Ex Parte Bajaj et al

Patent Trial and Appeal Board

Sep 28, 2017

14490835 (P.T.A.B. Sep. 28, 2017)

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.
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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.
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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)
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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
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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
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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
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