Ex Parte Schreiber

Patent Trial and Appeal Board

Aug 31, 2018

14521560 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/521,560 10/23/2014
22908 7590 09/05/2018
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Camille Schreiber
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.
008165.00027 3403
EXAMINER
CHIANG, JENNIFER C
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAMILLE SCHREIBER
Appeal 2018-000676
Application 14/521,560
Technology Center 3700
Before: CHARLES N. GREENHUT, JEREMY M. PLENZLER and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 3-15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2018-000676
Application 14/521,560
CLAIMED SUBJECT MATTER
The claims are directed to an applicator for a cosmetic product and an
applicator assembly including the applicator. Claim 1, reproduced below, is
the sole independent claim:
1. Applicator for cosmetic product comprising:
- a core,
- a plurality of protrusions projecting from the core to form a
brush, and
- a spatula situated in the continuation of the core,
wherein the protrusions and the spatula form a single piece with the
core, said spatula configured to bend.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schefer
Omoski
US 4,662,385 May 5, 1987
US 2011/0297174 Al Dec. 8, 2011
REJECTIONS 1
Claims 1 and 3-15 are rejected under 35 U.S.C. § 103 as being
unpatentable over either one of Schefer or Omoski. Ans. 3.
OPINION
In the Final Action claim 1 was rejected twice, as anticipated by either
one of Schefer or Omo ski. Final Act. 3. In the Final Action claim 2 was
rejected only as anticipated by Omo ski. The October 5, 2016 Advisory
Action indicated that a proposed amendment incorporating the limitations of
claim 2 into claim 1 would be entered for purposes of the present appeal.
1 The posture of this appeal is detailed below.
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Appeal 2018-000676
Application 14/521,560
The Advisory Action cited portions of both Schefer and Omoski regarding
the presently disputed limitation incorporated from claim 2, "configured to
bend." However, the Advisory Action was not entirely clear as to precisely
how amended claim 1 would be rejected for purposes of this appeal, i.e., on
each of Schefer and Omoski, like claim 1 was rejected in the Final Action,
just on Omoski alone, like claim 2 was rejected in the Final Action, or on
some other basis.
Appellant did not argue against a rejection predicated on Schefer.
However, the Answer seems to indicate that claims 1 and 3-152 are rejected
based on Schefer. Appellant elected not to file a Reply Brief.
Because the Advisory Action was unclear and the issues with regard
to both Schefer and Omoski are essentially the same-whether specifying
"plastic, metal, and/ or thermoplastic elastomers, [or] rubber" construction
makes something inherently "configured to bend" (former claim 2/now
claim 1 (Adv. Act.)}-we will treat sole independent claim 1 as rejected on
either of Schefer and Omoski, and Appellant's arguments as directed to a
rejection predicated on either reference.
Although the Examiner changed the statutory basis for the rejections
from anticipation to obviousness, the Examiner nevertheless relied on a
theory of inherency in rejecting the claims as opposed to acknowledging the
differences between the prior art and the claimed subject matter and
providing evidence or reasoning to demonstrate obviousness in light of those
differences, as would typically be done in an obviousness analysis. Ans. 3-
4, 12 ("it would have been obvious to one of ordinary skill in the art at the
time the invention was filed would [sic] recognize that the spatula 18 can be
2 No analysis of claims 3-15 based on Schefer is present in either the Final
Action or the Answer.
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Appeal 2018-000676
Application 14/521,560
configured to bend inherently without affecting the overall operation of the
device."). What the skilled artisan would "recognize" or have considered
"obvious" is not necessarily determinative of "inheren[ cy ]." Schering Corp.
v. Geneva Pharmaceuticals, 339 F. 3d 1373, 1377 (Fed. Cir. 2003). The
Examiner appears to be conflating certain standards for demonstrating
inherency with those for demonstrating obviousness. In relying upon the
theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990);
MPEP § 2112. Determining obviousness involves, inter alia, ascertaining
the differences between the prior art and the claims at issue ( Graham v. John
Deere Co. (383 U.S. 1 (1966)) and, if the claimed subject matter would
nevertheless have been obvious in light of those differences, providing
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int 'l. v. Teleflex, 550 U.S. 398, 418
(2007); MPEP § 2141.
Appellant correctly argues that specifying "plastic, metal, and/or
thermoplastic elastomers, [or] rubber" construction does not, without more,
make something inherently "configured to bend." The Examiner does not
provide sufficient evidence or technical reasoning to establish that the use of
these materials in Schefer or Omoski must necessarily produce objects that
are "configured to bend." See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). Accordingly, the rejections cannot be sustained on the basis of
inherency as set forth by the Examiner. The Examiner does not cite any
additional evidence to account for this deficiency, or articulate any reasoning
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Application 14/521,560
to demonstrate why it would have been obvious to modify the applicators of
Schefer or Omoski so as to be "configured to bend." Accordingly, the
rejections under § 103 cannot be sustained on the basis set forth by the
Examiner.
DECISION
The Examiner's rejections are reversed.
REVERSED
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