Ex Parte WernerDownload PDFBoard of Patent Appeals and InterferencesAug 11, 200910922049 (B.P.A.I. Aug. 11, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MELANIE R. WERNER __________ Appeal 2009-007460 Application 10/922,049 Technology Center 3700 __________ Decided: August 11, 2009 __________ 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; Appeal 2009-007460 Application 10/922,049 3 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? Appeal 2009-007460 Application 10/922,049 4 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). Appeal 2009-007460 Application 10/922,049 5 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 Appeal 2009-007460 Application 10/922,049 6 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 Appeal 2009-007460 Application 10/922,049 7 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 SUITE 304 201 N. CRAIG STREET PITTSBURGH, PA 15312 Copy with citationCopy as parenthetical citation