REA.DEEMING BEAUTY, INC. DBA BEAUTYBLENDER

Patent Trials and Appeals Board

Apr 16, 2021

2020005264 (P.T.A.B. Apr. 16, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
16/271,756 02/08/2019 Rea Ann Silva BEAU-TY1803 2084
24507 7590 04/16/2021
Concept IP LLP
11601 Wilshire Blvd.
Fifth Floor
Los Angeles, CA 90025
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
04/16/2021 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):
eofficeaction@appcoll.com
patents@brooksacordia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte REA ANN SILVA

Appeal 2020-005264
Application 16/271,756
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 14–20, which constitute all
the claims pending in this application.2 See Final Act. 1 (Office Action
Summary). We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Rea.deeming Beauty, Inc. dba beautyblender.” Appeal Br. 2.
2 “Claims 11–13 are withdrawn from further consideration by the examiner .
. . as being drawn to a non-elected invention.” Non-Final Act. 4 (dated April
22, 2019).
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We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relate[s] generally to cosmetic tools,
and more particularly to cosmetic holders.” Spec. 1:13–14. Apparatus
claims 1 and 16 are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1 A container comprising:
a first portion comprising an open end, a closed end, and
a middle section, wherein the open end is disposed distal from
the closed end, wherein the closed end has a rounded shape,
wherein the middle section is disposed between the open end
and the closed end, and wherein the middle section has a
substantially constant cross-section;
one or more first portion apertures disposed in the first
portion proximate the closed end to allow airflow into the
container;
a second portion comprising an open end, a closed end,
and a middle section, wherein the open end is disposed distal
from the closed end, wherein the closed end has a rounded
shape, wherein the middle section is disposed between the open
end and the closed end, and wherein the middle section has a
substantially constant cross-section; and
one or more second portion apertures disposed in the
second portion proximate the closed end to allow airflow into
the container;
wherein an outer diameter of the open end of the second
portion is substantially the same as an inner diameter of the
open end of the first portion;
wherein a portion of an outer surface of the middle
section of the second portion is received by a portion of an
inner surface of the middle section of the first portion;
wherein the first portion is detachably attached to the
second portion; and
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wherein the first portion and the second portion are
configured to be detachably attached thereby adjusting the
overall height based on the outer surface of the middle section
of the second portion being slidably received by the inner
surface of the middle section of the first portion thereby
changing an interior volume of the container.
EVIDENCE
Name Reference Date
Hall US 2015/0335132 A1 Nov. 26, 2015
Palmer US 2017/0102183 A1 Apr. 13, 2017
REJECTIONS
Claims 1–5, 8–10, and 14–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Palmer.3
Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable
over Palmer and Hall.
ANALYSIS
The rejection of claims 1–5, 8–10, and 14–20
as unpatentable over Palmer
Appellant argues independent claims 1 and 16 together, and states that
dependent claims 2–5, 8–10, 14, 15, and 17–20 are allowable due to
dependency from one of these claims. See Appeal Br. 6–20. We select
claim 1 for review, with the remaining claims standing or falling with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).

3 The Examiner also lists claim 7 as being rejected, but there is no discussion
of the rejection of claim 7 in the body of this rejection over Palmer alone.
See Final Act. 2–11. We thus understand the inclusion of claim 7 in this
rejection as being in error.
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Claim 1 recites first and second portions of a container, each portion
having an open end, a closed end, and a middle section. Claim 1 specifies
that, with respect to the recited middle sections, “the middle section has a
substantially constant cross-section.” Claim 1 further recites that the first
and second portions are “slidably received” within each other “thereby
changing an interior volume of the container.”
The Examiner primarily relies on Figures 1–5 of Palmer (and
particularly Figure 4 thereof) for teaching many of the recited limitations.
See Final Act. 3–5. However, the Examiner acknowledges that the
embodiment of these figures “does not disclose” the limitation that the one
portion is slidably received within the other. Final Act. 5. For this
limitation, the Examiner relies on the embodiment depicted in Figures 25A–
25C of Palmer. See Final Act. 5; see also Ans. 12, 14. The Examiner
reasons that it would have been obvious “to modify embodiment of figure 1–
5” with “an alternative attachment arrangement between the first and second
portions of the container” as depicted in Figures 25A–25C. Final Act. 5; see
also Ans. 12 (“Palmer is modified with the embodiment of figure 25a–25c,
changing the method of attachment”), 14 (“[a]fter the hinge attachment for
the container disclose[d] in embodiment figure 4 is modified with the
friction fit attachment”). The Examiner states that after “changing the
method of attachment . . . from a hinge connection to a friction fit
connection, . . . the limitation of the second portion [being] slidably received
into the first portion would be met.” Ans. 12. The Examiner further states
that in doing so, “the overall height and interior volume of the container
would be changed” as recited. Final Act. 6; see also Ans. 13.
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Regarding the limitation that the middle portions have “a substantially
constant cross-section,” the Examiner notes that Palmer specifically teaches
that “[o]ther shapes than egg-shaped” may be considered. Final Act. 6
(referencing Palmer ¶ 61). In accordance with this teaching, the Examiner
states that “the embodiment of figure 4 of Palmer is modified by the
embodiment of figures 25a–25c.” Ans. 12. Accordingly, as per the
Examiner, after “changing the method of attachment . . . from a hinge
connection to a friction fit connection, then the limitation of the middle
portion for each of the first and second portions having a substantially
constant cross-section . . . would be met.” Ans. 12; see also Final Act. 6.
The Examiner further states that doing so is “to ensure air circulation of the
sponge/blender placed within the container.” Final Act. 6.
Appellant presents eight reasons ((i)–(viii)) why the Examiner’s
rejection “has failed to make a prima facie case of obviousness.” Appeal Br.
6; see also Appeal Br. 7–18. The first four (i.e., (i)–(iv)) all address
distinctions regarding the Figure 4 embodiment of Palmer, and do not
encompass any discussion of this embodiment modified in view of the
Figure 25A–25C embodiment, as repeatedly expressed by the Examiner.
See Appeal Br. 7–12; Final Act. 5, 6; Ans. 12–14. This is similar to arguing
only one reference when the Examiner relies upon a combination of
references to reach the conclusion of obviousness. Accordingly, Appellant’s
reasons (i)–(iv), even if accurate regarding the Figure 4 embodiment, are not
persuasive of Examiner error because Appellant is not responding to the
Examiner’s rejection. As noted repeatedly above, the Examiner states, “the
embodiment of figure 4 of Palmer is modified by the embodiment of figures
25a–25c.” Ans. 12, 13; see also Final Act. 5, 6.
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Appellant’s reason (v) contends that “the Examiner is using clear
hindsight to modify the prior art” with Appellant focusing on the recited
container “having an adjustable height and adjustable internal volume.”
Appeal Br. 12–13. According to the Examiner, this requirement of claim 1
is disclosed because “[o]nce Palmer is modified by changing the hinge
attachment for friction attachment” (i.e., one sliding within the other) then,
during attachment of the two portions, “the overall height and interior
volume of the container would be changed.” Final Act. 6; see also Ans. 13
(“from the time the second portion is partially attached . . . to the time the
second portion is completely attached”). As noted above, Figures 25A–25C
depict a sliding friction fit interconnection between the two components.
Further, paragraph 95 of Palmer states that the two components employing
such an interconnect can be separated from or joined to each other. These
disclosures support the Examiner’s position that during the separation or
attachment process “the overall height and interior volume of the container
would be changed.” Final Act. 6. Such explicit disclosures in Palmer also
undermine Appellant’s contention that the Examiner, instead, relied on
hindsight for such teachings. See Appeal Br. 12–14. Accordingly,
Appellant’s contention that the Examiner employed hindsight to modify the
prior art is not persuasive.
Appellant also describes the Examiner’s reasoning as “vague.”
Appeal Br. 13; see also id. at 14 (“the Palmer reference does not provide any
motivation or reason for making such modifications”). However, Appellant
does not explain how the Examiner’s conclusion was premised upon
incorrect or faulty reasoning, such reasoning being the employment of “an
alternative attachment arrangement” of the type shown in Figures 25A–25C
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of Palmer, and “to ensure air circulation” of the container’s contents. Final
Act. 5, 6. To be clear, the modification of Palmer’s Figure 4 is to the
manner of attachment, and the Examiner’s modified embodiment would not
hinder, but rather still ensure, air circulation since air circulation also occurs
with respect to the Figure 25A–25C embodiment. Furthermore, and as
already discussed, Palmer explicitly teaches that “[o]ther shapes” are
suitable and that such shapes do not need to match the shape of the contents.
Palmer ¶ 61. Accordingly, Appellant’s contention regarding the “vague”
nature of the Examiner’s reasoning is not persuasive of Examiner error.
Appellant’s reasons (vi) and (vii) relate to the adjustable height and
adjustable internal volume aspects of claim 1, as well as stating that
modifying Palmer’s shape would not modify its function. See Appeal Br.
15, 16. Regarding the former, Appellant again addresses only the Figure 4
embodiment depicted in Palmer, and does not address the Examiner’s
modification of this embodiment as discussed above. Regarding the latter,
the Examiner is only modifying the manner of attachment of the two
portions depicted in Figures 1–5 of Palmer. See Final Act. 5. Claim 1
explicitly states that the change in the interior volume is achieved as a result
of the second portion being slidably received in the first portion.
Consequently, the proposed modification, as an “alternative attachment
arrangement” has the same structure or configuration as Appellant’s
structure, thereby allowing for changing an interior volume. Final Act. 5.
Appellant also addresses a lack of motivation “to provide an
adjustable container, as claimed.” Appeal Br. 16. However, Appellant’s
repeated contention regarding a lack of motivation has been discussed above
and is, likewise, not persuasive here.
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Regarding reason (viii), Appellant, for the first time, addresses the
Figure 25A–25C embodiment. See Appeal Br. 16–18. Appellant addresses
this embodiment in regard to claim 1’s requirement of a container being
adjustable in height as well as in interior volume. See Appeal Br. 16.
Appellant argues that this alternative attachment arrangement fails to
disclose this requirement because “the container and base of Palmer are
either attached or detached,” and hence there would be no adjustability
between such positions. Appeal Br. 16. As noted above, however, the
Examiner stated that Palmer’s modified embodiment involves the sliding of
the one portion within the other (i.e., “friction fit”). Ans. 13; see also
Palmer Figs. 25A–25C. The Examiner concludes that such a “container
would have a[n] interior changing volume” and that this would occur “from
the time the second portion is partially attached or slid[] into the first portion
to the time the second portion is completely attached or inserted into the first
portion.” Ans. 13; see also id. at 15.
Appellant, to the contrary, contends “that Palmer only discloses that
the cover may be attached . . . or removed.” Appeal Br. 17 (referencing
Palmer ¶ 95). However, as noted above, the modified version of Palmer has
sliding structure identical to Appellant’s structure. Therefore, Appellant
does not explain how Palmer’s modified structure fails to function in an
identical manner to that claimed.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 1 (and hence also claims 2–5, 8–10,
14–20) as being obvious in view of Palmer. We sustain the rejection.
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The rejection of claims 6 and 7
as unpatentable over Palmer and Hall
Appellant does not present any argument with respect to these two
dependent claims other than to contend that “[d]ependent claims are
allowable if the independent claims from which they depend are patentable.”
Appeal Br. 20. Claims 6 and 7 both depend, indirectly, from claim 1. The
rejection of claim 1, as discussed above, has been sustained. In view of this,
we likewise sustain the Examiner’s rejection of claims 6 and 7 as being
obvious over Palmer and Hall.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 8–10,
14–20
103 Palmer 1–5, 8–10,
14–20

6, 7 103 Palmer, Hall 6, 7
Overall
Outcome
1–10, 14–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(1)(iv).
AFFIRMED