Ex Parte Neuner et al

Board of Patent Appeals and Interferences

Nov 18, 2010

11068704 (B.P.A.I. Nov. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHARLES NEUNER and WILLIAM BICKFORD
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Appeal 2009-009068
Application 11/068,704
Technology Center 3700
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Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009068
Application 11/068,704

2
The Appellants appeal the Examiner’s final decision rejecting claims 1
1-12 under 35 U.S.C. § 134. More specifically, the Examiner rejects claims 2
1-4 and 6-12 under 35 U.S.C. § 103(a) as being unpatentable over Lhuisset 3
(US 5,697,720, issued Dec. 16, 1997) and Gueret (US 6,033,142, issued 4
Mar. 7, 2000); and claim 5 under § 103(a) as being unpatentable over 5
Lhuisset, Gueret and Carluccio (US 4,390,298, issued Jun. 28, 1983). The 6
Examiner indicates that the subject matter of claim 13-19 is allowable. We 7
have jurisdiction over the appeal under 35 U.S.C. § 6(b). 8
We REVERSE. 9
The claimed subject matter relates to a cosmetic wiper modified to 10
possess one or more means for allowing air to move from the inside to the 11
outside of the mascara bottle during a modified filling procedure. (Spec. 3.) 12
In accordance with one such means, the wiper comprises a hollow cylinder 13
(Spec. 4) having one or more blind grooves recessed into the outer wall of 14
the wiper (Spec. 6 and figs. 4-6.) When the wiper is partially inserted in a 15
neck of the mascara bottle, portions of the groove may be located above or 16
below an airtight seal between the wiper and neck of the bottle to facilitate 17
the movement of air while the bottle is being filled. (Spec. 6.) When the 18
wiper is fully inserted into the neck, the groove is enclosed by the neck and 19
an airtight seal is formed between the wiper and the neck. (Spec. 9-10.) 20
Claims 1, 11 and 12 are independent claims. Claim 1 recites: 21
1. A cosmetic wiper comprising a hollow cylinder 22
having an outer wall, the outer wall comprising: 23
an upper section terminating in an upper 24
orifice; 25
a tapered section located below the upper 26
section and terminating in an a lower 27
orifice; 28
Appeal 2009-009068
Application 11/068,704

3
upper and lower circumferential beads 1
located on the upper section; and 2
a wiper groove recessed into the outer wall 3
of the cylinder such that a first portion of 4
the wiper groove is located below the 5
lower circumferential bead and a second 6
portion is located above the lower 7
circumferential bead. 8
9
Claim 11 recites a cosmetic package including a bottle having a neck 10
and a cosmetic wiper located in the neck of the bottle. An airtight seal is 11
formed between at least a portion of the wiper and an inner wall of the neck. 12
The cosmetic wiper includes a wiper groove recessed into the outer wall of 13
the cylinder. A first portion of the wiper groove is located below the airtight 14
seal and a second portion is located above the airtight seal. 15
Claim 12 recites, in its entirety, “[a] method of filling a package that 16
has a wiper, the method comprising displacing the air inside the package 17
such that at least some of the displaced air flows out of the package without 18
flowing through the wiper.” 19
Lhuisset describes a liquid filled container having a wiper 1 seated in 20
the neck 17 of the container. The wiper 1 has an upper orifice 2; lower 21
orifice 9; wall 5; and a single bead 16 around the wiper 1. The wiper 1 also 22
has a groove formed when the outer surface of a lug 6 defined on either 23
annular side by slots 7 is depressed below the outer surface of the remainder 24
of the wiper 1. (Lhuisset, col. 2, l. 66 – col. 3, l. 10; col. 3, ll. 37-44; and fig 25
1.) Groove 7 does not interrupt bead 16. (See, e.g., Lhuisset, fig. 2.) 26
Figure 2D of Gueret depicts a wiper 11 having upper and lower beads, 27
both labeled 21, the upper bead being the bead closest to annular edge 20. 28
(See also Gueret, col. 9, ll. 47-52.) Gueret also describes a through groove, 29
Appeal 2009-009068
Application 11/068,704

4
namely, slot 14. (Gueret, col. 7, l. 65 – col. 8, l. 6.) The groove 14 does not 1
interrupt either the upper bead 21 or the lower bead 21. (See Gueret, fig. 2
2D.) 3
4
Claims 1, 5 and 11 5
The Examiner concludes that it would have been obvious “to provide 6
a lower bead (a second bead) on the wiper of Lhuisset in view of the 7
teaching of Gueret (Fig. 2D) in an apart manner that as a result the lower 8
bead is located over the groove 7.” (Ans. 5.) The Examiner reasons that 9
“[t]he added lower bead (second bead) to the groove 7 of Lhuisset would not 10
destroy the usefulness of [the] existing upper bead but rather enhance the 11
gripping effect.” (Id.) 12
Even assuming for purposes of this appeal only that the Examiner has 13
articulated an apparent reason for adding a lower bead to the outer surface of 14
the wiper body of Lhuisset, the Appellants are correct in arguing that the 15
Examiner has articulated no reason why the lower bead should have been 16
placed such that a first portion of the wiper groove was located below the 17
lower bead and a second portion of the wiper groove was located above the 18
lower bead. (See Br. 4.) The placement would not have been inevitable, as 19
suggested at one point in the Examiner’s Answer. (See Ans. 3, ll. 17-19.) 20
The mere possibility that one of ordinary skill in the art might have had 21
reason to space the proposed lower bead from the bead already disclosed by 22
Lhuisset does not imply, as suggested at page 5 of the Answer, that one of 23
ordinary skill would locate the bead over the wiper groove, that is, over the 24
lugs 6 and the slots 7. 25
Appeal 2009-009068
Application 11/068,704

5
The Examiner provides no evidence or technical reasoning adequate 1
to show that locating the proposed lower bead over the wiper groove would 2
enhance gripping. In fact, the Appellants provide technical reasoning 3
implying that one of ordinary skill in the art, faced with a design choice as to 4
where to place a lower bead, could enhance the gripping of the lower bead 5
by placing the bead above the upper edges of the lugs 6 and the slots 7. (See 6
Br. 4-5.) 7
We do not sustain the rejections of claims 1 and 11 under § 103(a) as 8
being unpatentable over Lhuisset and Gueret. Consequently, we also do not 9
sustain the rejections of dependent claims 2-4 and 6-10 under § 103(a) as 10
being unpatentable over Lhuisset and Gueret. 11
Turning to the rejection of claim 5 under § 103(a), Carluccio describes 12
a wiper having a helical groove 34 so that when the applicator 16 is 13
withdrawn, the applicator 16 causes the opening to be drawn in and around 14
the rod and head of the applicator 16 to facilitate the removal of excess 15
liquid. (Carluccio, col. 1, ll. 53-57 and col. 2, ll. 34-49.) The Examiner does 16
not point out how the teachings of Carluccio might remedy the deficiency in 17
the disclosure of Lhuisset and Gueret pointed out in connection with the 18
rejection of claims 1 and 11. Since the Examiner’s conclusion of 19
obviousness lacks rational underpinning, we do not sustain the Examiner’s 20
final decision rejecting claim 5 under § 103(a) as being unpatentable over 21
Lhuisset, Gueret and Carluccio. 22
23
Claim 12 24
The Examiner reasons that the limitations of claim 12 would be met 25
were Lhuisset’s bottle filled with a cosmetic product while the wiper was 26
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Application 11/068,704

6
removed. (Id.) Air would escape from the bottle without flowing through 1
the wiper as a trivial matter. After filling the bottle, the wiper could be 2
inserted back into the bottle. (Id.) The Appellants contend that the 3
Examiner has ignored the limitation requiring some air to flow out of a 4
package that has a wiper without some air flowing through the wiper. (App. 5
Br. 8.) 6
The Examiner misconstrues the term “the package” in the displacing 7
step of method claim 12. The preamble of claim 12 recites a “method of 8
filling a package that has a wiper.” The recitation that the package has a 9
wiper is not a mere statement of intended use—the preamble states that the 10
package “has a wiper” and not merely that it may be used with a wiper. 11
Furthermore, the recitation that “at least some of the displaced air flows out 12
of the package without flowing through the wiper” implies that the wiper is 13
present on the package during the sole step of the claimed method. Any 14
interpretation of claim 12 broad enough to encompass a step of displacing 15
the air inside the package while the package does not have a wiper is 16
unreasonably broad. 17
The Examiner does not provide a reasoned statement explaining why 18
the step of displacing air from inside a package that has a wiper without 19
some air flowing through the wiper would have been rendered obvious by 20
the teachings of Lhuisset and Gueret. We do not sustain the Examiner’s 21
rejection of claim 12 under § 103(a) as being unpatentable over Lhuisset and 22
Gueret. 23
Appeal 2009-009068
Application 11/068,704

7
DECISION 1
We REVERSE the Examiner’s decision rejecting claims 1-12. 2
3
REVERSED 4
5
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Klh 8
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THE ESTEE LAUDER COS, INC 12
155 PINELAWN ROAD 13
STE 345 S 14
MELVILLE, NY 11747 15