Ex Parte Carballada et al

Patent Trial and Appeal Board

Jul 11, 2017

10991680 (P.T.A.B. Jul. 11, 2017)

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.
10/991,680 11/18/2004 Jose Antonio Carballada 9407C& 9260
27752 7590 07/13/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE ANTONIO CARBALLADA,
DANA HANCE WOLSING, JAMES LEE DROBISH,
KAZUNORINAKASAI, and SHINJINISHIMURA1
Appeal 2016-004775
Application 10/991,680
Technology Center 3700
Before TAWEN CHANG, TIMOTHY G. MAJORS, and DAVID COTTA,
Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a hair
styling device, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as The Proctor & Gamble
Company. (Br. 1.)
Appeal 2016-004775
Application 10/991,680
STATEMENT OF THE CASE
Appellants’ “invention relates to hair styling devices, particularly to a
hair styling device capable of using a fixing styling polymer in combination
with heat and a hair lifting mechanism to produce volume and lift to the
hair.” (Spec. 1:15-17.)
Claims 1—8, 10-12, 14—16, 18—21, 29, 30, and 60 are on appeal.
Claim 1 is illustrative:
1. A hair styling device capable of providing lift to a mass of
undifferentiated hair stands on a scalp region comprising:
a) tines for gathering hair strands into hair bundles wherein
the tines are capable of touching the scalp
b) a reservoir, in fluid communication with the tines,
comprising a styling composition comprising a fixing polymer;
and
c) a means to hold and further align the hair strands along
and beyond the tines a greater distance from the scalp region than
the tines for gathering hair strands into hair bundles distance
from the scalp region;
d) an applicator means, in fluid communication with the
reservoir, for applying the styling composition wherein the
applicator means is located inside or along the tines which are
capable of touching the scalp.
(Br. 13 (Claims App’x).)
The claims stand rejected as follows:
Claims 1 and 60 under 35 U.S.C. § 103(a) over Hua2 and Fiore.3
2 Lu Shao Hua, US 6,752,157 B2, issued June 22, 2004 (“Hua”).
3 Fiore, US 2002/0153020 Al, published Oct. 24, 2002 (“Fiore”).
2
Appeal 2016-004775
Application 10/991,680
Claims 2-8, 10-12, 14-16, 18-21, 29, and 30 under 35 U.S.C.
§ 103(a) over Hua, Fiore, and Habibi.4
The Examiner rejected independent claims 1 and 60 as obvious over
the combination of Hua and Fiore. According to the Examiner, Hua teaches
the invention recited in claims 1 and 60 with one exception: “Hua does not
disclose the styling composition being a fixing polymer.” (Final Act. 2—3.)
The Examiner finds Fiore teaches the missing element, and reasons it would
have been obvious “to modify the device of [] Hua to hold a fixing polymer
as taught by Fiore in order to further style and fix the user’s hair.” {Id. at 3.)
We focus here on Hua’s teachings and the Examiner’s findings as to Hua.
Figure 1 of Hua, which the Examiner relies upon in making the
rejection, is reproduced below:
Figure 1 of Hua is a cross-sectional view of a hair dye applicator head. (Hua
2:50-51.) Figure 1 includes a first elongate body member (2) having a first
DISCUSSION
%
4
F1SUSE I
4 Habibi, US 6,119,702, issued Sept. 19, 2000 (“Habibi”).
3
Appeal 2016-004775
Application 10/991,680
hair treatment surface (12) and handle (13). (Hua 3:10—21.) Figure 1
includes comb teeth (17) on an upper surface of the first elongate body
member (2). {Id. at 3:53.) On the underside of the first body member (2), at
first treatment surface (12), is a fluid absorbent material (5). {Id. at 3:23—
25.) Figure 1 also includes a second elongate body member (6) having a
second hair treatment surface (16) and a fluid passage (9) that is in fluid
connection with a tubular element (21) (not depicted in Fig. 1), which serves
as a reservoir for treatment fluid. {Id. at 4:7—56.) The fluid passage (9)
communicates with apertures (10) on the second treatment surface (16) of
the second elongate body member (6). {Id. at 3:50-53.) The first elongate
body member (2) and second elongate body member (6) are hingeably
connected via a pivot point (11) so the treatment surfaces can be brought
into proximity of each other. {Id. at 3:18—20.)
The Examiner finds Hua teaches a hair styling device with tines (17)
for gathering hair strands into hair bundles. (Final Act. 2.) According to the
Examiner, Hua’s tines are capable of touching the user’s scalp “if the device
is turned tine side facing down.” {Id.) The Examiner finds Hua discloses:
a reservoir (21) in fluid communication with the tines comprising
a styling composition, a means to hold and further align (4) the
hair strands along and beyond the bundling means a greater
distance from the scalp region than the bundling means for gather
hair strands, and an applicator means (10) in fluid
communication with the reservoir for applying the styling
composition to the hair strands wherein the applicator is located
along the bundling means (see Figures 1 and 10).
{Id.)
4
Appeal 2016-004775
Application 10/991,680
Appellants argue the Examiner’s modification of Hua based on Fiore
fails to teach all the elements of claims 1 and 60. (Br. 4—7.) Appellants
contend Hua “does not disclose a device having tines for gathering hair
strands into hair bundles and wherein the tines are capable of touching the
scalp.” {Id. at 4.) Appellants further contend Hua “does not disclose a
means to hold and further align the hair stands beyond the tines a greater
distance from the scalp region.” {Id.) According to Appellants “Hua
teaches a device that sandwiches the hair strands between two treatment
surfaces” and does not provide the structure and functionality of the claimed
“tines” and “means to hold and further align.” {Id. at 4—5.) Appellants also
contend Hua does not disclose “a styling composition is provided by an
applicator means located inside or along the tines, as found in the present
invention.” {Id. at 5.)
On the present record, we are not persuaded the Examiner met the
burden to show claims 1 or 60 would have been prima facie obvious. As an
initial matter, the Examiner provides insufficient findings or analysis about
how at least two means-plus-fimction limitations are being interpreted — the
claimed “means to hold and further align” (as in claims 1 and 6) and the
“applicator means” (as in claim 1). The Examiner does not identify the
corresponding structure recited in Appellants’ Specification that is
encompassed by these limitations. See 35 U.S.C. § 112, | 6 (pre-AIA).5
5 It appears the corresponding structures in the Specification may, in fact, be
narrower than suggested by the Examiner’s rejection. For example, the
Specification discloses that the means to hold and align comprises specific
structures like a “lift plate” or a “second row of tines” disposed above a first
row of tines. {See Spec. 11:3—23 and 14:19-30.) Similarly, the described
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Moving to the structures of Hua the Examiner did cite, we are
unpersuaded those structures meet the claim elements. The Examiner
reasons that turning the device of Hua upside down and placing the device
against the user’s head would meet the functional requirement that “the tines
are capable of touching the scalp.” (Final Act. 2.) Assuming that were true,
we are unpersuaded that Hua’s device would also meet the “means to hold
and further align” limitation when oriented in that manner. Although the
claims relate to a device, the prior art must still be capable of meeting the
functional language recited in the claim.
The Examiner did not explain how Hua’s device, when turned tine-
side down, is capable of satisfying the “means to hold and further align the
hair strands along and beyond the tines a greater distance from the scalp
region than the tines” or the “means to hold and further align the hair strands
along and beyond the tines” as recited in claims 1 and 60 respectively. The
Examiner states a “means to hold and further align” is met by an end (4) of
first elongate member (2) or opening (12) of Hua, and that “there is nothing
[] precluding the user from running the comb through the users hair by
touching the scalp then lifting the means to hold and further align element to
provide lift to the user’s hair.” (Final Act. 6; Ans. 2, 4.) In making these
assertions, however, the Examiner appears to read the elements in isolation,
rather than based on the cooperative engagement of the features as claimed.
(See, e.g., Spec. Figs. 7A and 7B (showing an example of the structural and
“applicator means” appears to require a more specific structural arrangement
of a capillary tube within or on the tines themselves. (See Spec. 12; see also
id. Figs. 8—9.)
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Application 10/991,680
functional arrangement of tines (16) and a means to hold and further align
(122) to bundled hair strands (15) above the tines.) Absent a significant
distortion in the design and use of Hua’s hair treatment applicator, we are
not persuaded it would possess the claimed functionality.6
The Examiner did not find that Fiore or Habibi make up for Hua’s
deficiencies discussed above concerning claims 1 and 60.
Because the preponderance of the evidence on this record does not
support the Examiner’s conclusion that claims 1 and 60 would have been
obvious, we reverse. We also reverse the rejection of the dependent claims.
In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Dependent claims are
nonobvious if the [] claims from which they depend are nonobvious.”)
SUMMARY
We reverse the rejection of claims 1 and 60 as obvious over Hua and
Fiore. We also reverse the rejection of claims 2—8, 10-12, 14—16, 18—21,
29, and 30 as obvious over Hua, Fiore, and Habibi.
REVERSED
6 Cf. In re Chudik, 851 F.3d 1365, 1372 (Fed. Cir. 2017) (“a prior art
reference that must be distorted from its obvious design does not anticipate a
patent claim”) (citation and internal quotation marks omitted); Topcliff v.
Topdiff, 145 U.S. 156, 161 (1892) (“It is not sufficient to constitute an
anticipation that the device relied upon might, by modification, be made to
accomplish the function performed by the patent in question, if it were not
designed by its maker, nor adapted, nor actually used, for the performance of
such functions.”) Although these precedents concerned anticipation, their
holdings are relevant here because the Examiner relies solely on Hua,
without structural modification, as meeting the functional claim limitations.
7