Yannick Hermouet et al.

Patent Trials and Appeals Board

Aug 26, 2019

12995265 - (D) (P.T.A.B. Aug. 26, 2019)

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.
12/995,265 11/30/2010 Yannick Hermouet 0108353.0582040 9108
26874 7590 08/26/2019
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/26/2019 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YANNICK HERMOUET and NOEL AUTIE1
__________

Appeal 2019-001481
Application 12/995,265
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1, 2, and 4–11, which constitute all the
claims pending in this application. App. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the
Examiner’s rejections and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

1 “The real party in interest is Parfums Christian Dior, the assignee of the
entire right and interest in the present application.” App. Br. 3. We refer to
the appealing party as “Appellant.”
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the components of a mascara
brush, mascara brushes, and mascara application assemblies.” Spec. 1:6–8.
Claim 1 is the sole independent claim, is representative of the claims on
appeal, and is reproduced below.
1. Mascara brush component, wherein the mascara brush
component comprises:
a body that comprises a cylindrical sleeve that extends
along a longitudinal direction, and that comprises an outer
surface,
at least one row of at least ten application members that
each extend between a first end connected to the body and a
free second end at a distance from the body, along a second
direction,
wherein the application members of said row are
comprised substantially in an application plane,
wherein the longitudinal direction forms with the
application plane a non-zero angle between 2° and 30°, and
whereby the second direction of at least one application
member of said row is a non-radial line, so that the second
direction of the at least one application member and the
longitudinal direction are skew lines.

REFERENCES
Gueret ’658 US 2002/0023658 A1 Feb. 28, 2002
Gueret ’020 US 2008/0023020 A1 Jan. 31, 2008
Marciniak-Davoult et al. US 2008/0245382 A1 Oct. 9, 2008

THE REJECTIONS ON APPEAL
Claims 1, 2, 4–7, and 9–11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Marciniak-Davoult and Gueret ’020. Final Act. 2.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Marciniak-Davoult, Gueret ’020, and Gueret ’658. Final Act. 5.
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ANALYSIS
The rejection of claims 1, 2, 4–7, and 9–11
as being obvious over Marciniak-Davoult and Gueret ’020
Appellant argues claims 1, 2, 4–7, and 9–11 together. See App. Br. 9–
16. We select claim 1 for review, with claims 2, 4–7, and 9–11 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Marciniak-Davoult discloses a mascara brush
component comprising the various features recited including the disclosure
of “the second direction of at least one application member of the row is a
non-radial line so that the second direction of the at least one application
member and the longitudinal direction are skew lines (see fig. 4).” Final
Act. 3. However, the Examiner seems to contradict this statement by
acknowledging that “Marciniak-Davoult []fails to show the implantation
angle of an application member being [such] that the second direction of at
least one application member of the row and the longitudinal direction are
skew lines.” Final Act. 3. Regardless, the Examiner relies on Gueret ’020
for teaching an implantation angle of the application member “so that the
second direction of at least one application member of the row and the
longitudinal direction are skew lines (see fig. 15).” Final Act. 3.
Appellant takes issue with the Examiner’s reliance on Marciniak-
Davoult for disclosing the recited “non-radial” orientation of the application
members that results in the recited “skew” with the longitudinal direction.
See App. Br. 11–16. Addressing Marciniak-Davoult, Appellant states, “all
of the application members of a row extend radially to the longitudinal
axis of the body of the mascara brush.” App. Br. 15. Thus, “none of the
second directions is . . . skew . . . with the longitudinal direction.” App.
Br. 16. Thereafter, Appellant states, “[t]he Gueret ’658 reference [(not the
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cited Gueret ’020 reference)] does not include any additional teachings
which supplement the limitations of the Marciniak-Davoult and Gueret
references, discussed above.” App. Br. 16. In other words, there is no
discussion of the Gueret ’020 reference in Appellant’s Appeal Brief, and as
such, there is no explanation as to why Gueret ’020 (and particularly figure
15 thereof) fails to disclose the recited non-radial second direction that is
“skew” to the brush’s longitudinal direction. See Final Act. 3.
Perhaps in an effort to resolve the dilemma of whether or not
Marciniak-Davoult discloses a non-radial second direction so that the recited
skew is disclosed, the Examiner subsequently references Figures 19–21 of
Marciniak-Davoult which illustrate further embodiments that disclose non-
radially oriented application members. See Ans. 7. The Examiner also
identifies where Marciniak-Davoult states, “[t]he teeth of each row are
therefore inclined relative to the direction that is radial to the axis 474.”
Ans. 7 (referencing Marciniak-Davoult ¶ 89).
Appellant replies that “the description of the embodiment of FIGS. 20
and 21 refers to [embodiments] in which the teeth are oriented radially (see
e.g. paragraph [0067]).” Reply Br. 4. However, Appellant does not address
the Figure 19 embodiment of Marciniak-Davoult replicated and annotated by
the Examiner (see Ans. 7), and further, Appellant does not address the non-
radial orientation of application members 20, 30 illustrated in Figure 15 of
Gueret ’020 (see Final Act. 3). Accordingly, and based on the record
presented, we are not persuaded by Appellant’s arguments.
In the Reply Brief, Appellant also argues that “[t]he Office improperly
refuses to acknowledge that Marciniak-Davoult fails to disclose application
members comprised substantially within an application plane, wherein the
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longitudinal direction forms with the application plane a non-zero angle
between 2° and 30°.” Reply Br. 2; see also id. at 3 (arguing that the
embodiments in Figures 4, 19, and 21 “fail to show the teeth [are] in an
application plane” because “Marciniak-Davoult teaches that the teeth in each
embodiment are helical.”), 4 (citing Marciniak-Davoult ¶¶ 88, 90).
We note that this argument was not raised in the Appeal Brief, and is
not responsive to any argument raised in the Examiner’s Answer.2 As stated
in 37 C.F.R. § 41.41(b)(2):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
Emphasis added. Accordingly, we will not consider this untimely argument
in the present appeal. However, we note that Appellant’s contention is
unpersuasive, even if it were timely made.3

2 Our reviewing court has provided guidance that 37 C.F.R. 41.37 requires
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011).
3 Claim 1 recites “at least one row of at least ten application members that
each extend between a first end connected to the body and a free second end
at a distance from the body, along a second direction” and “the application
members of said row are comprised substantially in an application plane.”
Claims App. (emphasis added). Marciniak-Davoult’s Figure 4 illustrates 28
application members in a row that are spread out to form a helix having an
arc of only 26.5 degrees. See Marciniak-Davoult ¶ 81. Thus, any successive
ten of Marciniak-Davoult’s application members would form a row whose
helix angle is even smaller, i.e., is “substantially in an application plane.”
This arrangement would also satisfy the requirement that the longitudinal
direction and the application plane form “a non-zero angle between 2° and
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In the Reply Brief, Appellant further argues that the claimed
limitation concerning the non-zero angle between the longitudinal direction
and the application plane provides unexpected results to obtain a greater
curving of the eyelashes and a wider opening of the eye. Reply Br. 5 (citing
paragraphs on page 11 of the Specification).
Again, this argument is untimely as it was not raised in the Appeal
Brief, and does not appear to be responsive to any argument raised in the
Examiner’s Answer. See 37 C.F.R. § 41.41(b)(2). However, we note that
Appellant’s contention is unpersuasive, even if it was timely presented,
because such “unexpected results” do not outweigh the Examiner’s strong
prima facie case of obviousness.4
We also note Appellant’s statement that “the Office presented a new
ground of rejection in the Examiner’s Answer by referring for the first time
to the embodiments shown in FIGS. 19 and 21 of Marciniak-Davoult.”
Reply Br. 4–5. To the extent the Examiner’s Answer constitutes a new

30°,” as claimed. Thus, the Examiner’s finding that Figure 4 of Marciniak-
Davoult discloses this limitation is reasonable, and Appellant’s argument
would not have been persuasive, even if timely made.
4 Our reviewing court has instructed us that “secondary considerations of
nonobviousness . . . simply cannot overcome a strong prima facie case of
obviousness.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir.
2010). Here, the Specification merely discloses that “[c]omparative tests
have been carried out . . .” and that “[u]nexpectedly, these tests have made it
possible to demonstrate that the brush according to the embodiment
presented herein makes it possible to obtain a greater curving of the
eyelashes than the comparative sample.” Spec. 11:4–12. Without providing
evidence, i.e., data from the comparative tests, we consider Appellant’s
arguments relating to secondary considerations of nonobviousness
unpersuasive, even if having been timely made.
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ground of rejection, Appellant could have filed a petition to the Director
under 37 C.F.R. § 1.181. See 37 C.F.R. § 41.40(a). In other words, that
issue is a petitionable matter rather than an appealable matter.
For these reasons, we sustain the Examiner’s decision rejecting claims
1, 2, 4–7, and 9–11. Furthermore, because our reasoning may differ from
the Examiner’s reasoning, we designate our affirmance as a new ground of
rejection under 37 C.F.R. § 41.50(b), to provide Appellant with a fair
opportunity to respond.
The rejection of claim 8
as being obvious over Marciniak-Davoult, Gueret ’020, and Gueret ’658
Appellant contends that “[s]ince claim 8 ultimately depends from
claim 1, and since the combined art of record fails to render independent
claim 1 obvious by failing to teach or suggest all of the limitations of claim
1, the combined art of record also fails to render claim 8 obvious.” App. Br.
17.
Because we find no deficiencies in the Examiner’s rejection of
independent claim 1 as being obvious over Marciniak-Davoult and Gueret
’020 for the reasons discussed above, we likewise sustain the Examiner’s
rejection of claim 8 as being obvious over Marciniak-Davoult, Gueret ’020,
and Gueret ’658. Because this rejection relies on the above discussions
concerning claim 1, we also designate our affirmance as a new ground of
rejection under 37 C.F.R. § 41.50(b).
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DECISION
The Examiner’s rejections of claims 1, 2, and 4–11 under 35 U.S.C.
§ 103 are affirmed and we also designate the rejection of these claims as
NEW GROUNDS OF REJECTION.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No to period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)