Ex Parte Thevenet

Patent Trial and Appeal Board

Oct 26, 2016

11663772 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/663,772 08/16/2007 Ludovic Thevenet
92793 7590 10/28/2016
OLIFF PLC (with Nony)
P.O. Box 320850
Alexandria, VA 22320-4850
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.
131889 2256
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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):
OfficeAction92793@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUDOVIC THEVENET
Appeal2014-004213
Application 11/663,772
Technology Center 1600
Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , ,.. .. ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg crnm1s to a memoa
of applying nail varnish to human nails. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
"The present invention relates to a method of applying makeup to a
natural surface, such as the skin, the nails, hair, or the lips, or to an artificial
1 Appellant identifies the Real Party in Interest as L'Oreal (see
App. Br. 1).
Appeal2014-004213
Application 11/663,772
surface, such as false nails, and it also relates to a kit for implementing such
a method" (Spec. 1: 3-7).
The Claims
Claims 1, 3-12, 14, 16-22, and 33-39 are on appeal.2 Claim 1 is
representative and reads as follows:
1. A method of applying nail varnish to nails, comprising:
manually depositing, using a non-magnetic cosmetic
applicator, at least nail varnish on a surface of a human nail, the
nail varnish comprising:
magnetic bodies that are movable under the effect
of a magnetic field; and
at least one interferential pigment; and
after the depositing, manually exposing at least part of
nail varnish to a magnetic device producing a magnetic field,
the magnetic device located above the nail varnish during the
exposing, so as to modify the orientation and/or displace at least
some of the magnetic bodies resulting in formation of a visible
pattern on the nail varnish according to the magnetic field of the
magnetic device, the magnetic bodies within the pattern being
oriented and/or displaced differently than the magnetic bodies
outside of the pattern.
The issues
A. The Examiner rejected claims 1, 3, 4, 8, 9, 12, 14, 16, 17, and 19-22
under 35 U.S.C. § 103(a) as obvious over Raksha, 3 Harrison,4 Phillips,5 as
evidenced by Kurtus6 and Roeben7 (Ans. 2-9).
2 We note that Appellant acknowledged, in the oral hearing held on
October 14, 2016, that inadvertent typographical errors in claim 33
regarding the phrase "such that neither a magnet of the magnetic
device nor the engaged portion of the magnetic device does not
contact the surface or the composition" were introduced in the
claims filed Dec. 22, 2011.
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Application 11/663,772
B. The Examiner rejected claims 5-7, 10, and 11under35 U.S.C.
§ 103(a) as obvious over Raksha, Harrison, Phillips, and Lauterbach,8 as
evidenced by Kurtus and Roeben (Ans. 9-11).
C. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as obvious
over Raksha, Harrison, Phillips, and Gueret, 9 as evidenced by Kurtus and
Roeben, (Ans. 11-13).
D. The Examiner rejected claims 33-39 under 35 U.S.C. § 103(a) as
obvious over Raksha, Harrison, Phillips, and Jenkins, 10 as evidenced by
Kurtus and Roeben, (Ans. 13-16).
Because all of the rejections rely upon the Raksha reference in
combination with other references and utilize the same reasoning, we will
consider the rejections together.
3 Raksha et al., US 2004/0009309 Al, published Jan. 15, 2004
("Raksha").
4 Harrison et al., US 6,209,548 Bl, issued Apr. 3, 2001
("Harrison).
5 Phillips et al., US 2002/0182383 Al, published Dec. 5, 2002
("Phillips").
6 Kurtus, Ron, Detection of a Magnetic Field,
http://web.archive.org/20040604040622/http://www.school-for-
champions (2004) ("Kurtus").
7 Roeben, Scott, Ferreting Out Funny Money: Fighting
Counterfeiting, () on 03-FEB-2004
from ) ("Roeben").
8 Lauterbach et al., US 5,562,706, issued Oct. 8, 1996
("Lauterbach").
9 Gueret, J., US 2002/0182409 Al, published Dec. 5, 2002
("Gueret").
10 Jenkins, N., US 5,316,026, issued May 31, 1994 ("Jenkins").
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Application 11/663,772
The Examiner finds that "RAKSHA teaches a method of applying
magnetic flake pigments in a fluid medium, aligning according to the
magnetic field of a magnetic device and subsequently curing to fix the
appearance such that a visual effect is achieved" (Ans. 5). The Examiner
further finds that "[t]his method is taught as being broadly applicable to,
among other fields, cosmetics; and RAKSHA clearly teaches that color
shifting visual effect flake pigments, as utilized in their invention, are also
utilized in fingernail polish" (id.).
The Examiner finds Harrison teaches "applying a cosmetic nail paint
with a pen-like applicator" and a "pearlescent pigment" (Ans. 5---6). The
Examiner finds Phillips teaches "'three dimensional-like effects are
produced by exposing the magnetic pigment coating to [an] external
magnetic force'" (Ans. 6, citing Phillips i-f 51 ).
The Examiner finds that:
A person having ordinary skill in the art would have recognized
that the method steps of (1) applying (manually depositing) a
composition of magnetic pigment flakes in a fluid carrier to a
substrate; (2) applying a magnetic field (i.e. manually exposing
to a magnetic field) to the magnetic pigment flakes while the
carrier is still fluid; and (3) curing (drying) to fix the alignment
of the magnetic pigment flakes, having been taught as
enhancing the visual appearance due to aggregate optical effects
of the planarized pigment flakes, would have predictably
functioned as enhancing the visual appearance due to
aggregate optical effects of the planarized pigment flakes in a
method of applying a fingernail polish (varnish).
(Ans. 8).
Appellant contends that "[ n ]one of the pigment flakes described in the
background section of Raksha are explicitly magnetic, nor is there any
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Application 11/663,772
indication that pigments in nail varnish, which are well known, should be
magnetically manipulated while on nails to produce a pattern" (App. Br. 8).
Appellant contends that "Raksha provides no starting point or guidance to
suggest that its methods are applicable in the field of cosmetics, and/or how
to apply or adapt the teachings therein in order to practice Appellant's
claimed methods" (App. Br. 12). Appellant contends that "[a]bsent
knowledge of Appellant's invention, there would have been no reason to
combine the applied references in the manner necessary to arrive at the
claimed methods" (App. Br. 13).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the prior art renders the
method of claim 1 obvious?
Findings of Fact
1. Raksha teaches a "magnetic field is applied to planarize
magnetic pigment flakes relative to a surface. Pigment flakes, such as
optically variable pigment flakes, are used in a variety of paints, inks,
extrusions, powder coatings, and other forms for decorative and security
applications" (Raksha, abstract).
2. Raksha teaches "[p ]igment flakes are used in a variety of
applications, such as paint, inks, textiles, cosmetics, extruded films, plastic
castings, and powder coatings" (Raksha i-f 5).
3. Raksha teaches "[e]xamples of such color-shifting images are
used as security features on bank notes, like the U.S. 20-dollar bill, and for
decorative purposes on and in a wide variety of consumer items, including
vehicles, helmets, eye glass frames, fingernail polish, and cell-phone cases,
to name a few" (Raksha i-f 5).
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Application 11/663,772
4. Raksha teaches:
Magnetic pigment flakes in a fluid carrier are applied to a
substrate (step 602). A magnetic field is applied to the
magnetic pigment flakes to align the flakes in the plane of the
substrate (step 604) while the carrier is still fluid. The carrier
then typically dries, cures, or sets to fix the alignment of the
flakes (step 606).
(Raksha ,-r 41 ).
5. Raksha teaches:
Factors such as the time available for planarization, viscosity of
the carrier, size of the flake, and magnetic characteristics of the
flake may affect the desired alignment of the flakes. Similarly,
it is understood that even after magnetic planarization not all
flakes are perfectly aligned in the plane of the substrate, and
that improvement in the visual characteristics of the image
formed with the magnetic pigment flakes is a matter of degree,
the suitability of which might depend on the initial state flakes
and the desired effect, for example.
(Raksha ,-r 34).
6. Harrison teaches a "method and apparatus for applying nail
paint is disclosed. In a preferred embodiment a pen-like applicator is
provided that comprises a barrel wherein nail paint is contained and a nib
that is configured for applying nail paint to a nail" (Harrison, abstract).
7. Harrison teaches "nail polish is typically applied to finger and
toe nails using a brush. Traditionally, nail polish is provided in jar
containers, and a fiber brush that is attached to a plastic stick is used to apply
the nail polish to nails" (Harrison 1: 18-21 ).
8. Harrison teaches "[p ]rior art nail polish is typically available in
a variety of finishes, including matte, gloss, pearl, pearlescent, glitter, and
protectant finishes" (Harrison 3 :7-9).
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9. Phillips teaches "producing coated articles having three
dimensional-like images using magnetic pigment compositions" (Phillips
iT 2).
10. Phillips teaches:
magnetic pigments have been developed for use in applications
such as decorative cookware, creating patterned surfaces, and
security devices. Similarly, color shifting or optically variable
pigments have been developed for such uses as cosmetics, inks,
coating materials, ornaments, ceramics, automobile paints, anti-
counterfeiting hot stamps, and anti-counterfeiting inks for
security documents and currency.
(Phillips iT 4).
11. Phillips teaches:
The three dimensional-like effects are produced by exposing the
magnetic pigment coating to an external magnetic force,
thereby orienting the major planar surfaces of some of the
pigment flakes substantially normal to the surface of the
coating. The unoriented pigment flakes lie with their major
planar surfaces substantially parallel to the surface of the
coating. The three dimensional-like effect is due to the
alignment of the pigment flakes or particles such that the aspect
ratio is oriented with the magnetic field, i.e., the longest part of
the pigment flake or particle aligns itself along the magnetic
field lines. Thus, colored faces of the pigment flakes that are
magnetically reoriented are turned away from the observer to
various extents depending on the magnitude of the magnetic
force. In the region( s) of maximum reorientation (normal), the
coating appears black in color due to light trapping.
(Phillips iT 51 ).
Principles of Law
To establish a prima facie case of obviousness, the Examiner must
find "a reason that would have prompted a person of ordinary skill in the
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Application 11/663,772
relevant field to combine the elements in the way the claimed new invention
does." KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
This is a very close case, where we view the evidence of record as
almost in equipoise. However, we are persuaded by Appellant's argument
that the prior art provides no reason to apply Raksha's magnetic aligning
process to the specific process of claim 1 as applied to fingernail polishing
(see App. Br. 13). "[A] patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art .... [I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does."
KSR, 550 U.S. at 418.
Here, the Examiner's reason for combining the elements within
Raksha and the other cited references relies in part on the reasoning that "a
person having ordinary skill in the art would have clearly recognized that the
magnetic flake pigment containing composition would have functioned as a
magnetic flake pigment containing composition functions when utilized in a
cosmetic nail varnish method" (Ans. 8).
Raksha, however, while discussing general uses of pigment flakes that
include cosmetics and fingernail polish (FF 2-3), and generally discussing
aligning pigment flakes in a magnetic field for decorative purposes (FF 1 ),
provides no reason to apply a magnetic field to the formation of patterns in
nail polish. The other close reference, Phillips, also fails to provide a reason
to perform the process of claim 1. Phillips does separately discuss magnetic
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Application 11/663,772
pigments and color shifting pigments for cosmetics (FF 10-11), but provides
no reason to apply the process to the formation of patterns in nail polish.
We also find unpersuasive the Examiner's finding of motivation to
combine in the assertion that "a person having ordinary skill in the art to
which the invention pertains would have recognized that magnetic flake
pigments could have suitably been added to a nail polish base and aligned
using an external magnetic field" (Ans. 19). This is not a reason to combine,
simply a recognition that the basic elements necessary for performance of
the claimed invention have been available in the prior art for a very long
time. As the Examiner and Kurtus note, iron filings can be used to show
magnetic fields (see Ans. 18-19; Kurtus 2), a discovery first made by
Michael Faraday in the 1850s.
The instant fact pattern is dissimilar from those discussed in MPEP
§ 2143, where there was either a reason to make the combination in the prior
art based on the nature of the problem being solved (see Examples 2, 5, 6) or
where the combination was simply integrating known components already
known to operate together (see Examples 1, 7). 11 We are not persuaded by
the Examiner's reasoning that there was a recognized problem being solved
in pattern formation for fingernail polish, nor that painting fingernails with
magnetic bodies in the polish and forming patterns using magnetic fields
represents a simple integration of known components.
For these reasons, we reverse the rejections of record.
11 The remaining examples refer to situations where the rejection
was reversed.
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Conclusion ofLaw
The evidence of record does not support the Examiner's conclusion
that the prior art renders the method of claim 1 obvious.
SUMMARY
In summary, we reverse the rejection of claims 1, 3, 4, 8, 9, 12, 14, 16,
17, and 19-22 under 35 U.S.C. § 103(a) as obvious over Raksha, Harrison,
Phillips, as evidenced by Kurtus and Roeben.
We reverse the rejection of claims 5-7, 10, and 11under35 U.S.C.
§ 103(a) as obvious over Raksha, Harrison, Phillips, Lauterbach, as
evidenced by Kurtus and Roeben.
We reverse the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over Raksha, Harrison, Phillips, Gueret, as evidenced by Kurtus and
Roeben.
We reverse the rejection of claims 33-39 under 35 U.S.C. § 103(a) as
obvious over Raksha, Harrison, Phillips, Jenkins, as evidenced by Kurtus
and Roeben.
REVERSED
10