not made any fact findings or provided any reasons as to why
the method of forming the claimed liner pencil would have been within the
level of skill of the ordinary artisan, we are compelled to reverse the
rejection.

CONCLUSION OF LAW
We conclude that Appellant has demonstrated that the Examiner erred
in failing to provide any fact findings or reasons as to why the method of
forming the claimed liner pencil would have been within the level of skill of
the ordinary artisan.
We are thus compelled to reverse the rejection of claims 1-3 and 5
under 35 U.S.C. § 103(a) as being obvious over the combination of
McMurrey and Mueller.

REVERSED

alw

ANSEL M. SCHWARTZ
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