Ex Parte Simard

Patent Trial and Appeal Board

Dec 7, 2018

13744684 (P.T.A.B. Dec. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/744,684
60723 7590
Avon Products, Inc.
1 Avon Place
Suffern, NY 10901
FILING DATE FIRST NAMED INVENTOR
01/18/2013 Marisol Simard
12/11/2018
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.
CR141Q-US 4982
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
12/11/2018 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):
PATENT.DEPARTMENT@AVON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARISOL SIMARD 1
Appeal2017-006699
Application 13/744,684
Technology Center 3700
Before TONI R. SCHEINER, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to a groomer which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as Avon Products, Inc.
Appeal Br. 2.
2 We have considered and herein refer to the Specification of Jan. 18, 2013
("Spec."); Final Office Action ofNov. 19, 2015 ("Final Act."); Appeal Brief
of July 1, 2016 ("Br."); Examiner's Answer of Dec. 13, 2016 ("Ans."); and
Reply Brief of Feb. 13, 2017 ("Reply Br.").
Appeal2017-006699
Application 13/744,684
STATEMENT OF THE CASE
"Conventional integument groomers may generally include a brush
attached to an elongated rod that is also connected to a handle." Spec. ,r 3.
"During grooming of the eyelashes, the groomer is twisted or rotated along
its central axis and moved in a vertical, up-and-down motion, while held in a
horizontal or vertical position, such as up to the forehead to do the top
eyelashes, and down from the forehead to do the bottom eyelashes." Spec.
,r 4. "Because of the manner in which a conventional groomer is held and
manipulated, grooming eyelashes, eyebrows and/or other integuments can be
a difficult and tiresome exercise." Spec. ,r 5.
The Specification describes "an ergonomic groomer for grooming to
an integument, methods of using the ergonomic groomer, and kits including
the ergonomic groomer." Spec. ,r 6.
Claims 1-9, 11, and 12 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A groomer comprising:
a handle portion having a front side opposed from a back
side, the handle portion being suitably dimensioned to permit
the handle portion to be held between the thumb and fingers
during use; and
a head portion comprising a generally flat portion such
that said head portion defines a longitudinal plane therethrough,
said head portion having a width between 12.5 and 50 mm at
the distal end and a thickness between 1.5 and 10 mm at the
thickest part of the head portion;
said head portion comprising a row of bristles disposed
along the distal end of the head portion and extending
substantially across the width of the head portion, said row
having alternating bristles projecting to opposing sides of said
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Application 13/744,684
plane through said head portion such that adjacent bristles
define an angle of from about 10 degrees to about 25 degrees;
wherein the handle portion and the head portion are
joined in a manner which permits the head portion to pivot with
respect to the handle portion, the joint being located at a
position away from an axis extending longitudinally through
the handle portion and towards the back side of the handle
portion.
The claims stand rejected3 as follows:
Claims 1-5, 8, 9, and 11 have been rejected under 35 U.S.C. § I03(a)
as unpatentable over Cerutti4 in view of Gueret. 5
Claims 6 and 7 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Cerutti in view of Gueret in further view of Cassai. 6
Claim 12 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Cerutti in view of Gueret in further view of Montoli. 7
DISCUSSION
Cerutti Combined with Gueret
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
3 Claims 1-9, 11, and 12 were rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2. This rejection was withdrawn
by the Examiner. Adv. Act. mailed Fed. 12, 2016.
4 Cerutti et al. WO 2010/042878 Al, published Apr. 15, 2010 ("Cerutti
5 Gueret, WO 2011/077318 A2, published June 30, 2011 ("Gueret").
6 Cassai, US 4,165,755, issued Aug. 28, 1979 ("Cassai").
7 Montoli, US 2008/0178901 Al, published July 31, 2008 ("Montoli").
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Appeal2017-006699
Application 13/744,684
claims 1-5, 8, 9, and 11 would have been obvious over Cerutti combined
with Gueret.
The Examiner finds that Cerutti discloses an applicator comprising a
handle with a front and back; a head portion comprising a flat portion,
wherein the head portion defines a longitudinal plane there through. Final
Act. 4. The Examiner finds that the head portion and handle as joined so
that the head portion can pivot with respect to the handle. Id. Referring to
an annotated version of Figure 1 of Cerutti (reproduced below), the
Examiner finds that the joint between the head and the handle is located at
"a position away from an axis extending longitudinally through the handle
portion and towards the back side of the handle." Id.
l
Hinge
Positioned in
Bent Portion
l._16
Handle
,,, ... ,.
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- - ·· -~- m1111111111rnr1J ·· --~ · -- 11
Bent
Portion
(22/24)
\Hinge
Position in
Head
FIG.1
Annotated Figure 1 of Cerutti showing an applicator.
The Examiner finds that while Cerutti teaches that the head has at
least one row of bristles, Cerutti does not teach alternating bristles along a
row that project to opposing sides of the plane through the head and that the
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Application 13/744,684
bristles define an angle of from 10 degrees to about 25 degrees; these
limitations are taught by Gueret. Id. at 4--5.
The Examiner concludes
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the row of bristles at
the distal end of the applicator disclosed by Cerutti et al. such
that the bristles alternate along the row and project to opposing
sides the longitudinal plane to define an angle therebetween
from about 10 degrees to about 25 degrees as taught by Gueret,
since Cerutti et al. teach any type of textured/bristled surface
can be used to hold and transfer the cosmetic and Gueret
demonstrates providing alternating bristles in a row in opposing
directions creating an angle therebetween as claimed, is a well-
known bristle configuration in the art for use in holding and
transferring a cosmetic composition such as mascara.
Id. at 6.
Appellant argues that Cerutti does not teach or suggest a 'joint being
located at a position away from an axis extending longitudinally through the
handle portion and towards the back side of the handle portion." Appeal Br.
3. Appellant contends that Cerutti does not suggest that a hinge could be
placed within the bended shape portion of the applicator. Id. at 4. Appellant
contends that to the extent Cerutti teaches the use of a hinge, it teaches that
the hinge should be placed at the intersection of the I-I and II-II axes.
Appeal Br. 5.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
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Application 13/744,684
art. The following findings are included for emphasis and reference
purposes.
FF 1. Cerutti discloses an ergonomic mascara applicator having a
head and a handle where the head can be rotatably positioned at an obtuse
angel relative to the handle. Cerutti, Abstract.
FF2. Cerutti teaches
In certain embodiments, the head portion is rotatably
adjustable with respect to said handle portion so as to adjust the
obtuse angle between said longitudinal axis of said head portion
and said longitudinal axis of said handle portion. Preferably,
the head portion and the handle portion are rotatable about an
axis orthogonal to the longitudinal axis of the head portion and
the longitudinal axis of the handle portion. The applicator may
further include a hinge permitting rotation of the head portion
with respect to the handle portion.
Cerutti ,r 13 .
FF3. Referring to Figure 1 reproduced above, Cerutti teaches that
"[i]n one embodiment; the handle portion 16 may be connected to the head
portion 14 via an adjustable hinge (not shown). Specifically, the range of
motion of the adjustable hinge may be limited to form only obtuse angles."
Cerutti ,r 3 9.
FF4. Cerutti teaches
The head portion 16 may also include an additional axis
of rotation perpendicular to the longitudinal axis 11-11 of the
head portion 16 (not shown). The head portion 16 may be
further adjustable about this additional axis. Specifically, the
head portion 16 may be formed from two pieces rotatably
attached to each other by an adjustable hinge along this
additional axis. The range of motion of the adjustable hinge
may be limited to form only obtuse angles. Preferably, the
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Appeal2017-006699
Application 13/744,684
adjustable hinge may be limited to movements between from
about 95 to about 175 degrees, more preferably from about 100
to about 170 degrees, even more preferred from about 100 to
about 170 degrees, ... more preferred still from about 105 to
about 165 degrees, and most preferably from about 110 to about
160 degrees.
Cerutti ,r 45.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Cerutti combined with Gueret. Appellant has
not produced evidence showing, or persuasively argued, that the Examiner's
determinations on obviousness are incorrect. Only those arguments made by
Appellant in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015). Appellant does not provide separate arguments for claims 2-5, 8, 9,
and 11. We have identified claim 1 as representative; therefore, all claims
fall with claim 1. We address Appellant's arguments below.
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Application 13/744,684
Appellant contends that Cerutti does not teach or suggest positioning
a hinge between the head and the handle within the curved portion of the
applicator let alone proximal to the head as suggested by the Examiner.
Appeal Br. 4. Appellant contends that to the extent Cerutti discloses a
hinge, the hinge must be located at the intersection of the longitudinal axis
of the head and the longitudinal axis of the handle. Id. at 5. Appellant
argues that this would place the hinge directly on the longitudinal axis of the
handle rather than offset from that axis as required by the claims. Id.
We have considered Appellant's argument and are not persuaded. As
the Examiner points out, Cerutti discloses an embodiment where the head
comprises two pieces connected by a hinge allowing rotation about an axis
perpendicular to the longitudinal axis of the head. Final Act. 5, Cerutti ,r 45
("The head portion 16 may be further adjustable about this additional axis.
Specifically, the head portion 16 may be formed from two pieces rotatably
attached to each other by an adjustable hinge along this additional axis.").
We agree with the Examiner that this would result in a configuration where
the hinge is offset from the longitudinal axis of the handle. Id.
Appellant argues that the configuration described in paragraph 45 of
Cerutti would not yield the present invention. Appeal Br. 6. Appellant
contends that the embodiment suggested by the Examiner would result in
configuration as shown below:
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Appeal2017-006699
Application 13/744,684
.•'
.
.....
, .. -· .--·
16
66
L
Cerutti Annotated Figure 1
Appellant's annotated Figure 1 of Cerutti showing axis III-III.
Appellant argues that rotation about axis III-III would result in the
head moving in and out of the paper and not pivoting with respect to the
handle. Id.
We are not persuaded by Appellant's argument. The configuration
shown by Appellant's annotated Figure 1 above ignores the overall teaching
of Cerutti, which calls for an applicator having a relatively wide body as
shown in Figure 2 below.
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Appeal2017-006699
Application 13/744,684
Figure 2 of Cerutti showing a perspective view of an applicator.
As the Examiner points out, in order to have the head move as
suggested by Appellant, it would require significant modification of the
applicator. Ans. 14. The logical interpretation of paragraph 45 of Cerutti
would be that the head moves in the same manner as recited in the instant
disclosure. Id. at 14--15.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Cerutti combined with Gueret.
Claims 2-5, 8, 9, and 11 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/744,684
Cerutti combined with Gueret and Cassai
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 6 and 7 would have been obvious over Cerutti combined with Gueret
and Cassai.
The Examiner's findings with respect to Cerutti and Gueret are
discussed above. The Examiner finds that Cassai discloses an applicator
having a stepped pin hinge "which allow the head portion to pivot in both
directions about 90 degrees with respect to the axis extending longitudinally
through the handle portion and towards the back side of the handle portion
facilitating use of opposing sides of the applicator." Final Act. 8. The
Examiner concludes
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the hinge of
the applicator disclosed by Cerutti et al. such that the hinge be a
stepped pin hinge allowing the head portion to pivot in both
directions about 90 degrees with respect to the axis extending
longitudinally through the handle portion and towards the back
side of the handle portion as taught by Cassai in order to allow
a user to selectively ... control the angle between the head
portion and the handle portion and facilitate use of opposing
sides of the applicator.
Id. at 8-9.
Appellant argues that Cassai does not teach or suggest a stepped pin
hinge nor does Cassai contain any mechanism which could be considered a
step pin hinge. Appeal Br. 7. Appellant also argues that none of the
references teach or suggest that the head is pivotable in both directions about
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Application 13/744,684
90 degrees as required by claims 7. Appeal Br. 8. Appellant contends that
Cerutti teaches away from such a configuration. Id.
Findings of Fact
FF5. Cassai discloses a mascara wand having a shaft extension which
can pivot about the main shaft as shown in Figure 4 below.
Flt.4
20
Figure 4 of Cassai showing a mascara wand.
FF6. Cassai teaches
FIG. 6 [ show below] shows a first modified form of the
pivot means designated 3 8a wherein the means comprises a first
pivot extension 100 projecting from the first end 30a of the
extension shaft. A mating second pivot extension 102 projects
from the distal end section 28a of the main shaft, and the pivot
extensions each have openings 104 and 106, respectively,
formed therein. The openings are coaligned, and a pivot axle
108 extends therethrough. The abutting faces of the pivot
extension have mating radial serrations 110, 112 thereon
providing a series of stops for rotation of the shaft extension.
Cassai, col. 2, 11. 48-59 (emphasis added).
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