11400035 (P.T.A.B. Jun. 11, 2014)

Ex Parte Brockmann et al

Patent Trial and Appeal BoardJun 11, 2014

11400035 (P.T.A.B. Jun. 11, 2014)

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. 11/400,035 04/07/2006 Petra Brockmann LSG06305 9616 50488 7590 06/11/2014 ALLEMAN HALL MCCOY RUSSELL & TUTTLE LLP 806 SW BROADWAY SUITE 600 PORTLAND, OR 97205-3335 EXAMINER DOAN, ROBYN KIEU ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 06/11/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETRA BROCKMANN and THOMAS BROCKMANN-KNODLER ____________ Appeal 2012-0039141 Application 11/400,035 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and KEVIN W. CHERRY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20. The Appellants provide the Declaration of Petra Brockmann and Thomas Brockmann-Knodler under 37 C.F.R. § 1.132, hereinafter “Declaration,” as declaratory evidence. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The record includes a transcript of the oral hearing held May 8, 2014. Appeal 2012-003914 Application 11/400,035 2 Claimed Subject Matter Claims 1 and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for the cutting of hair wherein a slice of hair is taken up and is guided by a hand, namely the guide hand, with the slice of hair being pinched between two fingers, namely the guide fingers of the guide hand, and wherein the slice of hair is cut along the guide fingers using a cutting device that is actuated by another hand, namely the cutting hand, wherein the guide hand is moved continuously or step-wise after the taking up of the slice of hair; and in that the cutting of the slice of hair takes place at least partially during the movement of the guide hand or, in the case of step-wise movement, during and/or between the movement steps. Rejections The Appellants request our review of the following Examiner’s rejections. I. Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. II. Claims 1, 6–8, 10, 11, 17, and 18 are rejected under 35 U.S.C. § 102(b) as anticipated by Bertero (US 4,383,374, iss. May 17, 1983). III. Claims 1, 2, 17, and 19 are rejected under 35 U.S.C. § 102(b) as anticipated by Haircentres’ Hairstyle Videos, http://www.haircentres.coml/video /sCznN8jJY&feature=youtube gdata player (hereinafter “Haircentres’ Hairstyle Video”).2 IV. Claims 3–5, 9, 12–16, 18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bertero or Haircentres’ Hairstyle Video. 2 The Examiner refers to this reference as “Hairstyle videos.” See Ans. 6. The Appellants refer to this reference as “YouTube.” App. Br. 10. Appeal 2012-003914 Application 11/400,035 3 OPINION Rejection I The Examiner explains that method claims 1–20 are directed to non- statutory subject matter because: first, the claimed “cutting device” is not a sufficient recitation of a particular machine; second, “cutting human hair does not result in a transformation of that hair”; and third, the Appellant “invented a method of moving the human body (guide hand) while the hair is cut with a cutting device, which the examiner views as a merely a general concept,” which “would effectively grant a monopoly over the concept.” Ans. 4–5 and 8. The Appellants contend that the Examiner’s rejection is improper because the Examiner’s second and third explanations are inadequately supported. See App. Br. 11–17. As for the Examiner’s second explanation, the Appellants assert that the claims include a step of cutting slices of hair, which changes the lengths of hair in the slice of hair, and as such, transforms the hair into a different state. See App. Br. 11-12. In response, the Examiner makes a conclusory statement that even if cutting hair is a transformation, then it is merely post- solution activity. Ans. 8. This conclusory statement does not persuade us that the Examiner has determined correctly that the method claims are directed to non-statutory subject matter. Rather, the Appellants’ contention and assertion persuades us of Examiner error. As for the Examiner’s third explanation, the Appellants assert “[t]he claimed method[s] do[] more than simply claim cutting hair as a general concept.” App. Br. 13. The Appellants support this assertion by explaining how the method claims “describe[] a particular solution to a problem to be Appeal 2012-003914 Application 11/400,035 4 solved” and “implement[] a concept in some tangible way,” and the performance of the method steps are “observable and verifiable” at pages 13–16 of the Appeal Brief. The Examiner does not explain how or why the Appellants’ assertion and its support are in error. The Appellants’ contention and assertion persuades us of Examiner error. Thus, the rejection of claims 1–20, under 35 U.S.C. § 101, is not sustained. Rejection II The Examiner finds Bertero discloses the method of claims 1 and 17. Ans. 5–6 and 8. The Appellants contend, among other things, that Bertero does not disclose, “multiple movement steps [of the guide hand] occur during the cutting of one slice of hair, let alone that the cutting of the slice of hair takes place at least partially between such steps” (App. Br. 20–21). See also App. Br. 19–22, 25. The Examiner’s response to this contention, that “the claim[s] can be reasonably interpreted that there are more than one slice of hair being cut” (Ans. 8) is incorrect. As pointed out by the Appellants, the claims exclude the possibility that the slice of hair includes different slices of hair by consistently using the phrase “a slice of hair,” and thereafter “the slice of hair” (Reply Br. 2–3). Further, we agree with the Appellants that the Examiner is required to weigh the Declaration as evidence and does not do so. See App. Br. 26; see also Reply Br. 8. But see Ans. 10. As such, the Appellants’ contentions are persuasive of Examiner error. Thus, the rejection of claims 1, 6–8, 10, 11, 17, and 18 as anticipated by Bertero is not sustained. Appeal 2012-003914 Application 11/400,035 5 Rejection III The Appellants contend that the Haircentres’ Hairstyle Video does not qualify as prior art because, among other things, the date of November 30, 1999 that is relied upon by the Examiner is not the publication date of the reference. See App. Br. 36–40, Reply Br. 6–8. For example, in the Reply Brief at page 7, lines 6–11, the Appellants point out that multiple commentators posted comments about the video in the same minute the content of the video was uploaded, i.e., November 30, 1999 at 12:00 a.m. As such, it is more likely than not that the published date and time of the video is erroneous because it appears that all time-stamps for the Haircentres’ Hairstyle Video website are November 30, 1999 at 12:00 a.m. See Reply Br. 6. Moreover, with the evidence in the record, we cannot determine that the publication date of the Haircentres’ Hairstyle Video is more than one year prior to the date of the instant patent application to satisfy the requirements under 35 U.S.C. § 102(b). As such, the Appellants’ contention that Haircentres’ Hairstyle Video does not qualify as prior art is persuasive. Furthermore, the Appellants also contend that the Examiner is required to weigh the evidence in the Declaration. See Ans. 10. In response, the Examiner does not address the section 103 rejection as it pertains to the Haircentres’ Hairstyle Video. As such, this contention is also persuasive of Examiner error. Thus, the rejection of claims 1, 2, 17, and 19 as anticipated by Haircentres’ Hairstyle Video is not sustained. Appeal 2012-003914 Application 11/400,035 6 Rejection IV The remaining rejections under 35 U.S.C. § 103(a) as unpatentable over Bertero or Haircentres’ Hairstyle Video are based on their respective rejections under 35 U.S.C. § 102(b) as anticipated by Bertero or Haircentres’ Hairstyle Video. These remaining rejections do not cure the deficiencies of the rejections of independent claims 1 and 17 under either Bertero or Haircentres’ Hairstyle Video under 35 U.S.C. § 102(b). Thus, the rejection of claims 3–5, 9, 12–16, 18, and 20 under 35 U.S.C. § 103(a) as unpatentable over Bertero or Haircentres’ Hairstyle Video is not sustained. DECISION We REVERSE the rejections of claims 1–20. REVERSED mls