The Procter & Gamble Company

Patent Trials and Appeals Board

Jun 12, 2020

2019006366 (P.T.A.B. Jun. 12, 2020)

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.
14/331,420 07/15/2014 Gordon Gerald GUAY 13001 2774
27752 7590 06/12/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
OLIVER, BRADLEY S
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GORDON GERALD GUAY, JOSEPH MICHAEL ZUKOWSKI,
LAURIE ELLEN BREYFOGLE, AMANDA LEIGH NEWMAN,
DAVID EDWARD WILSON, and JAMES FRANKLIN JOA

Appeal 2019-006366
Application 14/331,420
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
BRETT C. MARTIN, Administrative Patent Judges.

KERINS, 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, 2, 4, 12, 13, and 15. Pending claims
3, 5–8, 11, 14, and 16–30 are withdrawn from consideration. Claims 9 and
10 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies The Proctor & Gamble Company, as the
real party in interest. Appeal Br. 1.
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Application 14/331,420

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to an applicator for applying a skin
smoothing composition. Claim 1 is illustrative, and is reproduced below:
1. An applicator for applying a skin smoothing composition
comprising a head and a body, the head comprising an
underlayment which is a gradient foam and an outer layer, said
outer layer having at least a portion of its surface coated with
flock fibers, wherein the flock fibers have a Denier from about
10.0 dtex to about 0.1 dtex and a flock fiber length of from about
5.0mm to about 0.3mm.

THE REJECTIONS
The Examiner rejects:
(i) claims 1 and 4 under 35 U.S.C. § 103 as being unpatentable over
Gueret (US 2007/0277844 A1, published Dec. 6, 2007) in view of Guay (US
2009/0180826 A1, published Jul. 16, 2009);
(ii) claim 2 under 35 U.S.C. § 103 as being unpatentable over Gueret
in view of Guay and Roeder (US 2007/0186950 A1, published Aug. 16,
2007);
(iii) claims 12 and 13 under 35 U.S.C. § 103 as being unpatentable
over Gueret in view of Guay and Kligman (EP 0 244 859 A2, published
Nov. 11, 1987); and
(iv) claim 15 under 35 U.S.C. § 103 as being unpatentable over
Gueret in view of Guay, Kligman, and Roeder.
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ANALYSIS
Claims 1 and 4--Unpatentability over Gueret and Guay
The Examiner finds that Gueret discloses an applicator having all
limitations appearing in claim 1, with the exception of the underlayment
portion of the head in Gueret being a gradient foam. Final Act. 3. The
Examiner identifies Guay as disclosing a gradient foam 20 that acts as a
reservoir that provides a precise and consistent delivery of fluid to an outer
layer, and concludes that it would have been obvious to form the
underlayment of Gueret of a gradient foam, to provide these same benefits to
Gueret. Id., citing Guay ¶ 60.
Appellant first directs our attention to the fact that claim 1 requires the
outer layer of the head of the applicator to have a portion of its surface
coated with flock fibers, whereas the Roeder disclosure, cited in rejecting
other claims on appeal, teaches that flocked applicators may not uniformly
apply or distribute cosmetic compositions. Appeal Br. 5. Appellant argues
that because Roeder “avoids” flocked applicators, whereas the claimed
applicator is flocked, “[t]his is the antithesis of obviousness.” Id. Appellant
additionally maintains that its reported results of obtaining uniformly thick
application of a composition with its applicator is “surprising and
unexpected in view of the teachings of Roeder, which supports
unobviousness.” Id.
The Examiner responds by pointing out that the Gueret reference,
which, unlike Roeder, is cited in rejecting claim 1, teaches that flocking
improves the evenness of the application of a cosmetic. Ans. 7. Indeed,
Gueret, which is essentially a contemporaneous disclosure to Roeder,
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acknowledges that certain known applicators that employ flocking have
exhibited problems in delivering the cosmetic composition to the skin.
Gueret ¶¶ 5, 6. Gueret indicates that the applicator that is the subject of that
reference meets a need for “an application device . . . capable of depositing
the desired quantity of product onto the skin,” and does so using a different
configuration of a surface of a foam covered by a flock coating. Id. ¶¶ 7, 8.
As such, a person of ordinary skill in the art considering the teachings
of Gueret and Roeder would be apprised that the use of flocking fibers was
understood to potentially present issues relative to application of a cosmetic
composition, and that, whereas Roeder proceeded in a direction different
from using flocking fibers, Gueret took an alternative approach, that of
improving the performance of an applicator that continued to use flocking
fibers. Accordingly, Roeder’s avoidance of using a flocked-fiber applicator
is of no great moment in determining the patentability of the present
invention in view of the teachings of Gueret.
Appellant argues that neither Gueret nor Guay, nor any of the
additional references relied on, evidence an appreciation of so-called
“special problems associated with the common ‘finger’ mode of applying
silicate wrinkle smoothing compositions,” and that “there is no appreciation
that the problems are associated with the lack of uniformity/thickness of the
finger-applied wrinkle smoothers.” Appeal Br. 7. Appellant, noting that a
“patentable invention may lie in the discovery of the source of a problem,”
asserts that “ignoring the problem recognition element injects an improper
obvious-to-try consideration.” Id.
We appreciate that, in certain situations with certain evidentiary
records, recognition of a particular problem might ultimately carry the day
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on the question of nonobviousness, but that is not the case here. The
Examiner articulates a reason, supported by rational underpinnings, as to
why a person of ordinary skill would have found it obvious to modify the
Gueret applicator to include a gradient foam underlayment, thereby allowing
for precise, continuous delivery of a fluid from a dispensing reservoir,
resulting in improving the performance of the Gueret applicator. Final Act.
3. Even if, as Appellant asserts, this proposed modification does not address
the specific problem faced by Appellant, it is not necessary that the prior art
suggest the combination to achieve the same advantage or result discovered
by Appellant. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Because
there is no requirement that the prior art address the same problem as the
claimed invention, the Examiner’s reason to combine is appropriate and is
not seen in any way as being founded on an “obvious to try” rationale.
Appellant’s argument to the effect that the rejection amounts to
selectively picking and choosing elements or concepts from the references
so as to arrive at the claimed invention, using the claims on appeal as a
guide, is not persuasive. The Examiner presents a cogent reason for making
the proposed modification, and Appellant does not appear to take issue with
that reason.
Appellant additionally argues that Guay teaches away from the
proposed modification to Gueret, in that it specifically teaches away from
using a flocked outer surface or any other kind of outer surface. Appeal Br.
9–10. Appellant relies on portions of Guay that discuss that an applicator
surface area of the gradient foam of Guay be open to the environment. Id. at
9, citing Guay ¶¶ 16, 20, 57. Appellant posits that a person of ordinary skill
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in the art, particularly in view of Roeder, would not have chosen a flocked
covering for the Guay applicator. Id. at 10.
As to the latter point, the rejection proposed by the Examiner does not
involve a proposal to modify the Guay applicator, but instead to use a
gradient foam as disclosed by Guay as a reservoir in the Gueret applicator.
The relative impact of the Roeder disclosure on the Gueret disclosure and
the combination of Guay with Gueret is addressed above. The argument
fails to apprise us of error in the rejection.
As to whether Guay teaches away from the proposed combination due
to its disclosure that its preferred embodiment(s) are open or exposed to the
environment, as contrasted with having a flocked applicator surface in the
proposed combination, we note initially that the principle involved is that a
reference may be said to teach away from a combination when it criticizes,
discredits or otherwise discourages the proposed modification. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).
The Examiner points out that Guay’s teaching of using a gradient
foam as an applicator does not constitute a teaching away from the
alternative use as a reservoir, particularly in view of the disclosure in Guay
that, indeed, the gradient foam could be used as a reservoir. Ans. 9, citing
Guay ¶ 60. Appellant has thus not shown how Guay criticizes, discredits or
otherwise discourages the use of its gradient foam in the manner proposed
by the Examiner. In re Fulton, 391 F.3d at 1201; In re Gurley, 27 F.3d at
553.
Appellant’s arguments do not apprise us of error in the Examiner’s
rejection of claim 1 as having been obvious over Gueret and Guay. The
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rejection is therefore sustained. Appellant does not argue separately for the
patentability of dependent claim 4, and the rejection is also sustained relative
to claim 4.

Claim 2--Unpatentability over Gueret, Guay, and Roeder
Appellant argues that Roeder “teaches against flocking,” and
therefore, “taken together, the purported combination of
Gueret/Guay/Roeder actually teaches away from the present invention and
cannot support a § 103 rejection.” Appeal Br. 10. Appellant acknowledges
that Roeder discloses applicator softness levels cited by the Examiner as
meeting the additional limitations of claim 2, but assigns error to a failure to
consider all of the teachings of Roeder, including the identified problems
with using flocks in an applicator. Reply Br. 6.
As noted in the analysis directed to the rejection of claim 1, both
Roeder and Gueret identify problems or concerns with the use of flocking on
cosmetic applicators. Appellant points out, in the above arguments, that
Roeder’s solution is to effectively avoid the use of flocking. Gueret,
however, provides improvements to the foam substrate underlying the
flocking so as to obviate such problems in an applicator that employs
flocking. These amount to two different approaches to dealing with known
problems with the use of flocking, and, absent evidence that the Gueret
approach does not overcome the problems, the two are appropriately viewed
by persons of ordinary skill in the art as viable solutions.
Given that the rejection is based on the Gueret approach, and relies on
Roeder only for its disclosure of specific Shore A values of
hardness/softness for the applicator, we do not find error in the approach
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taken by the Examiner in concluding that claim 2 would have been obvious
over Gueret, Guay, and Roeder. The rejection of claim 2 is sustained.

Claims 12 and 13--Unpatentability over Gueret, Guay, and Kligman
The Examiner notes that Gueret and Guay do not specifically disclose
the use of a skin smoothing composition comprising sodium silicate,
polyvalent silicate, and water. Final Act. 5. The Examiner relies on
Kligman as disclosing such a composition, and concludes that it would have
been obvious to use that composition in the Gueret applicator, as modified
by Guay, as a matter of merely using a known cosmetic liquid with a known
cosmetic liquid applicator. Id.
Appellant argues that its “above remarks apply equally to this ground
of rejection,” and objects to a purported piecemeal reconstruction of the
invention. Appeal Br. 11. We understand the “above remarks” to be the
arguments advanced with respect to claim 1, from which claims 12 and 13
depend.2
We have already addressed Appellant’s arguments in the analysis
directed to claim 1, and again do not find that the arguments apprise us of
error in the rejection. The rejection of claims 12 and 13 is therefore
sustained.

2 Claim 12 recites “[a]n applicator according to Claim 1,” which ordinarily
denotes that it is intended to depend from claim 1 and incorporate by
reference each limitation of claim 1. However, the limitation appearing in
claim 1 relative to the Denier of the flock fibers is present in claim 13, which
depends from claim 12. Therefore, claim 12 may not truly depend from
claim 1, notwithstanding its reference to claim 1. Because this issue does
not affect the outcome in this appeal, we treat claim 12 as depending from
claim 1, and including all of the limitations in claim 1 as well as in claim 12.
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Claim 15--Unpatentability over Gueret, Guay, Kligman, and Roeder
Appellant repeats the arguments advanced with respect to claim 12 in
contesting the rejection of claim 15. Appeal Br. 12. For the reasons noted
above, the rejection is sustained.

DECISION
The rejections of claims 1, 2, 4, 12, 13, and 15 as being unpatentable
are affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4 103 Gueret, Guay 1, 4
2 103 Gueret, Guay,
Roeder
2
12, 13 103 Gueret, Guay,
Kligman
12, 13
15 103 Gueret, Guay,
Kligman, Roeder
15
Overall
Outcome
1, 2, 4,
12, 13, 15

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