Ex Parte Lim et al

Patent Trial and Appeal Board

Mar 28, 2017

13209187 (P.T.A.B. Mar. 28, 2017)

United States Patent and Trademark Office
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.
13/209,187 08/12/2011 Sean Yuei (Cindy) Lim 1396.1007101 9546
28075 7590 03/30/2017
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
EXAMINER
COX, THADDEUS B
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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
Ex parte SEAN YUEI (CINDY) LIM and JIN CHUL KIM
Appeal 2015-007341
Application 13/209,187
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
This is an appeal under 35U.S.C. § 134 involving claims 2, 4—8, 10,
11, 13—15, and 22—27 (App. Br. 3). Examiner entered rejections under 35
U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants’ invention relates to “a brush having magnetic filaments or
fibers that can be used, not only for magnetic therapy, but also as part of a
1 Appellants identify “[t]he real party in interest [as] HCT Holdings Group
Ltd. The assignee of all right, title and interest, HCT Asia Ltd., is a
subsidiary of HCT Holdings Group Ltd.” (App. Br. 3).
Appeal 2015-007341
Application 13/209,187
user’s daily routine” (Spec. 111). Independent claims 22, 23, and 25 are
representative and reproduced in the Claims Appendix of Appellants’
Appeal Brief. Claims 2, 4—8, 10, 11, 13—15, 24, 26, and 27 depend directly
or indirectly from independent claims 22, 23, and 25, respectively.
Claims 6, 8, 10, 11, 22, 24, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Castelluccio,2 Gueret,3 and
Kipp.4
Claims 2, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castelluccio, Gueret, Kipp, and
Kawano.5
Claims 4, 15, 23, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Castelluccio and Gueret.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castelluccio, Gueret, and Kawano.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Castelluccio suggests
A powder cosmetics brush is provided. The brush has a handle
and bristles and a magnetic element within the ferrule, between
2 Castelluccio, US 8,060,971 Bl, issued Nov. 22, 2011.
3 Gueret, US 2002/0164192 Al, published Nov. 7, 2002.
4 Kipp et al., US 2009/0039995 Al, published Feb. 12, 2009.
5 Kawano et al., US 6,342,167 Bl, issued Jan. 29, 2002.
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Application 13/209,187
the handle into the base of the bristles. A magnetic or an
electromagnet element attracts fine particles of iron-based or
other cosmetic powders or foundations having magnetic-
attractive particles and/or cosmetic particles and facilitates the
application, distribution and removal of excess powder. The
magnetic element is allowed to move within the ferrule such that
sweeping and swirling motion causes it to knock against the
inside wall of the ferrule to thereby dislodge some of the particles
of cosmetic powder. The bristles preferably are flared from one
end to the other and are cross-hatched to provide a first tier of
longer bristles and a second tier of shorter bristles. The two or
more tiers of bristles serve to distribute the powder more evenly
on the face since the bristles will more effectively follow the
contours of the face. A vibrating element may be disposed in the
handle to prevent clumping of the cosmetics powder and assist
in even distribution of same.
(Castelluccio Abstract; see also Final Act.6 3—4, 7—9.)
FF 2. Gueret suggests “[a] device for applying a make-up product includes
an applicator element including a plurality of fibers. The applicator element
is configured to apply a make-up product, and at least one of the fibers
includes at least one particle configured to generate a magnetic field”
(Gueret Abstract; see also Final Act. 4, 8—9).
FF 3. Gueret suggests that the “applicator may include one or more one-
piece magnets in addition to fibers having magnetic properties” (Gueret
1124; see also Final Act. 4, 8—9).
FF 4. Gueret suggests that
[t]he fibers may tend to stand up on the surface of the applicator
... or may tend to take on other orientations depending on their
position relative to the magnet.... This may make it possible,
6 Examiner’s August 27, 2014 Final Office Action.
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Application 13/209,187
for example, to load more product onto the applicator . . ., which
may result in making application of the product softer.
(Gueret 1124; see also Final Act. 4, 8—9.)
ANALYSIS
The combination of Castelluccio and Gueret'.
The cosmetic brush of Appellants’ independent claim 23 comprises,
inter alia, “a first magnetic field provided by [a] permanently magnetic
material; and a second magnetic field, provided by [a] disk shaped
permanent magnet, that supplements the first magnetic field” (Appellants’
claim 23).
The cosmetic brush of Appellants’ independent claim 25 comprises,
inter alia,
a plurality of supple natural fibers coated in or infused
with a permanently magnetic material to provide the cosmetic
brush a first magnetic field; and
a magnet disposed in the handle to provide the cosmetic
brush a second magnetic field;
wherein the second magnetic field supplements the first
magnetic field.
(Appellants’ claim 25.)
Examiner finds that Castelluccio
discloses a cosmetic brush [] (Abstract; Figs. 1-3) for
simultaneously applying a skincare product and magnetic
therapy comprising: a handle [] with a length dimension
extending along a longitudinal axis, the length dimension being
a greatest dimension of the cosmetic brush (Figs. 1 -3); a cosmetic
applicator [] coupled to an end of the handle extending in a
direction substantially parallel to the longitudinal axis (Figs. 1-
3), the cosmetic applicator comprising: a plurality of fibers (col.
4, lines 30-31); and a disk shaped permanent magnet [] disposed
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Application 13/209,187
in the handle that distributes a magnetic flux into the plurality of
fibers, wherein the cosmetic applicator has a magnetic character
comprising a magnetic field provided by the disk shaped
permanent magnet (col. 3, lines 11-12; col. 4, lines 48-50; col. 5,
lines 4-9).
(Final Act. 7—8; see also id. at 6 and 9.)
Examiner acknowledges that Castelluccio
fails to disclose that the fibers are supple natural or synthetic
fibers coated in or infused with a permanently magnetic material
and that the cosmetic applicator has a magnetic character
comprising a magnetic field provided by the permanently
magnetic material, supplemented by the magnetic field provided
by the disk shaped permanent magnet.
{Id. at 8; see also id. at 9.) Therefore, Examiner relies on Gueret to disclose
a cosmetic brush (Figs. 12-16) comprising a cosmetic applicator
comprising a plurality of supple natural or synthetic fibers coated
in or infused with a permanently magnetic material, wherein the
cosmetic applicator has a magnetic character comprising a
magnetic field provided by the permanently magnetic material
([0016]-[0019]), wherein the brush can also include a magnet in
addition to the fibers ([0014]; [0124]), in order to encourage
microcirculation and penetration of active agents and to result in
greater ease of application of the product ([0014]).
{Id. at 8; see also id. at 4 and 9.) Based on the combination of Castelluccio
and Gueret, Examiner concludes that, at the time of Appellants’ invention
was made, it would have been prima facie obvious to
modify the invention of [Castelluccio] with the fibers taught by
Gueret in order to encourage microcirculation and penetration of
active agents and to result in greater ease of application of the
product, ft is noted that this combination results in the magnetic
field provided by the disk shaped permanent magnet
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Application 13/209,187
supplementing the magnetic field provided by the permanently
magnetic material.
(Id. at 8; see also id. at 9-10.) We are not persuaded.
Castelluccio suggests that “[a] magnetic or an electromagnet element
attracts fine particles of iron-based or other cosmetic powders or foundations
having magnetic-attractive particles and/or cosmetic particles and facilitates
the application, distribution and removal of excess powder,” and that “[t]he
magnetic element is allowed to move within the ferrule such that sweeping
and swirling motion causes it to knock against the inside wall of the ferrule
to thereby dislodge some of the particles of cosmetic powder” (FF 1
(emphasis added)). Castelluccio also suggests that “[a] vibrating element
may be disposed in the handle to prevent clumping of the cosmetics powder
and assist in even distribution of same” (FF 1).
Gueret suggests that “[t]he applicator element is configured to apply a
make-up product, and at least one of the fibers includes at least one particle
configured to generate a magnetic field” (FF 2; see also FF 3). Gueret also
suggests that
[t]he fibers may tend to stand up on the surface of the applicator
... or may tend to take on other orientations depending on their
position relative to the magnet. . . . This may make it possible,
for example, to load more product onto the applicator . . ., which
may result in making application of the product softer.
(FF 4 (emphasis added).)
Therefore, we agree with Appellants that
[although the Examiner alleges that the cited references can be
combined, the Examiner has not provided a “sufficient impetus”
or “rational underpinning” for why one of ordinary skill in the
art would be motivated to change the orientation and/or
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Application 13/209,187
composition of fibers of Castelluccio, as taught by Gueret, in
order to achieve “greater ease and softness of application of the
cosmetic product” or “microcirculation and penetration of the
active agents.”
(App. Br. 11-12.)
As Examiner explains, Gueret discloses “that the magnetic field
generated by its bristles encourages [] microcirculation and penetration of []
active agents. This is fundamentally different from Castelluccio’s device,
wherein a basic magnetic field generated by the magnet within the handle
attracts the cosmetic powder to the bristles” (Ans. 3^4 (emphasis added)).
This observation is consistent with Castelluccio’s objective and operation of
“application, distribution and removal of excess powder,” that involves
“sweeping and swirling motion” of the magnetic element, along with another
vibrating element (FF 1), and contrasts with Gueret’s objective and
operation of “applying a make-up product” (FF 2), in which “[t]he fibers
may tend to stand up on the surface of the applicator” “to load more product
onto the applicator” (FF 4). See Belden Inc. v. Berk-Tek LLC, 805F.3d 1064,
1073 (Fed. Cir. 2015) (“[Ojbviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention”).
Examiner did not adequately explain how or why the skilled artisan
would have modified the prior art in the manner required by Appellants’
claimed invention. DePuy Spine, Inc v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1326 (Fed. Cir. 2009) (“the ‘predictable result’ discussed in KSR
refers not only to the expectation that prior art elements are capable of being
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Application 13/209,187
physically combined, but also that the combination would have worked for
its intended purpose”) (internal citations omitted). On this record, the
Examiner failed to establish an evidentiary basis to support a finding that
“[a]ny slight increase in magnetic holding force provided by Gueret’s
magnetic fibers could be easily compensated for with a slight alteration in
the strength of [Castelluccio’s] magnet,” and that “the strength of
[Castelluccio’s] disc magnet could be slightly decreased so as to balance the
overall attraction of cosmetic particles and maintain the ease of particle
removal by knocking the magnet against the inside walls of [Castelluccio’s]
handle” {id. at 6). As Appellants explain, the addition of Gueref s “magnetic
bristles [to Castelluccio’s brush] would increase the magnetic force of the
device of Castelluccio and prevent the superior removal of excess cosmetic.
In addition to changing the principle of operation, this change would render
the device of Castelluccio ‘unsatisfactory for its intended purpose, ’ further
teaching away from the proposed combination” (App. Br. 15—16; see also
Reply Br. 4).
In sum, on this record, Examiner failed to establish an evidentiary
basis to support a conclusion that it would have been obvious to combine
Castelluccio and Gueret to provide “a first magnetic field provided by [a]
permanently magnetic material; and a second magnetic field, provided by [a]
disk shaped permanent magnet, that supplements the first magnetic field” as
required by Appellants’ independent claim 23, or to provide “a first
magnetic field; and a magnet disposed in the handle to provide the cosmetic
brush a second magnetic field; wherein the second magnetic field
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supplements the first magnetic field” as required by Appellants’ independent
claim 25.
The combination of Castelluccio, Gueret, and Kipp:
Based on the combination of Castelluccio, Gueret, and Kipp,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been obvious to “modify the combination of [Castelluccio] and
Gueret [to include a ferromagnetic metal] plate[,] taught by Kipp[,] in order
to evenly distribute the magnetic flux emanating from the magnet” (Final
Act. 4—5; cf. Appellants’ claim 22). Examiner, however, failed to establish
that Kipp makes up for the deficiency in the combination of Castelluccio and
Gueret as discussed above.
The combination of Castelluccio, Gueret, and Kawano, with or without
Kipp:
Based on the combination of Castelluccio, Gueret, and Kawano, with
or without Kipp, Examiner concludes that, at the time Appellants’ invention
was made, it would have been obvious to “modify the combination of
[Castelluccio] and Gueret, with or without Kipp by making the filaments
from PBT and strontium ferrite, as taught by Kawano, in order to maintain
good melt flowability without deterioration in moldability or in uniformity
of magnetic force” {id. at 6), or to “modify the combination of [Castelluccio]
and Gueret by making the filaments from PBT and strontium ferrite, as
taught by Kawano, in order to maintain good melt flowability without
deterioration in moldability or in uniformity of magnetic force” {id. at 10—
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11). Examiner, however, failed to establish that Kawano makes up for the
deficiency in the combination of Castelluccio and Gueret, with or without
Kipp discussed above.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 6, 8, 10, 11, 22, 24, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Castelluccio, Gueret, and
Kipp is reversed.
The rejection of claims 2, 5, and 7 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castelluccio, Gueret, Kipp, and
Kawano is reversed.
The rejection of claims 4, 15, 23, 25, and 26 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Castelluccio and Gueret is reversed.
The rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castelluccio, Gueret, and Kawano is
reversed.
REVERSED
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