Ex Parte Carlino

Board of Patent Appeals and Interferences

Jun 16, 2009

11456399 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTINA CARLINO
____________

Appeal 2009-002556
Application 11/456,399
Technology Center 3700
____________

Decided: 1 June 17, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Christina Carlino (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-12. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellant's invention is drawn towards a mechanical pencil
40 and a roller ball pen 50 including, respectively, a first end 42, 52 having a
lead 44 or a roller ball tip 54 for writing, and a second end 46, 56 having an
opening 47, 57 that is contiguous with a reservoir that retains a cosmetic
preparation. Specification 5-6, ¶ 21 and figs. 3 and 4. The pencil 40 and
the roller ball pen 50 further include a cap 61 for covering the first end 42,
52, a screw cap 48 for covering the second end 46, 56, and an applicator
wand 58 with a rounded tip 59 (¶ 19 and figs. 3 and 4).
Claim 1 is representative of the claimed invention and reads as
follows:
1. A pen and/or pencil comprising a first end having at least
one of a lead or an ink for writing by a user, at least one
second end having an opening contiguous with an
accompanying reservoir and a cosmetic preparation
contained in the reservoir, and a cap having an applicator
attached thereto for applying the cosmetic preparation to
the user.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Petruccione US 2,354,402 Jul. 25, 1944
Guzman US 4,600,327 Jul. 15, 1986
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Lang US 6,241,408 B1 Jun. 5, 2001
Cirlin US 2001/0036383 A1 Nov. 1, 2001

The following rejections are before us for review:
The Examiner provisionally rejected claims 1-7 under 35 U.S.C.
§ 101 as claiming the same invention as that of claims 1, 5, 6, 8, 9, 13, and
15 of copending U.S. Application No. 10/308,824.2
The Examiner rejected claims 1, 3, 5, and 6 under 35 U.S.C. § 102(b)
as anticipated by Guzman.
The Examiner rejected claims 1-4, 6, and 7 under 35 U.S.C. § 102(b)
as anticipated by Petruccione.
The Examiner rejected claims 8-12 under 35 U.S.C. § 103(a) as
unpatentable over Lang in view of Cirlin.

THE ISSUES
1. Has the Appellant demonstrated that the Examiner erred in
determining that the ink correction fluid of Guzman constitutes the
Appellant’s claimed “cosmetic preparation”?
2. Has the Appellant demonstrated that the Examiner erred in
determining that the antiseptic solution, namely iodine, of Petruccione
constitutes the Appellant’s claimed “cosmetic preparation”?
3. Has the Appellant demonstrated that the Examiner erred in
determining that the dual pack applicator of Lang holding a liquid of

2 Final Rejection at 5, mailed July 31, 2007.

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different shades in reservoir 22 constitutes a pen including an end
holding an ink?

SUMMARY OF DECISION
We AFFIRM-IN-PART.

FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Guzman teaches a pen 10 including an end portion 14 having an
ink applicator tip for writing, a lower cap 16, a hollow upper
portion 18 for receiving a reservoir 17 for holding ink
correction fluid, and an applicator cap member 28 having an
applicator brush 30 attached thereto. Guzman, col. 2, ll. 45-65;
col. 3, ll. 7-9 and 25-28; and fig. 1.
2. The Appellant’s Specification provides examples of suitable
“cosmetic preparations” including powders, creams and lotions
for eyes, cheeks and lips,” such as “lipstick, a lipliner, a lip
color, an eyeliner, an eyelid color, an eyebrow pencil, a cheek
color, [and] a mascara.” Specification 2, ¶ 5 and Specification
6, ¶ 21.
3. Guzman further teaches that the “correction fluid” is a liquid
that is available in various colors. Guzman, col. 3, ll. 9-12.
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4. Petruccione teaches a pencil including a lower portion 8 having
a mechanical pencil 13, a hollow upper section 6 acting as a
reservoir for iodine or another antiseptic solution, and a cap 21
having an applicator 22 attached thereto. Petruccione, col. 1, l.
38 through col. 2, l. 23 and fig. 2.
5. Petruccione further teaches an antiseptic solution such as
iodine. Petruccione, col. 2, l. 21. A person of ordinary skill in
the art would readily recognize that iodine is a dark-colored
liquid.
6. An antiseptic solution such as iodine can be used to either
disinfect a skin cut (prevent infection) or as a skin cleanser.
7. An ordinary and customary meaning of the term “ink” is “a
colored usu. liquid material for writing and printing.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 602 (10th Ed.
1997).
8. An ordinary and customary meaning of the term “pen” is “an
implement for writing or drawing with ink or a similar fluid.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 858 (10th Ed.
1997).
9. Lang discloses a hand-held stick applicator, i.e., lip balm,
lipstick, deodorant, and the like, for dispensing a material in the
form of a “salve, semi-solid, gel, cream, liquid, or the like.”
Lang, col. 1, ll. 4-6 and 14-16. For example, Lang discloses a
roll-on assembly 20 including a barrel 22 holding a liquid
product, namely, a roll-on lip gloss. Lang, col. 3, ll. 55-56 and
col. 4, l. 52.
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10. A person of ordinary skill in the art would have readily
appreciated that lip-gloss comes in a variety of colors.

PRINCIPLES OF LAW
Burden of proof
The USPTO has the initial burden of providing a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic reasonably flows from the teachings of the
applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Once the USPTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the applicant to prove that the prior art does
not possess the characteristic at issue. See id. This is the case whether the
rejection is based on inherency under 35 U.S.C. § 102, prima facie
obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).

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Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

OPINION
Double Patenting Rejection
In the Final Rejection mailed July 31, 2007, claims 1-7 were
provisionally rejected under 35 U.S.C. § 101 as claiming the same invention
as that of claims 1, 5, 6, 8, 9, 13, and 15 of copending U.S. Application No.
10/308,824. The Appellant has not furnished any substantive arguments
against the Examiner’s double patenting rejection. App. Br. 11. Therefore,
we summarily affirm the Examiner’s provisional rejection of claims 1-7
under 35 U.S.C. § 101 as claiming the same invention as that of claims 1, 5,
6, 8, 9, 13, and 15 of copending U.S. Application No. 10/308,824.

Issue (1)
The Appellant argues the rejection under 35 U.S.C. § 102(b) of claims
1, 3, 5, and 6 together as a group. App. Br. 4. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(vii)(2008), we have selected claim 1 as the
representative claim to decide the appeal, with claims 3, 5, and 6 standing or
falling with claim 1.
The Appellant argues that Guzman does not describe “storing a
cosmetic preparation in the hollow cylindrical reservoir which contains a
correction fluid.” App. Br. 6. Emphasis added. According to the Appellant,
the correction fluid of Guzman "cannot be considered to be a cosmetic
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preparation that can be applied to the cheek.” Id. In order to sustain this
position the Appellant turns to the dictionary (Merriam-Webster online
dictionary, Merriam-Webster student online dictionary) to define the term
"cosmetic" as meaning
‘of, relating to, or making for beauty especially of
the complexion’ and ‘done or made for the sake of
appearance: as a: correcting defects especially of
the face b: Decorative,
Ornamental c: not substantive : superficial
’…‘a cosmetic preparation (as
a cream, lotion, or powder)’ and ‘intended to
beautify the hair or complexion.’

Reply Br. 3.
In response, using the dictionary (Merriam Webster’s Collegiate
Dictionary) to show that "cosmetic" is something that is “’done or made for
the sake of appearance: as a: correcting defects,’” the Examiner takes the
position that the “correction fluid” of Guzman is a "cosmetic" because it has
a white color and is capable of being applied to the eyelids or cheek. Ans. 5.
According to our understanding of the Appellant’s arguments and the
Examiner’s response, it appears that the crux of the disagreement seems to
be whether the “correction fluid” of Guzman satisfies the limitation of “a
cosmetic preparation.”
As noted above, in a first instance we find that Guzman teaches a pen
10 including an end portion 14 having an ink applicator tip for writing, a
lower cap 16, a hollow upper portion 18 for receiving a reservoir 17 for
holding ink correction fluid, and an applicator cap member 28 having an
applicator brush 30 attached thereto. FF 1. Second, we note that although
the Appellant’s Specification does not provide a specific definition of a
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“cosmetic preparation,” the Specification provides some examples of
suitable “cosmetic preparations” such as powders, creams and lotions for
eyes, cheeks and lips” such as “lipstick, a lipliner, a lip color, an eyeliner, an
eyelid color, an eyebrow pencil, a cheek color, [and] a mascara.” FF 2.
Emphasis added. Third, we find that the “correction fluid” of Guzman is a
liquid available in various colors. FF 3.
The Appellant’s arguments appear to imply that the “correction fluid”
of Guzman has a composition (characteristic) that makes it unsuitable for
application to a cheek. App. Br. 6. However, the Appellant has not set forth
evidence to show that the “correction fluid” of Guzman has a composition
(characteristic) that would exclude its use on a cheek. Furthermore, the
Appellant’s argument that the “correction fluid” of Guzman “serves a
completely different function” (Reply Br. 3) is not persuasive in itself
because "[i]t is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover, we note that
paint can be used both to paint a wall in a house and also to paint the cheeks
of a person. As such, the teachings of Guzman of a “correction fluid” that is
a liquid having various colors provides a reasonable basis for us to find that
one ordinarily skilled in the art would understand the “correction fluid” of
Guzman to be “a cosmetic preparation.” Hence, without evidence from the
Appellant that the “correction fluid” of Guzman is unsuitable to be used as a
cheek color, we conclude that the teachings of Guzman reasonably support
the Examiner’s determination that the “correction fluid” of Guzman is
capable of being applied to the eyelids or the cheeks. Thus, we adopt the
Examiner’s finding with regard to the “correction fluid” of Guzman being “a
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cosmetic preparation.” Lastly, we note that claim 1 does not require that the
“cosmetic preparation” be a lip color, an eye color, a cheek color, and a
mascara. We must be careful not to read a particular embodiment appearing
in the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).
In conclusion, for the reasons discussed above, the rejection of claim
1, and claims 3, 5, and 6 standing or falling with claim 1, is sustained.

Issue (2)
The Appellant argues the rejection under 35 U.S.C. § 102(b) of claims
1, 2, 4, 6, and 7 together as a group. App. Br. 5. Accordingly, we have
selected claim 1 as the representative claim to decide the appeal, with claims
2-4, 6, and 7, standing or falling with claim 1. In view of the Appellant’s
arguments, we will address the rejection of claim 3 separately.
The Appellant makes a similar argument previously presented with
respect to the rejection of claims 1, 3, 5, and 6 under 35 U.S.C. § 102(b) as
anticipated by Guzman. Specifically, the Appellant argues that “Petruccione
fails to disclose a cosmetic preparation.” App. Br. 7. The Appellant further
argues that the "antiseptic solution disclosed in Petruccione cannot be
considered to be a cosmetic preparation that can be applied to the cheek"
(App. Br. 6) because it "serves a completely different function and purpose
than that of a cosmetic preparation." App. Br. 7. See also Reply Br. 4.
Emphasis added. In response, the Examiner uses the dictionary definition of
the term “cosmetic” (as shown above) to take the position that the “iodine”
solution of Petruccione satisfies the limitation of a “cosmetic” because it has
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color and “it is capable of being applied to a cheek with an abrasion to
correct [a] defect (the abrasion) on the cheek.” Ans. 6.
Once more, the crux of the disagreement between the Appellant and
the Examiner appears to be whether the “iodine” solution of Petruccione
satisfies the limitation of “a cosmetic preparation.”
As noted above, we find that Petruccione teaches a pencil including a
lower portion 8 having a mechanical pencil 13, a hollow upper section 6
acting as a reservoir for iodine or another antiseptic solution, and a cap 21
having an applicator 22 attached thereto. FF 4. Further, Petruccione teaches
an antiseptic solution such as iodine, which is known to be a dark colored
liquid. FF 5. Once more, the Appellant’s arguments appear to imply that
the “iodine” solution of Petruccione has a composition (characteristic) that
makes it unsuitable for application to a cheek. App. Br. 7 and Reply Br. 4.
However, the Appellant has not set forth evidence to show that the
composition (characteristic) of the “iodine” solution of Petruccione is such
that would exclude its use on a cheek.
Further with respect to claim 3, the Appellant’s argument that the
“iodine” solution of Petruccione is not intended to be used as a lip color, an
eye color, a cheek color, or a mascara (App. Br. 7) is not persuasive, in that
no evidence has been presented to show that the “iodine” solution of
Petruccione is unsuitable to be used as a lip color, an eye color, a cheek
color, or a mascara. Otherwise, the Appellant’s argument merely reflects a
new intended use of an old composition, which cannot defeat a finding of
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anticipation of the composition itself.3 Moreover, we note that an antiseptic
solution such as iodine can be used to either disinfect a skin cut (prevent
infection) or as a skin cleanser. FF 6. As such, the teachings of Petruccione
of a “iodine” solution (a dark colored liquid that leaves color on the skin
when applied thereto) provides a reasonable basis for us to find that a person
of ordinary skill in the art would have readily understood that the “iodine”
solution of Petruccione is “a cosmetic preparation.” Hence, without
evidence that the “iodine” solution of Petruccione is unsuitable to be used as
a cheek color, we conclude that the teachings of Petruccione reasonably
support the Examiner’s determination (Ans. 6) that the “iodine” solution of
Petruccione is capable of being applied to a cheek. Thus, we adopt the
Examiner’s finding with regard to the “iodine” solution of Petruccione being
“a cosmetic preparation.” Lastly, we note that claim 1 does not require that
the “cosmetic preparation” be a lip color, an eye color, a cheek color, and a
mascara. Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In conclusion, for the reasons discussed above, the rejection of claim
1, and claims 2, 4, 6, and 7 standing or falling with claim 1, is sustained.
Likewise, the rejection of claim 3 is also sustained.

Issue (3)
The Appellant argues that Lang does not disclose “a pen and/or pencil
comprising a first end having one of a lead or an ink for writing by a user.”

3 “A mere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.” In re
Zierden, 411 F.2d 1325, 1328 (CCPA 1974).
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App. Br. 10. See also Reply Br. 5. In response, the Examiner takes the
position that the dual pack applicator of Lang constitutes the claimed “pen”
and the “cosmetic liquid of different shade[s] in reservoir 22” constitutes the
claimed “ink.” Ans. 6.
The Appellant’s Specification does not expressly define the terms
“pen” and “ink” or otherwise indicate that these terms are used in a manner
other than their ordinary and customary meaning. Accordingly, we construe
these terms in accordance with their ordinary and customary meaning. As
shown above, an ordinary and customary meaning of the term “ink” is “a
colored usu. liquid material for writing and printing.” FF 7. An ordinary
and customary meaning of the term “pen” is “an implement for writing or
drawing with ink or a similar fluid.” FF 8. In this case, Lang discloses a
roll-on assembly 20 including a barrel 22 holding a liquid product, namely, a
roll-on lip-gloss. FF 9. A person of ordinary skill in the art would have
readily appreciated that lip-gloss comes in a variety of colors. FF 10. As
such, because the lip-gloss of Lang is a colored liquid, and the roll-on lip-
gloss of Lang holds the colored liquid, the Examiner would have us interpret
the roll-on lip-gloss of Lang as the claimed pen including an end holding an
ink. However, we find such a reading of Lang to be unreasonably broad.
Although the roll-on lip-gloss of Lang holds a colored liquid, i.e., ink, we
disagree with the Examiner in that a person of ordinary skill in the art would
have understood the roll-on lip-gloss of Lang to be “an implement for
writing or drawing,” hence to be a “pen.” As such, we do not find that the
roll-on lip-gloss of Lang constitutes a “pen,” as required by claim 8.
Furthermore, we note that the disclosure of Cirlin does not cure the
deficiency of Lang as discussed above.
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Accordingly, we will not sustain the rejection of claim 8 or its
dependent claims 9-12. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then
any claim dependent therefrom is nonobvious).

CONCLUSIONS
1. The Appellant has not demonstrated that the Examiner erred in
determining that the ink correction fluid of Guzman constitutes the
Appellant’s claimed “cosmetic preparation.”
2. The Appellant has not demonstrated that the Examiner erred in
determining that the iodine or other antiseptic solution of Petruccione
constitutes the Appellant’s claimed “cosmetic preparation.”
3. The Appellant has demonstrated that the Examiner erred in
determining that the dual pack applicator of Lang holding a liquid of
different shades in reservoir 22 constitutes a pen including an end
holding an ink.

DECISION
The decision of the Examiner to provisionally reject claims 1-7 under
35 U.S.C. § 101 as claiming the same invention as that of claims 1, 5, 6, 8, 9,
13, and 15 of copending U.S. Application No. 10/308,824 is affirmed.
The decision of the Examiner to reject claims 1, 3, 5, and 6 under 35
U.S.C. § 102(b) as anticipated by Guzman is affirmed.
The decision of the Examiner to reject claims 1-4, 6, and 7 under 35
U.S.C. § 102(b) as anticipated by Petruccione is affirmed.
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The decision of the Examiner to reject claims 8-12 under 35 U.S.C.
§ 103(a) as unpatentable over Lang in view of Cirlin is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2008).

AFFIRMED-IN-PART

LV

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