Ex Parte Kalish et al

Board of Patent Appeals and Interferences

Sep 11, 2012

11670306 (B.P.A.I. Sep. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/670,306 02/01/2007 Jonathan Reed Kalish 007187.00001 6870
22908 7590 09/11/2012
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
DOAN, ROBYN KIEU
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
09/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JONATHAN REED KALISH and
CATHY GUNN KALISH
__________

Appeal 2010-009658
Application 11/670,306
Technology Center 3700
___________

Before JAMESON LEE, SALLY GARDNER LANE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
Carroll 2,841,811 July 8, 1958
Smith 3,387,313 June 11, 1968
Lathrop 3,014,579 Dec. 26, 1961

Appeal No. 2010-009658
Application 11/670,306

2

The Rejections on Appeal
1. Claims 1, 2, 5-14, 16-18, and 20 were finally rejected under
35 U.S.C. § 103 as obvious over Carroll and Smith.
2. Claims 3, 4, 15, and 19 were finally rejected under 35 U.S.C.
§ 103 as obvious over Carroll, Smith, and Lathrop.
The Invention
The invention is directed to an apparatus for cleaning nails. The
independent claims are claims 1, 11, and 18. Claims 1 and 18 require,
among other features, a nail cleaning region and a plurality of nail cleaning
elements each configured to clean a different nail and minimizing
contaminating any other nail cleaning element in the same nail cleaning
region. Claim 11 requires a plurality of nail cleaning elements positioned to
allow cleaning of a different nail without cross contaminating any other nail
cleaning element in the same nail cleaning region.
Appellant’s Figure 1 is reproduced below and illustrates a first nail
cleaning region including a plurality of nail cleaning elements 135, and a
second nail cleaning region having a plurality of nail cleaning elements 140:
App
App

A.

any o
featu
nail
inten
is no
alter
rejec
misp
eal No. 20
lication 11
Figu
The Obv
5-14, 16
At the ou
ther nail c
re of with
cleaning re
ded purpo
t altogethe
native. Ne
tion is bas
laced and
10-009658
/670,306
re 1 show
iousness R
-18, and 2
tset, it is n
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out contam
gion are s
se in any c
r clear wh
vertheless
ed on not
rejected.

s a perspec
Appella
DIS
ejection o
0 over Car
oted that
ement in t
inating an
ubstantive
laim prea
ether the E
, we make
giving wei
3
tive view
nt’s inven
CUSSION
f Claims
roll and Sm
the feature
he same n
y other na
limitation
mble, whic
xaminer t
clear here
ght to tho
of an emb
tion

1, 2,
ith
of minim
ail cleanin
il cleaning
s and not
h can pro
akes that v
that to wh
se features
odiment o
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element i
merely a s
perly be ig
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atever ex
, the appro

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aminating
nd the
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tent the
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f
Appeal No. 2010-009658
Application 11/670,306

4

For two reasons, we cannot sustain the rejection.
First, under Graham v. John Deere, 383 U.S. 1, 6 (1966), an
obviousness conclusion depends on four underlying factual inquiries: (1)
scope and content of the prior art; (2) differences between the claimed
invention and the prior art; (3) the level of ordinary skill in the art; and (4)
secondary considerations based on objective evidence of nonobviousness if
there is any. We have reviewed the Examiner’s stated grounds of rejection
and do not see where, for any specific claim, a determination has been made
on the difference between the claimed invention and the prior art. The
Examiner’s addressing all elements of claims 1, 2, 5-14, 16-18, and 20
collectively as though there is just one big claim fails to provide a proper
analysis for any one claim. It does not inform us, for any claim, what is the
determined difference between the claimed invention and the prior art.
Also, at least for claims 1 and 11 and claims dependent thereon, the
Examiner did not properly determine the difference between the claimed
invention and the prior art because a means-plus-function element under
35 U.S.C. § 112, sixth paragraph, has not been recognized and appropriately
construed. Under 35 U.S.C. § 112, sixth paragraph, an element in a claim
for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof.
The word “means” is not the only way to trigger the application of
35 U.S.C. § 112, sixth paragraph, to a functionally recited limitation. The
Court of Appeals for the Federal Circuit has set forth the appropriate manner
Appeal No. 2010-009658
Application 11/670,306

5

of determining whether means-plus-function element treatment under
35 U.S.C. § 112, sixth paragraph, applies to a claim recitation. The
guideline provided by the Court of Appeals for the Federal Circuit is clear.
Use of the word “means” creates a presumption that § 112, sixth paragraph,
applies, and not using the word “means” creates a presumption that § 112,
sixth paragraph, does not apply, Personalized Media Communications LLC
v. International Trade Com’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
Both presumptions can be rebutted. The Federal Circuit stated that in
deciding whether either presumption has been rebutted, the focus remains on
whether the claim itself as properly construed recites “sufficiently definite
structure” to avoid the ambit of § 112, sixth paragraph. Id. at 704; see also
Watts v. XL Systems, Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).
The plurality of nail cleaning elements as recited in claims 1 and 11
fail the test for sufficiently definite structure. No structure is set forth in the
functional language following the words “plurality of nail cleaning
elements,” and the term “element” sets forth no specific structure. The
recitation of a plurality of cleaning elements, followed by only an indication
of the functions the elements perform, fails to set forth any structure to rebut
the presumption that absence of the word “means” indicates non-means-
plus-function recitation. Accordingly, the Examiner did not make the proper
comparison between the claimed feature and the applied prior art.
Secondly, the record does not support the Examiner’s finding (Ans.
3:14-16) that Carroll discloses a plurality of nail cleaning elements where
each element is positioned to permit cleaning of a plurality of nails while
minimizing contaminating other nail cleaning elements. Carroll discloses a
finger cleaning device for cleaning one’s fingers while or after eating foods
App
App

that
muff
repro

botto
such
subs
abso
finge
16, 1
24, a
perso
state

eal No. 20
lication 11
require fin
ins, candy
duced bel
Block 15
m surface
that sides
tantially d
rbent mate
r wiping c
7, 18, and
nd 25 are
n’s finger
s in colum
10-009658
/670,306
ger handli
, nuts and
ow:
Figure
finger c
shown in
s 20 and 2
16, 17, 18
eeper. (Ca
rial such a
oncave po
19, respec
identically
s and fing
n 2, lines

ng such as
the like. (
1 illustrate
leaning de
Figure 1 h
1. (Carrol
and 19 ar
rroll 1:70-
s a sponge
rtions 22,
tively. (C
shaped an
er tips. (C
12-18:

6
fried chic
Carroll 1:
s a perspec
vice accor
as sides 1
l 1:69-70)
e finger tip
72). Bloc
rubber. (
23, 24, an
arroll 2:1-
d are adap
arroll 2:3-
ken, spare
17-22). Fi
tive view
ding to Ca
6, 17, 18,
. The Blo
depth and
k 15 is ma
Carroll 1:
d 25 are pr
3). Conca
ted to rec
5). In that
ribs, corn
gure 1 of C

of a
rroll
and 19, an
ck 15 has
may be
de of resil
65-68). Sp
ovided in
ve portion
eive and c
connectio
on the cob
arroll is
d top and
a thickness
ient
aced
the sides
s 22, 23,
lean a
n, Carroll
,

Appeal No. 2010-009658
Application 11/670,306

7

Concave portions 22, 23, 24, and 25 have laterally
disposed cross serrations 30 and sides 16, 17, 18 and 19 have
vertically disposed serrations 31 adjacent the concave portions.
The serrations give the surface of the sponge a rough texture
which aids in cleaning the fingers. The serrations running in
different directions also enhance the decorativeness of the
design.

As explained by the Examiner, serrations 30 in each concave portion
constitute the plurality of nail cleaning elements. (Ans. 6:15). We agree
with the Examiner that if the serrations can clean one’s finger, they can
clean one’s nail. But we disagree with the Examiner’s reasoning that two
serrations, one positioned near the top and one positioned near the bottom of
a concave portion, are configured to clean different nails and minimize cross
contamination of “any other nail cleaning element” (claims 1 and 18) or
without contaminating “any other nail cleaning element” (claim 11).
There are other serrations 30 between the top serration and the bottom
serration in each concave portion and each is a nail cleaning element no
different from the top serration and the bottom serration. The claims are not
met simply by the top element’s not contaminating the bottom element and
the bottom element’s not contaminating the top element. In claims 1 and 18,
minimizing cross contamination applies to each nail cleaning element, not
just the top element and the bottom element. In claim 11, without
contaminating any other element applies to all the other cleaning elements
and not just the ones on opposing ends.
Carroll describes that its Block 15 is made of resilient absorbent
material such as sponge rubber or the like. (Carroll 1:65-66). Carroll
describes that the entire sponge is moistened prior to use. (Carroll 2:22-23).
Appeal No. 2010-009658
Application 11/670,306

8

We do not see how, and the Examiner has failed to explain in what way,
soiled liquid from one serration 30 does not travel to adjacent serration by
absorption, thus contaminating the next nail cleaning element. Indeed, in
that scenario, it appears that even the nail cleaning element on the opposing
end would eventually get contaminated as through moisture in the block. In
that regard, the Examiner also has not explained why, if any kind of
substantial cleaning force is applied at one end, one with ordinary skill in the
art would not have expected soiled liquid to be forced toward the opposing
end, which would result in contamination of other serrations.
For all of the foregoing reasons, the obviousness rejection of claims 1,
2, 5-14, 16-18, and 20 over Carroll and Smith cannot be sustained.
B. The Obviousness Rejection of Claims 3, 4,
15, and 19 over Carroll, Smith, and Lathrop

Claims 3 and 4 each depend on independent claim 1. Claim 15
depends indirectly on independent claim 11. Claim 19 depends on
independent claim 18. For the rejection of claims 3, 4, 15, and 19, the
Examiner’s reliance on Lathrop does not cure the deficiencies of the
rejection of claims 1, 11, and 18 as has already been discussed above.
Accordingly, the rejection of claims 3, 4, 15, and 19 as obvious over
Carroll, Smith, and Lathrop also cannot be sustained.
CONCLUSION
The rejection of claims 1, 2, 5-14, 16-18, and 20 under 35 U.S.C.
§ 103 as obvious over Carroll and Smith is reversed.
The rejection of claims 3, 4, 15 and 19 under 35 U.S.C. § 103 as
obvious over Carroll, Smith, and Lathrop is reversed.
REVERSED
Appeal No. 2010-009658
Application 11/670,306

9

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