Ex Parte Cetinkaya

Patent Trial and Appeal Board

Sep 21, 2018

14782557 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/782,557 10/05/2015 Mitat Cetinkaya
77269 7590 09/25/2018
Oppenhuizen Law PLC
146 Monroe Center NW
McKay Tower, Suite 730
Grand Rapids, MI 49503
UNITED ST A TES OF AMERICA
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.
LIP-106-U 7728
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
docket@oppenhuizen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITAT CETINKA YA
Appeal2018-008162
Application 14/782,557 1
Technology Center 3700
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-17. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is the inventor, Mitat Cetinkaya. See Br. 1.
Appeal2018-008162
Application 14/782,557
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A hair-highlighting device having a handle, a reservoir for
storing a highlighting composition, the device being adapted to
dispense a tape of barrier material and being adapted to
simultaneously dispense the highlighting composition via a
reservoir outlet to a length of a lock of hair, characterized in that
device comprises a manually operated mechanism to expel
highlighting composition from the reservoir such that when the
device is in use a user may vary the amount of highlighting
composition dispensed from the reservoir along the lock of hair
by varying the pressure that is applied to the manually operated
mechanism.
Rejections
Claims 1-6, 11, 12, and 14--17 are rejected under 35 U.S.C. § 103 as
unpatentable over Husband et al. (US 7,357,137 B2, iss. Apr. 15, 2008)
("Husband") and Loertscher et al. (US 6,613,144 Bl, iss. Sept. 2, 2003)
("Loertscher").
Claims 7-10 are rejected under 35 U.S.C. § 103 as unpatentable over
Husband, Loertscher, and Mills (US 2008/0000492 Al, pub. Jan. 3, 2008).
Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over
Husband, Loertscher, and Jones et al. (US 2009/0282961 Al, pub. Nov. 19,
2009) ("Jones").
ANALYSIS
The Appellant argues that the Loertscher patent is non-analogous
prior art. Br. 2-7. The Examiner finds that the Loertscher patent is
2
Appeal2018-008162
Application 14/782,557
analogous prior art. Final Act. 6; Ans. 2-3. In re Bigio, 381 F.3d 1320,
1324 (Fed. Cir. 2004) (citing In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed.
Cir. 1995)) (explaining "[t]he identification of analogous prior art is a
factual question.").
The Examiner can satisfy the analogous-art test by showing that the
Loertscher patent is reasonably pertinent to the particular problem with
which the inventor (i.e., Appellant) is involved. In re Kahn, 441 F.3d 977,
986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992)). "A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor's endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor's attention in considering his problem." In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
In the Final Office Action, the Examiner finds that the Loertscher
patent is concerned with the same problem as the inventor. See Final Act. 6.
The Examiner identifies the problem that the inventor and the Loertscher
patent is concerned with pertains to dispensing a cosmetic composition onto
a roll of sheet material from a reservoir holding the cosmetic composition.
See Final Act. 6; Ans. 2-3.
The Appellant contends that the "Loertscher [patent] is ... not
reasonably pertinent to the problem with which the Applicant is concerned."
Br. 5. The Appellant's contention is supported by an analysis that contrasts
the problems and purposes of the Loertscher patent with those of the
Appellant's invention. See Br. 5-7. The Appellant's position is not
persuasive.
3
Appeal2018-008162
Application 14/782,557
In this case, the Appellant addresses some of the teachings of the
Loertscher patent - e.g., "a mechanically-simple device for applying a
small volume of hemorrhoid cream onto a piece of toilet paper" (Br. 6) -
but fails to address the more pertinent uses of Loertscher's dispensing
device, e.g., dispensing a cosmetic composition. See Ans. 2 ( citing
Loertscher, col. 5, 11. 55---60 ("Cosmetics or emulsions serving for skin care
... can also be dispensed, since the use of the device is not at all restricted to
anal and/or genital hygiene.")). We also note that the Appellant fails to
directly acknowledge the Examiner's specific finding in the Final Office
Action that the inventor and the Loertscher patent are concerned with the
same problem and also fails to explain directly why the Examiner's finding
is not supported by a preponderance of the evidence. Based on the
foregoing, we are not persuaded that the Loertscher patent is not analogous
prior art because it is reasonably pertinent to the particular problem with
which the Appellant is involved.
The Appellant also argues that the "Loertscher [patent] fails to
disclose a manually operated mechanism that permits a user to vary the
amount of highlighting composition while in use." Br. 7 (emphasis
omitted). The Appellant alleges that "the device of Loertscher is for
applying a single isolated dose of product to any individual sheet of toilet
paper, and is not for varying the rate at which product is dispensed over a
continuum of plural sheets of toilet paper." Br. 7. Additionally, the
Appellant alleges "whereas a person could combine the teaching of
Loertscher with the teaching of Husband so as to arrive at the claimed
invention there would primafacie be absolutely no incentive to do so."
Br. 9. The Appellant's position is not persuasive.
4
Appeal2018-008162
Application 14/782,557
First, we note that whether the Loertscher patent teaches varying the
rate at which product is dispensed is not relevant to the claimed subject
matter. This is because the subject matter of claim 1 is not directed to a
variation in the rate by which a product is dispensed, rather the subject
matter of claim 1 is directed to varying the amount of a dispensed product.
Indeed, claim 1 recites, with added emphasis, "a manually operated
mechanism to expel highlighting composition from the reservoir such that
when the device is in use a user may vary the amount of highlighting
composition dispensed from the reservoir along the lock of hair by varying
the pressure that is applied to the manually operated mechanism." Br. 10.
Second, the Examiner explains that the Loertscher patent:
teaches a manually operated mechanism that permits a user to
vary the amount of composition while in use, col. 6, lines 58-
60[.] "Applying pressure with a finger in the direction of
compression A, any given amount 13 of cleaning or care
emulsion 9 is deliver to the paper 3." [T]herefore, depending on
the pressure exerted by the user can vary the amount of
composition.
Ans. 3 ( emphasis in original). The Appellant does not address the
Examiner's explanation or the Loertscher patent's disclosure at column 6,
lines 5 8---60.
Third, the Examiner articulates adequate reasoning with rational
underpinning for modifying the device for dispensing a barrier material to a
lock of hair, as taught by Husband, with the manually operated mechanism,
as taught by Loertscher. Final Act. 3--4 ("in order to allow the user to
control the amount of composition to be dispense onto the tape"). The
Appellant fails to persuasively explain a flaw in the Examiner's reasoning.
5
Appeal2018-008162
Application 14/782,557
Thus, we sustain the Examiner's rejection of independent claim 1 and
dependent claims 2-6, 11, 12, and 14--17 as unpatentable over Husband and
Loertscher. See 37 C.F.R. § 4I.37(c)(l)(iv). We also sustain the rejections
of claims 7-10 as unpatentable over Husband, Loertscher, and Mills and
claim 13 as unpatentable over Husband, Loertscher, and Jones, which were
not argued separately.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-17.
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)(l )(iv).
AFFIRMED
6