Ex Parte ARNAUD et al

Patent Trial and Appeal Board

Mar 9, 2016

12370217 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/370,217 02/12/2009 Pascal ARNAUD
22850 7590 03/11/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
337412USO 5298
EXAMINER
MYERS, CARLA J
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
03/11/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL ARNAUD, SOPHIE BEAUMARD,
VERONIQUE ROULIER, NICOLAS DURU,
MARION PRUNIER, and PAS CAL TIERCE 1
Appeal2013-006915
Application 12/370,217
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a cosmetic assembly comprising a spraying device. The Examiner rejects
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is L'Oreal S.A., Paris,
France. (App. Br. 1.)
Appeal2013-006915
Application 12/370,217
STATEMENT OF THE CASE
Claims 1-3, 5, 7, and 9-19 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief.
The Examiner rejects claims 1, 5, 7, 9, 10, and 13-18 under
35 U.S.C. §103(a) as being unpatentable over Tranchant, 2 Dauga, 3
Ounanian, 4 and Lechler 5 (see Final Act. 4--14). The Examiner also rejects
claims 2, 3, 11, 12, and 19 under 35 U.S.C. 103(a) over the same four core
references in conjunction with additional references. Specifically, the
rejection of claims 2 and 3 includes Duru,6 (see Final Act. 14--16); the
rejection of claims 11 and 12 includes Nichols7 (see Final Act. 16-17); and
the rejection of claim 19 includes Berger8 (see Final Act. 17-19).
Appellants request review of the Examiner's rejection of claims 1-3,
5, 7 and 9-19 under 35 U.S.C. § 103(a) over Tranchant in view of Dauga,
Ounanian, and Lechler. (See App. Br. 3.)
The Examiner finds that Tranchant discloses a cosmetic assembly for
spraying liquid cosmetic compositions that includes a sonotrode that "has a
longitudinal axis x coupled to the piezoelectric element and that the
sonotrode is fed with the composition via a hollow tube" (Ans. 5). The
2 Tranchant et al., WO 2007/104859 Al, published Sept. 20, 2007. The
Examiner relies upon Tranchant et al., US 2009/0065600 Al, published
Mar. 12, 2009 for the translation of the WO document. All further citations
to "Tranchant" will reference pages and paragraphs in the US published
application.
3 Dauga et al., US 7,648,364 B2, issued Jan. 19, 2010.
4 Ounanian et al., US 5,320,834, issued June 14, 1994.
5 Lechler, GB 2 126 923 A, published Sept 13, 1982.
6 Duru, WO 2006/125677 Al, published Nov. 30, 2006.
7 Nichols et al., US 2002/0197221 Al, published Dec. 26, 2002.
8 Berger et al., US 2007/0176017 Al, published Aug. 2, 2007.
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Application 12/370,217
Examiner acknowledges that "Tranchant does not teach that the composition
contained in the reservoir is at least 10% by weight water and contains at
least one water-soluble coloring agent." (Ans. 6.) The Examiner looks to
Dauga, Ounanian, and Lechler for supplying these limitations. (See Ans. 4--
14.) With respect to the spraying device, the Examiner's finds that Trachant
renders obvious "a flange [having a] diameter (D7) and a flange thickness
( e ), wherein a ratio of the flange diameter (D7) to the flange thickness ( e) is
between 12 and 32" as claimed (see Ans. 10, 11, 13, 21, 23, and 25).
Appellants' position is that the combination of references does not
render the claims obvious, and even if they did, the finding of obviousness
has been "rebutted by a showing of an excellent spray uniformity property."
(App. Br. 4.)
The issue is: Has the Examiner set forth a prima facie case of
obviousness and, if so, have Appellants provided sufficient evidence of
unexpected results based on the diameter to flange thickness ratio as
claimed?
Findings of Fact
We adopt the Examiner's findings and analysis concerning the scope
and content of the prior art. The following facts are repeated for reference
convemence.
FF 1. Tranchant teaches "spray devices that have a piezoelectric element,
and to the use of such devices in cosmetology and perfumery."
(Tranchant 1: 1.)
FF2. Tranchant teaches a sonotrode spray device with "the ratio D4/e3 of
the diameter of the horn mouth to the thickness of the horn mouth is
preferably smaller than 5." (Tranchant 3: 62.)
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Application 12/370,217
FF3. Figure 3 of Tranchant, reproduced below shows a piezoelectric
element and a sonotrode of the spray device.
FtG,3.
"The horn mouth 19 [as shown in Fig. 3, above,] is in the form of a
disk with an outside diameter D4 of less than 8 mm (for example of
the order of 5 mm) and a thickness e3 of less than 2 mm (for example
of less than I mm)." (Tranchant 3: 59.)
FF4. Fig. 10 or the Specification, reproduced below, shows a longitudinal
vievv of the sonotrode.
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Application 12/370,217
"The diameter D1 [of Fig. 10 above] of the end flange is, for example,
between 7 and 13 mm." (Spec. 31: 1-2.) "[T]he ratio D1/e is between
70/6 and 130/4." (Spec. 31: 14--15.)
Principle of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
"[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Analysis
We adopt the Examiner's reasoning (see Grounds of Rejection, Ans.
4--19), and agree that the Examiner properly found Appellants' arguments
unpersuasive (see Response to Argument, Ans. 19-26). We address
Appellants' arguments below.
Appellants contend that "Tranchant describes that the ratio of the
flange diameter (D4) to the flange thickness ( e3) is less than 5, which is
clearly outside the claimed range of from 12 to 32." (App. Br. 4; see also
Reply Br. 1-2.)
We are not persuaded. [I]t is well settled that "in a section 103
inquiry, 'the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered."' Merck & Co. Inc. v. Biocraft
Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Mills, 470 F.2d
649, 651(CCPA1972) ("All the disclosures in a reference must be
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Appeal2013-006915
Application 12/370,217
evaluated, including nonpreferred embodiments, and a reference is not
limited to the disclosure of specific working examples." (Citations omitted).)
Here, the Examiner explains that "the teachings of Tranchant are not
limited to this preferred embodiment. Tranchant also teaches at paragraph
[0059] that the 'horn mouth 19 is in the form of a disk with an outside
diameter D4 of less than 8 mm (for example of the order of 5 mm) and a
thickness e3 of less than 2 mm (for example of less than 1 mm).'" (Ans. 20;
see FF1-FF3.) We agree with the Examiner's interpretation that the
recitation of less than 1 mm or less than 8 mm reasonably encompass a
range of thickness from 0-1 mm or 0-8 mm. (See Ans. 21 ("the ordinary
artisan would have recognized that 'less than 1 mm' includes 0.5mm and
0.6mm").) "Therefore, the teachings of Tranchant as a whole do not teach
away from the claimed ratios but clearly suggest values within the claimed
ratios." (Id. at 20-21.)
Appellants contend
that based on the trend of spray uniformity obtained with a ratio
of 20 and 13.3 [,as disclosed in the Duru Declaration9], a
skilled artisan would immediately recognize that the flange
diameter (D4 )/flange thickness ( e3) ratio of less than 5, as
described in Tranchant, would exhibit an inferior spray
uniformity.
(App. Br. 5.)
Appellants contend that "an improved spray uniformity is achieved
with a flange diameter (D7 )/flange thickness ( e) ratio of 13 .3, the flange
diameter (D7 )/flange thickness ( e) ratio of 20 exhibits a superior spray
uniformity." (App. Br. 5; see also Duru Dec. i-fi-f 11-12.)
9 37 C.F.R. § 1.132 Declaration of Nicola Duru, signed Feb. 27, 2012.
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Application 12/370,217
Appellants' argument does not convince us that the comparisons of
the spray pattern of flanges with ratios of 13.3 and 20 as provided in the
Duru Declaration is a fair comparison to the ratio of 8 or even the preferred
ratio of 5 taught in Tranchant. "[T]he present claims encompass the ratios of
12 to 32. The comparison of 2 values within the claimed ratio does not
establish that increasing the ratio provides a trend of improved results. The
disclosure in the declaration establishes only that a ratio of 20 provides
improved results over a ratio of 13.3." (Ans. 22.) We agree with the
Examiner that "there is no showing of improved results obtained with the
claimed ratio of 12 as compared to the ratios disclosed by Tranchant, which
include a ratio of 8 (8 mm : 1 mm)" and describes a preferred ratio of 5.
(Ans. 22) Thus, the comparison in the Duru Declaration is not a comparison
to the closest prior art. See Baxter Travenol Labs., 952 at 392. ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.").
Additionally, as explained by the Examiner there are "other parameters that
affect the uniformity of spraying in combination with the diameter and
thickness of the flange. . . . [T]he declaration does not indicate if the
difference in results obtained with the ratio of 20 as compared to 13.3 occur
at all frequencies of vibration or only at the unspecified frequency used in
the experiments set forth in the declaration." (Ans. 23-24.) Thus, we agree
with the Examiner's conclusion that the Duru Declaration provides
insufficient evidence to establish unexpected results with respect to the
claimed diameter to flange thickness ratio to overcome the prima facie case
of obviousness.
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Application 12/370,217
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellants have not
provided sufficient evidence of secondary considerations that outweighs the
evidence supporting the prima facie case. As Appellants do not argue the
claims separately, claims 2, 3, 5, 7, and 9-19 fall with claim 1.
37 C.F.R. § 41.37 (c)(l)(iv).
SUMMARY
We affirm the rejection of claim 1under35 U.S.C. § 103(a) over
Trachant in view ofDauga, Ounanian, and Lechler. Claims 2, 3, 5, 7, and
9-19 have not been argued separately and fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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