Ex Parte Gueret

Board of Patent Appeals and Interferences

Jun 1, 2009

10121603 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEAN-LOUIS H. GUERET
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Appeal 2009-000177
Application 10/121,603
Technology Center 3700
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Decided:1 June 1, 2009
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Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving the final rejection
of claims 61, 62, 69, 70, 88, 103, 105-107, and 110. The Examiner has

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).
Appeal 2009-000177
Application 10/121,603

rejected the claims as anticipated or obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 61, 62, 69, 70, 88, 103, 105-107, and 110 are on appeal.2 The
claims subject to each rejection have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). We will focus
on claim 61, which reads as follows:
61. A device comprising:
a receptacle;
a substance contained in the receptacle;
a plurality of particles contained in the receptacle, the plurality of
particles comprising at least one of magnetizable particles mixed with the
substance and magnetizable particles coated with the substance;
an applicator element configured to attract at least a portion of one of
the magnetizable particles mixed with the substance and the magnetizable
particles coated with the substance; and
a limiter element configured to limit egress, from a portion of the
device, of at least a portion of at least one of
the substance and
said at least one of magnetizable particles mixed with the
substance and magnetizable particles coated with the substance.

2 Claims 1-3, 6-8, 10, 11, 18, 21, 38, 44-50, 52-60, 64, 65, 68, 76, 79, 96,
102, 104, 108, and 111-118 have been indicated to be allowable. Claims 4,
5, 9, 12-17, 19, 20, 22-37, 39-43, 51, 66, 67, 71-75, 77, 78, 80-87, 89-95, 97-
101, and 109 have been withdrawn from consideration by the Examiner.
(Ans. 2.)
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Application 10/121,603

Claims 61, 62, 69, 88, 103, 105-107, and 110 stand rejected under 35
U.S.C. § 102(b) as anticipated by Tate (US Re. 25,822, July 20, 1965)
(Ans. 4).
Claim 70 stands rejected under 35 U.S.C. § 103(a) as obvious over
Tate (id. at. 5).
ANTICIPATION
The Examiner finds:
Tate discloses a device (fig. 1) comprising a receptacle (1)
comprising a substance (6) contain[ed] in the receptacle, a
plurality of magnetizable particles (5) being mixed with the
substance and . . . coated with the substance[, and] . . . a
limiter (4) configured to limit egress . . . ; the device further
comprising [a] writing tip inherently used as an applicator (7)
configured to attract at least a portion of the magnetized
particles.
(Ans. 4.)
Appellant argues that “[n]o substance is applied using the writing
tip 7” and that therefore Tate’s “writing tip 7 is not an applicator” (App.
Br.3 14).
Issue
Did the Examiner err in concluding that Tate’s writing tip 7 is “an
applicator element,” as recited in claim 61?
Findings of Fact
1. Tate discloses “a set of magnetic writing materials” (Tate,
col. 1, l. 32).

3 “App. Br.” refers to the Second Appeal Brief filed January 4, 2007.
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Application 10/121,603

2. Tate Figure 1 is reproduced below:

“FIGURE 1 is a cross-section view through the writing surface together with
a portion of the writing instrument involved” (id. at col. 1, ll. 63-65).
3. Tate discloses that the writing surface 1 includes “a front
surface 2 and a rear surface 3, which together form a hollow cavity” (id. at
col. 2, ll. 1-2).
4. Tate also discloses that a number of spherical particles 5 and a
liquid 6 fill the cavity between front surface 2 and rear surface 3 (id. at
col. 2, ll. 12-29).
5. In addition, Tate discloses that the spherical “particles are made
by mixing an aggregate of equal parts of barium ferrite, a magnetic material
of high retentivity, and plaster of Paris or some other such filler and binder,”
molding the aggregate into spheres, magnetizing the spheres to form north
and south poles, and painting one pole a dark color (id. at col. 2, ll. 41-62).
6. “For ‘writing’ on the sheet 1, [Tate discloses] a bar magnet in
the shape of a pencil and having a writing tip” 7 (id. at col. 2, l. 71, to col. 3,
l. 2).
7. Tate also discloses:
The tip 7 is covered with a thin film of plastic 8. . . . [O]utside
the plastic film 8 is a conical sheet 9 made of soft iron which
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Application 10/121,603

extends past the tip of the magnet 7 . . . to restrict the field of
the magnet so that[,] while the field extends beyond the tip, . . .
it will not extend sidewise. . . . The entire assembly . . . is
provided with a boot 10 formed of plastic.
(Id. at col. 3, ll. 3-15).
8. In addition, Tate discloses that, “[a]s the tip 7 of the writing
instrument is brought close to the front surface 2, the two spheres
immediately adjacent the tip 7 will rotate . . . so that these two spheres . . .
will present their . . . black sides” (id. at col. 3, ll. 18-22).
Principles of Law
“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., 814 F.2d 628, 631
(Fed. Cir. 1987). “The law of anticipation does not require that the reference
‘teach’ what the subject [application] teaches. Assuming that a reference is
properly ‘prior art,’ it is only necessary that the claims under attack . . . ‘read
on’ something disclosed in the reference, i.e., all limitations of the claim are
found in the reference.” Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772 (Fed. Cir. 1983).
“It 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). “[T]erms [that] merely set
forth the intended use for, or a property inherent in, an otherwise old
composition . . . do not differentiate the claimed composition from those
known in the prior art.” In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
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A “determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, . . . followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art.” Key Pharms. Inc. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir.
1998).
Analysis
Claim 61 recites “an applicator element configured to attract at least a
portion of” the magnetizable particles. We interpret the “applicator
element” to be an element having the ability to apply something.
Tate discloses a writing surface containing magnetizable particles 5
(Findings of Fact (FF) 3-5). Tate also discloses a writing instrument having
a writing tip 7 that attracts a portion of the magnetizable particles 5 (FF 6-8).
Tate does not disclose that this writing tip is used to apply anything.
However, we agree with the Examiner that the writing tip has the ability to
apply something. Therefore, we agree with the Examiner that writing tip 7
reads on the applicator element of claim 61. (Ans. 6.)
Appellant argues:
The recitation of “an applicator element” is not a statement of
intended use, as alleged by the Examiner. Rather, the recitation
of “an applicator element” is a structural limitation. By
mischaracterizing the claim term “applicator” as a statement of
intended use, the Examiner has completely ignored structural
subject matter recited in the claim. By ignoring the term
“applicator,” the Examiner has rendered its recitation irrelevant.
This is clearly contrary to legal precedent.
(Reply Br. 4.)
We agree with Appellant that the “applicator element” is a structural
element that cannot be read out of the claim. However, we do not agree that
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the Examiner has read this element out of the claim. The Examiner finds
that writing tip 7 has the structural properties necessary to apply something
and is therefore an applicator, whether or not Tate identifies this element as
an applicator. What the Examiner is considering an intended use is any
implication that the structural element must be used to apply something.
(Ans. 6.) We do not detect any error in the Examiner’s reasoning.
Conclusion
The Examiner did not err in concluding that Tate’s writing tip 7 is “an
applicator element.” We therefore affirm the rejection of claim 61.
Claims 62, 69, 88, 103, 105-107, and 110 fall with claim 61.
OBVIOUSNESS
Claim 70 depends from claim 61 and recites that the applicator
element houses a flexible magnet. The Examiner concludes that it would
have been obvious to employ a flexible magnet (Ans. 5). Appellant argues
that this claim is patentable for the same reasons as claim 61 (App. Br. 20).
However, we have affirmed the anticipation rejection of claim 61. Thus, we
do not find Appellant’s argument persuasive. We therefore also affirm the
obviousness rejection of claim 70.
SUMMARY
We affirm the anticipation rejection of claims 61, 62, 69, 88, 103,
105-107, and 110 and the obviousness rejection of claim 70.
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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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