Ex Parte Lim

Patent Trials and Appeals Board

Mar 22, 2019

13971734 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/971,734 08/20/2013
28075 7590 03/26/2019
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Cindy Sean Yuei Lim
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.
1396.1027101 3002
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
GEN.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CINDY SEAN YUEI LIM 1
Appeal 2017-011451
Application 13/971,734
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and TA WEN
CHANG, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a cosmetic system comprising
a handle, tweezers, and an applicator. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103. Pursuant to 35 U.S.C. § 134, Appellant
appeals the Examiner's determination that the claims are unpatentable. We
have jurisdiction for the appeal under 35 U.S.C. § 6(b). The Examiner's
decision is affirmed.
STATEMENT OF THE CASE
Claims 1-20 stand rejected by the Examiner as follows:
1. Claims 1, 3 and 5-19 under 35 U.S.C. § 103 as obvious in view of
Cho '939 (US 2009/0211939 Al, published Aug. 27, 2008), Litton (US
1 The Appeal Brief ("Appeal Br." entered Mar. 23, 2017) lists Ajinomoto
Co., Inc., as the real party in interest.
Appeal2017-011451
Application 13/971,734
5,970,989, issued Oct. 26, 1999), Cho 25 (US 2009/0054925 Al, published
Feb. 26, 2009), and Bunnell (US 1,666,116, issued Apr. 17, 1928). Ans. 2.
2. Claims 2 and 4 under 35 U.S.C. § 103 as obvious in view of Cho
'939, Litton, Cho '925, Bunnell, and Jang (US 2012/0294666 Al, published
Nov. 22, 2012). Ans. 11.
3. Claim 20 under 35 U.S.C. § 103 as obvious in view of Cho '939,
Litton, Cho '925, Bunnell, and Gueret (US 4,617,948, issued Oct. 21, 1986).
Ans. 12.
Independent claim 5 is illustrative and is reproduced below:
5. A cosmetic system for applying a product to a portion of a
body, the cosmetic system comprising:
a handle having a first end opposite a second end;
a cavity arranged in the second end of the handle, the
cavity extending towards the first end of the handle;
an applicator having a first end fixed to the first end of
the handle and a second end distal to the first end of the
applicator for grooming or applying product to a portion of a
body;
a tweezer having a pinching tip opposite to a fulcrum, the
tweezer removably disposed in the cavity arranged in the
second end of the handle; and
a cap fixed to the fulcrum of the tweezer,
wherein when the tweezer is removably disposed in the
cavity arranged in the second end of the handle, the pinching tip
and the fulcrum of the tweezer and the second end of the
applicator form a substantially straight line such that the second
end of the applicator extends substantially opposite the fulcrum
along the straight line and the pinching tip is held in a closed
position to keep the cooperating edges of the pinching tip
undamaged, and
wherein the second end of the handle has a substantially
cylindrical exterior profile that provides a first gripping surface,
and the cap has a substantially cylindrical exterior profile that
provides a second gripping surface, such that when the cap is
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Appeal2017-011451
Application 13/971,734
removably coupled with the second end of the handle, the first
and second gripping surfaces form a single gripping surface
having continuously smooth exterior profile.
REJECTION OF INDEPENDENT CLAIMS 5 AND 10
To illustrate an embodiment of claim 5, Figure 1 of the Specification
is reproduced below (annotations added):
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Figure 1 of the Specification shows an embodiment of the claimed
cosmetic system comprising: (1) "a handle [106] having a first end [120(A)]
opposite a second end [120(B)]"; (2) "an applicator [132] having a first end
fixed to the first end of the handle" (120A); (3) "a second end distal to the
first end of the applicator for grooming or applying product to a portion of a
3
Appeal2017-011451
Application 13/971,734
body" (132, I34(A), I34(B)); and ( 4) a "tweezer [104, I24(A), I24(B)]
removably disposed in the cavity [ 106] arranged in the second end of the
handle [106]."
The Examiner found that Cho '939 describes, as shown in Fig. 3A,
"an eyebrow pencil attaching to a cover fused to a container housing a
tweezers which has a bottom end acting as a handle and a cover to close the
container" (Cho 939, ,r 15). Final Act. 2--4. Fig. 3A of Cho '939 is
reproduced below (with annotations):
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Fig. 3A of Cho '939 shows "two vertically fused covers [I la and 1] as
an example of a carry-on organizer 100 fused in a vertical orientation." Cho
'939 ,r 23. Cover 1, housing an eyebrow pencil 14, is fused to container I la
4
Appeal2017-011451
Application 13/971,734
"housing a beauty implement like a tweezers 12." Id. Thus, Cho '939
shows a tweezer 12 disposed in a cavity of a handle I la as required by claim
5.
The Examiner found that Cho '939 does not show the limitation of
claim 5 in Fig. 3A of "an applicator having a first end fixed to the first end
of the handle and a second end distal to the first end of the applicator for
grooming or applying product to a portion of a body." Specifically, the end
of the applicator ("eyebrow pencil 14") is not shown in Cho '939 as being
"fixed" to an "end" of the cover ("handle" of claim 5). However, the
Examiner determined it would have been obvious to one of ordinary skill in
the art to fix the eyebrow pencil to one end of the fused cover 1 (shown as a
circular shape between I la and 1 in Fig. 3A). The Examiner based this
determination on the following disclosures in Cho '939:
The design of the covers, cover/handle, connectors, and
cover/connectors and cover/handle/connectors, some but not all
of which are shown in the figures provided can be designed or
modified so long as the claimed fusion of covers, holders,
containers, covers/holders/containers combinations are
maintained either in the vertical or horizontal orientation.
Cho '939 ,r 23.
The method of attachments to the cover 1, the means for
covering the holder 9 and methods of securing the beauty
implements inside a container can be varied. The examples
shown above are only a few of the many variations that can be
used.
Cho '939 ,r 26.
Based on these disclosures and others in Cho '939, the Examiner
found that Cho is not limited to the specific combinations described in it, but
teaches that other suitable combinations are contemplated. Ans. 4. The
5
Appeal2017-011451
Application 13/971,734
Examiner provided a composite drawing to illustrate how Cho '939 would
be modified to arrive at the recited "applicator" structure of claim 5. Ans. 5.
The Examiner further cited Litton as establishing that the
"combination of fused cover and cap with applicator [is] well-known in the
art." Ans. 4. Fig. 3 of Litton shows an applicator fixed to an end of a handle
( as required by claim 5), where the handle has a cavity for another cosmetic
implement as does the claimed cosmetic system. Fig. 3 of Litton is
reproduced below (with annotations added):
6
Appeal2017-011451
Application 13/971,734
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Fig. 3 of Litton (reproduced above) shows brush 9 which fits into
compartment 7. Litton 2: 65-3:2. Litton also teaches that a lip liner pencil
can be inserted into compartment 7. Litton 3: 14-16. Compartment 7 has
one end to which applicator 15 ("mascara wand") is fixed and extends
distally. Litton 2: 43-45 ("Affixed to the inner surface 5 of the closure 4 is a
mascara wand 10 containing a brush 11 at its distal end."). 2 is a reservoir
for holding mascara. Litton 2: 36-37. When the brush 9 fits into
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Appeal2017-011451
Application 13/971,734
compartment 7, compartment 7 can serve as a handle to hold the mascara
wand 10.
Fig. 3 of Litton therefore shows the following limitations of claim 5:
"a cavity [compartment 7] arranged in the ... end of the handle [4]", "the
cavity extending towards the first end of the handle [5/6]", and "an
applicator [ 15 of Fig. 3] having a first end fixed to the first end of the
handle."
Handle argument
Appellants argue:
none of the examples of Cho '939 appear to include a handle of
an implement configured to receive another implement (for
example, the claimed tweezers). In each of the examples, a
separate holder or container is used to store the implement. The
Examiner appears to equate these holders with the claimed
handle. Cho '939 clearly discloses the holders, covers, and/or
containers are configured to receive an implement and are not a
part of the implement themselves.
Reply Br. 2 ( emphasis added).
This argument does not persuade us that the Examiner erred in
rejecting the claim as obvious. Fig. 3A of Cho '939 shows tweezers 12
placed in the cavity of container I la (see drawing reproduced above). The
Examiner found that the container 1 la/1 would serve as a handle. Ans. 2.
Appellants have not structurally distinguished the container 1 la/1 from the
claimed "handle." Appellants have also not provided a definition of
"handle" that would distinguish the container 11 a/1 from the claimed
"handle." We therefore refer to the definition of "handle" in a general
purpose dictionary to mean "a part that is designed especially to be grasped
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Appeal2017-011451
Application 13/971,734
by the hand.'' 2 The container l la is designed as "carry-on orga11izer'1 {Cho
'939 ~ 23) and therefore is capable of being grasped by hand. Moreover,
bottom end 15 oftvveezers 12 shown in Fig. 3A; vvhich is inserted into
I la, is expressly characterized as a "handle". Cho '939 i123.
"an applicator having a.first endfixed to the.first end of the handle and a
second end distal ro the first end of the applicator for grooming or
applying product to a portion (~la body"
\Vith respect to the claimed applicator_ Appellants contend that
'"[w]hile Cho '939 appears to disclose that implements can be disposed
within the separate tubular element or organizer, it appears the applicator or
brush is disposed within the tubular element and not facing away" as
required by the claim. Appeal Br. 16. Appellants acknowledge that the
Examiner further cites Litton for this feature, but state:
Litton appears to disclose a makeup kit which enables the
carrying of companion products and/or grooming devices in a
single unit The comb of Litton appears to be used in
combination with the mascara wand.
Appeal Br. 17.
Appellants also argue:
Cho '939 appears to be directed toward a new organizer for
existing beauty implements, rather than redesigning the
implements themselves. The Examiner's stated reasoning for
modifying Cho is not understood and appears to be a
conclusory statement Absent the instant disclosure there
appears to be no reason to modify an organizer of beauty
implements to include fused beauty implements as asserted by
the Examiner.
2 https://www.merriam-webster.com/dictionary/handle
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Appeal2017-011451
Application 13/971,734
Appeal Br. 17.
Appellants' argument is not persuasive. As found by the Examiner,
Cho '939 has explicit disclosure that modifications to the specifically
disclosed embodiments shown in the figures may be made. Ans. 3-5; Cho
939 ,r,r 23, 26 (reproduced above), 5, 6. Litton expressly teaches a makeup
kit comprising two cosmetic products in a single device (see Fig. 3
reproduced above) organized in a similar fashion as in Cho '939. The
figures are reproduced again below for comparative purposes:
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