Ex Parte Bajaj et alDownload PDFPatent Trial and Appeal BoardSep 28, 201714490835 (P.T.A.B. Sep. 28, 2017) Copy Citation 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. 14/490,835 09/19/2014 Sunil Bajaj 44960005 9291 25005 7590 10/02/2017 Intellectual Property Dept. Dewitt Ross & Stevens SC 2 East Mifflin Street Suite 600 Madison, WI 53703-2865 EXAMINER SMITH, NKEISHA ART UNIT PAPER NUMBER 3632 NOTIFICATION DATE DELIVERY MODE 10/02/2017 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): IP-DOCKET @ dewittross.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUNIL BAJAJ and BARRY J. LAVAQUE Appeal 2016-0078881’2 Application 14/490,835 Technology Center 3600 Before JAMES R. HUGHES, JUSTIN BUSCH, and SCOTT E. BAIN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1 and 3—21. Claim 2 has been canceled. Final Act. I.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 According to the Appellants the real party in interest is LaVaque Enterprises LLC. App. Br. 1. 2 The application on appeal has an effective filing date of Sept. 19, 2014. Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the U.S. Code (§§ 102, 103) are applicable. See MPEP § 2159.02: “AIA 35 U.S.C. [§§] 102 and 103 took effect on March 16, 2013. AIA 35 U.S.C. [§§] 102 and 103 apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013.” 3 We refer to Appellants’ Specification (“Spec.”), filed Sept. 19, 2014, Appeal Brief (“App. Br.”) filed Jan. 29, 2016, and Reply Brief (“Reply Br.”) Appeal 2016-007888 Application 14/490,835 We affirm. Appellants ’ Invention The invention concerns methods of using a finger palette to transfer cosmetics. Spec. 1:8—18, 3:4—10, 4:3—5:22; Abstract. Representative Claim Independent claim 1, reproduced below with key disputed limitations emphasized, further illustrates the invention: 1. A method of using a finger palette to transfer cosmetics from a container to a destination, a. the finger palette including: i. a ring portion that is securable to a finger; and ii. a surface portion for cosmetics, the surface portion being secured to the ring portion; b. the method including the steps of: i. securing the finger palette to a finger; ii. removing a cosmetic product from a container that is separate from the surface portion; iii. depositing the cosmetic product directly onto the surface portion of the finger palette; and iv. transferring the cosmetic product from the surface portion of the finger palette to a destination. Rejections on Appeal 1. The Examiner rejects claims 1, 4—15, 17, 18, 20, and 21 under 35 U.S.C. § 103 as being unpatentable over Wu (US 6,397,633 Bl, issued filed Aug. 11, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed June 17, 2016, and Final Office Action (Final Rejection) (“Final Act.”) mailed Oct. 20, 2015. 2 Appeal 2016-007888 Application 14/490,835 June 4, 2002) and Stanley, III (US 6,739,345 B2, issued May 25, 2004) (“Stanley”). 2. The Examiner rejects claims 3,16, and 19 under 35 U.S.C. § 103 as being unpatentable over Wu, Stanley, and Resler (US 6,192,892 Bl, issued Feb. 27, 2001). ISSUE Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issue before us follows: Did the Examiner err in finding that the combination of Wu and Stanley collectively would have taught or suggested “removing a cosmetic product from a container that is separate from the surface portion;” “depositing the cosmetic product directly onto the surface portion of the finger palette;” and “transferring the cosmetic product from the surface portion of the finger palette to a destination,” within the meaning of Appellants’ claim 1 and the commensurate limitations of claim 18? ANALYSIS Appellants argue independent claims 1 and 18 together as a group, and do not separately argue the rejection of dependent claims 3, 16, and 19 or separately argue dependent claims 4—15, 17, 18, 20, and 21 with particularity. See App. Br. 3—13. Accordingly, we select independent claim 1 as representative of Appellants’ arguments with respect to claims 1 and 3— 21. 37C.F.R. §41.37(c)(l)(iv). Appellants contend that Wu and Stanley do not teach the disputed features of representative claim 1. See App. Br. 3—12; Reply Br. 2—8. 3 Appeal 2016-007888 Application 14/490,835 Specifically, Appellants contend the Examiner did not provide a proper rationale for combining Wu and Stanley (i.e., that the Examiner’s purported combination “is simply not credible” (App. Br. 8; see App. Br. 6—9)), the intended use of Wu is different (App. Br. 9), Wu does not describe a suitable mixing surface (App. Br. 8), and the Examiner did not properly consider Appellants’ contentions of secondary considerations and the submitted declarations in support of these contentions (App. Br. 10—12). See Reply Br. 2-8. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-4, 12— 15), and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 12—17) in response to Appellants’ Appeal Brief. We concur with the findings and conclusions reached by the Examiner, and we address specific findings, conclusions, and arguments for emphasis as follows. Wu generally describes a cosmetic case in the form of a ring that is worn on a finger. See Wu Abstract. Stanley generally describes a makeup kit with a mixing dish (a palette) and separate containers of colorants (paint and/or makeup). See Stanley Abstract, col. 2,11. 8—30. As explained by the Examiner (see Ans. 13) and conceded by Appellants (App. Br. 6), Stanley describes the well-known processes of “removing a cosmetic product from a container that is separate from the surface portion,” “depositing the cosmetic product directly onto the surface portion,” and “transferring the cosmetic product from the surface portion ... to a destination” (claim 1). See Stanley col. 2,11. 8—30. Stanley also describes a palette or mixing dish. See id. As explained by the Examiner, Wu describes a ring palette (ring cosmetic case) 4 Appeal 2016-007888 Application 14/490,835 that is placed on/secured to a finger for applying cosmetics. See Final Act. 3—4, 12-14; Ans. 12-15. Appellants do not explicitly dispute the Examiner’s findings that the recited process/method limitations are described in the cited references. Rather, Appellants contend the Examiner has not presented a proper rationale for combining the references {supra). We disagree. Appellants conflate the features of the apparatus (the ring palette) and the claimed method for using the apparatus. The claims are drawn to a process/method. Accordingly, Appellants’ arguments concerning various physical features of Wu and Stanley and the intended purposes of these features is irrelevant. Even so, we note Wu describes a cosmetic case secured to a finger, where cosmetics (element 212) may be placed on a flat surface (palette) (element 102) by way of separate cases (element 20). See Wu col. 2,11. 29—65; Figs. 1—3, 5—7. Wu does not explicitly describe removing a cosmetic product from a separate container and depositing the cosmetic product directly onto the surface utilized for mixing (the finger palette), but Stanley describes these features {supra). We agree with the Examiner that it would have been well within the skill of one of ordinary skill in the art to combine Stanley’s known techniques of removing a cosmetic product from a separate container, depositing the cosmetic product directly onto the mixing surface, and creating a custom cosmetic shade/hue with Wu’s technique of placing cosmetics onto a flat surface of a ring cosmetic case. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 5 Appeal 2016-007888 Application 14/490,835 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Further, we are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). The Supreme Court has held that in analyzing an obviousness rationale, a court need not find specific teachings, but rather may consider “the background knowledge possessed by a person having ordinary skill in the art.” See KSR, 550 U.S. at 418 (quotingIn re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Further, an artisan is presumed to possess both skill and common sense. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We find it would have been obvious to a person having ordinary skill and common sense to attempt the course of conduct outlined by the Examiner (supra) where, as here, there are a finite number of predictable solutions. See Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1347 (Fed. Cir. 2009) (citing KSR, 550 U.S. at 421); Ortho—McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (“KSR posits a situation with a finite, and in the context of the art, [a] small or easily traversed[] number of options.”). With respect to Appellants’ arguments directed to evidence of nonobviousness (secondary considerations) (see App. Br. 10-12; Reply Br. 6—8), we agree with the Examiner (see Final Act 14—15; Ans. 15—17) that Appellants’ submitted declarations fail to provide the necessary showing 6 Appeal 2016-007888 Application 14/490,835 and are unpersuasive of nonobviousness. Specifically, Appellants’ declarations make speculative assertions and fail to provide tangible evidence (such as sales data) tied to the recited claim features (a demonstrable nexus), rather than other considerations (such as marketing), for the purported commercial success of the product, purported copying, and other purported nonobviousness considerations. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). Thus, Appellants do not persuade us of error in the Examiner’s obviousness rejection of representative independent claim 1. Accordingly, we affirm the Examiner’s rejection of representative claim 1, independent claim 18, and dependent claims 3—17 and 19—21, not separately argued with particularity {supra). CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claims 1 and 3—21 under 35 U.S.C. § 103. DECISION We affirm the Examiner’s rejection of claims 1 and 3—21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 7 Copy with citationCopy as parenthetical citation