Ex Parte Beal et al

Patent Trial and Appeal Board

Sep 19, 2018

13506886 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/506,886
77083 7590
PaulM. Denk
763 South New Ballas
Ste. 305
St. Louis, MO 63141
05/22/2012
09/20/2018
FIRST NAMED INVENTOR
Dale Beal
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.
8094 2838
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
09/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE BEAL, SVEN DOBLER, BLAINE STAMBAUGH, and
HERVEFERREC
Appeal2017-007192
Application 13/506,886 1
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134 from the Examiner's
maintained, final rejection of claims 1---6, 8, and 10-14. 2, 3 We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the inventors, Sven Dobler, et al., and assignee,
Orlandi, Inc., as the real parties in interest. Appeal Br. 1.
2 Claim 2 is identified as rejected (Final Act. 2; Ans. 2) and under appeal
(Appeal Br. 3), but is omitted from the listing of claims (id. at 13).
3 The Examiner has withdrawn a provisional nonstatutory double patenting
rejection. Ans. 2.
Appeal2017-007192
Application 13/506,886
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to a body art
transfer device that produces a temporary tattoo or cosmetic design.
Specification filed May 22, 2012 ("Spec."), Abstract.
Independent claims 1, 5, and 8 are directed to body art or body art
cosmetic transfer device.
Independent claim 1 is representative:
1. A body art transfer device in the form of a
cosmetic comprising:
a cover having a generally planar shape, a substantially
nonabsorbent surface, and a surface area;
a substrate having a plurality of projections with each
projection having a flat top surface, the projections to define a
cosmetic sample reservoir area with the projections being
laterally spaced from one another and positioned relative to one
another to provide stilting between one another; and
a body art cosmetic coating positioned in said cosmetic
sample reservoir area of said substrate and between the
substrate and said nonabsorbent surface, said coating having a
pigmented composition of oils and waxes having a thickness of
between about 0.5 mils and 5 mils of uniform homogeneous
consistency and an amorphous noncrystalline structure; wherein
said base material repels oils of said coating and due to the
stilting provided between the projections, the cover and the
substrate create an occlusive, cohesive seal there between
eliminating the need for any perimeter seal; and
wherein said cover covers the substrate, the projections,
and the body art cosmetic coating and contacts the flat top
surfaces of the plurality of projections and the body art
cosmetic coating transfers from said cosmetic sample reservoir
area of said substrate to the skin of a user once the cover is
removed; and
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Application 13/506,886
said body art coating is screened printed as a tattoo or
cosmetic design in said cosmetic sample reservoir area of said
substrate.
Appeal Brief filed February 7, 2017 ("App. Br."), 13.
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
Claims 1-3, 5, 6, 8, and 10-12 stand rejected over Stambaugh4 in
view of Wallschlaeger5 and Chuang. 6
Claim 4 stands rejected over Stambaugh in view of Wallschlaeger,
Chuang, and Dunlap-Harris. 7
Claims 13 and 14 stand rejected over Stambaugh in view of
Wallschlaeger, Chuang, and Meyers. 8
DISCUSSION9
On this record, having reviewed the maintained grounds of rejection
set forth by the Examiner, Appellants' arguments and proffered evidence,
and the Examiner's response, we are not persuaded that the Examiner erred
reversibly as to any of the grounds of rejection. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to
4 Stambaugh et al., US 2009/0250530 Al, published October 8, 2009.
5 Wallschlaeger, US 5,396,913, issued March 14, 1995.
6 Chuang, US 4,858,631, issued August 22, 1989.
7 Dunlap-Harris, US 6,161,554, issued December 19, 2000.
8 Meyers et al., US 6,290,940 Bl, issued September 18, 2001.
9 In this discussion, we refer to the Specification, the Final Office Action
dated September 15, 2016 ("Final Act."), the Appeal Brief, the Examiner's
Answer dated March 17, 2017 ("Ans."), and the Reply Brief filed March 27,
2017 ("Reply Br.").
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Application 13/506,886
require an applicant to identify the alleged error in the examiner's
rejections," citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) ).
Prior art status of Stambaugh
Appellants contend that Stambaugh is not prior art to the instant
application because applicants claimed the benefit of priority. App. Br. 8-9;
see generally Reply Br.
The Examiner determines that because "Stambaugh does not fully
disclose the claimed invention, as evidenced by the necessity of additional
references for the rejection under 35 U.S.C. § 103, the instant claims would
not be entitled to the filing date of Stambaugh regardless of whether or not a
proper chain of priority was established." Ans. 4.
Appellants do not contest the Examiner's determination that
Stambaugh does not fully disclose the claimed invention. See generally
App. Br.; Reply Br. Rather, in contesting the rejections, Appellants contend
that Stambaugh discloses "a different structure from what is currently
claimed" and characterize the differences between what is disclosed in
Stambaugh and the instant application as "[q]uite a difference." App. Br. 9.
Appellants then argue that the claimed subject matter is distinguished from
Stambaugh. Id. at 9-10.
Appellants fail to establish that the Examiner has erred in relying on
Stambaugh as prior art to the claims at issue. "[A] patent application is
entitled to the benefit of the filing date of an earlier filed application only if
the disclosure of the earlier application provides support for the claims of the
later application, as required by 35 U.S.C. § 112." In re Chu, 66 F.3d 292,
297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Thus, an application is only
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Application 13/506,886
entitled to the benefit of an earlier application's filing date if the earlier
application "discloses the subject matter now claimed" and, absent that, the
earlier application is "properly relied on as prior art." Chu, 66 F .3 d at 297.
The court, in determining that Chu was not entitled to the benefit of priority,
and that the earlier patent was properly relied on as prior art, relied on the
fact that the applicant had admitted that the subject matter claimed was not
disclosed in the prior patent. Id. Having failed to contest the Examiner's
determination that Stambaugh does not disclose the claimed invention,
indeed, arguing that it does not, Appellants fail to apprise us of any error in
the Examiner's reliance on Stambaugh as prior art.
Obviousness over Stambaugh, Wallschlaeger, and Chuang
The Examiner relies on Stambaugh for its disclosure of a product for
delivery of fragrance samples that includes a textured coating with a
cosmetic sample located within its interstices, "wherein the textured coating
(plurality of projections) have a flat top." Final Act. 2-3 (citing Stambaugh,
Abstract, ,r,r 16, 39). The Examiner also relies on Stambaugh for disclosing
"a cover and base made of separate sheets (planar shape) of material that
overlay at least a portion of one sheet" and for its disclosure of how these are
arranged, as well as for disclosing that the sample material can include
lipstick. Id. at 3 (citing Stambaugh ,r 36, Figs. 1-7, and claims 2 and 13).
The Examiner finds Stambaugh fails to disclose "the cosmetic
coating has a composition of oils and waxes with a uniform homogenous
consistency and an amorphous non-crystalline structure ... [ and the]
thickness of the coating." Id. The Examiner also finds that Stambaugh fails
to disclose the cosmetic shape, or its reservoir, in the shape of eyebrow[ s] or
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the cosmetic coating as a tattoo or cosmetic design in sample reservoirs of
the substrate. Id. at 4.
The Examiner relies on Wallschlaeger for its disclosure of a base
support for a cosmetic applicator that has "a substantially nonabsorbent
surface and a coating existing essentially of a composition of lip cosmetic
with an amorphous, noncrystalline structure wherein the coating has a
thickness between 0.5 and 5 mils." Id. at 3 (citing Wallschlaeger, Abstract).
The Examiner further relies on its disclosure of the amorphous form's
properties, and that "a conventional hard lip cosmetic with colorants can be
used wherein harder lipsticks contains waxes and oil." Id. at 3--4 ( citing
Wallschlaeger, 1:45-57, 2:54---61, 64---68, 3:29-33).
The Examiner concludes that it would have been obvious at the time
of the invention to use a lipstick "compris[ing] a homogenous consistency of
waxes and oil in an amorphous structure" as taught by Wallschlaeger in a
lipstick sample of Stambaugh "in order to provide for a long lasting lip
cosmetic that could be applied evenly" and, as to the recited thickness, to use
the "thickness disclosed in Wallschlaeger as a suitable thickness to ensure
sufficient lip cosmetic to satisfy a typical user while at the same time
providing control medium for transferring lip cosmetic to the lips." Id. at 4.
The Examiner relies on Chuang for its disclosure of "a simulated
eyebrow applicator comprising a sheet of thin material and a pair of
simulated eyebrows" and how the applicator "overcom[ es] the difficulties of
having identically by oppositely shaped eyebrows, same size and shape, and
non-ragged edges." Id. at 4 (citing Chuang 1:9-38, Abstract).
The Examiner concludes that it would have been obvious at the time
of the invention to provide a cosmetic design of eyebrows using the transfer
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device of Stambaugh for the benefits of using a simulated eyebrow
applicator as taught by Chuang. Id. at 5.
Appellants contend that there are differences between what is
disclosed by Stambaugh and what is currently claimed, stating that
[Stambaugh] ... did go into some detail relating to the textured
coating applied to the barrier coating previously applied to the
flexible material forming the sample of cosmetic, including
fragrances. That is a different structure from what is currently
claimed in this appealed application. This particular application
relates to body art, and more specifically the application of the
eyebrow design to the user, whereas [Stambaugh] described a
product for liquid delivery of fragrance samples to a user.
Quite a difference. This difference, in combination with this
current application having made a claim to priority upon said
earlier application, it is submitted, either eliminates the
Stanbaugh prior publication as prior art, or provide some degree
of distinguishing from it. Both may have or use a flexible
material, may have barrier coating, may have a textured
coating, but that is where the two move off into different
directions, in further formation, application, and usage.
App. Br. 9-10.
As to Wallschlaeger, Appellants contend that it
simply describes the chemistry involved in a cosmetic
applicator, primarily the application of a sample lipstick for
single application and testing. The only similarity between
Wallschlaeger and the current invention is that Wallschlaeger
applies its lip coating, the lipstick, in a range between a
thickness of 0.5 mils and 5 mils to its base support, for a
sample. Other than that, Wallschlaeger does not appear to be
any further in relation to the subject matter of the currently
claimed invention.
Id. at 10. Appellants argue that "Wallschlaeger's modification of
[Stambaugh] would still not provide anything related to the claimed subject
matter of this current application." Id.
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As to Chuang, Appellants contend that its simulated eyebrow
applicator is
Id.
simply ... a thin sheet of material, with a pair of simulated
eyebrows, which defines nothing related to the subject matter of
the structured type of treated material of applicants' claimed
invention having a barrier coating, a textured surface coating,
one in which there are a plurality of projections that have
stilting between one another, and into which a pigmented
composition of oils, waxes, and fragrance of uniform
homogeneous consistency can locate, for use for application to
the skin of the user when its cover is removed. See FIG. 12.
[Chuang] does show a form of tattoo, but other than that,
[Chuang], and the current invention are of different structures.
Appellants' conclusory arguments do not apprise us of reversible error
in the Examiner's rejection based on the combination of Stambaugh,
Wallschlaeger, and Chuang. The nascent argument that Stambaugh relates
to liquid fragrance fails to address the Examiner's finding that the sample
material includes lipstick. Final Act. 3 (citing Stambaugh ,r 36). Further
arguments fail to establish error because they are grounded on elements
missing from the references where the rejection does not rely on the
reference for the cited element. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references."). Appellants argue that Stambaugh lacks disclosure relating to
body art and application of an eyebrow design, but the Examiner relies on
Chuang, not Stambaugh, for these features. Appellants argue that
Wallschlaeger' s disclosure is limited to the chemistry and testing of a
cosmetic applicator, including the thickness of the cosmetic material, but
this is what Wallschlaeger is relied on for in the rejection. Similarly,
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Appellants argue Chuang's disclosure is limited to the form of a tattoo, but
this is what Chuang is relied on for in the rejection. As such, none of the
arguments apprise us of reversible error in the rejection
of claims 1-3, 5, 6, 8, and 10-12 over the combination of Stambaugh,
Wallschlaeger, and Chuang.
Obviousness over Stambaugh, Wallschlaeger, Chuang, and Dunlap-
Harris and over Stambaugh, Wallschlaeger, Chuang, and Meyers
As to claim 4, the Examiner further relies on Dunlap-Harris for its
disclosure of "removable tattoo eyebrows composed of a colorant material
on a sheet of plastic or paper ... a protective release sheet ... [and] [that]
[t]he transfer sheet and protective sheet are preferably transparent." Final
Act. 12-13 (citing Dunlap-Harris 3:41--47, Abstract).
As to claims 13 and 14, the Examiner further relies on Meyers for its
teaching of including a sun blocking component, specifically titanium
dioxide into a cosmetic, particularly a lipstick composition. Id. at 13 ( citing
Meyers 5:24--25, 6: 1-10).
Appellants' arguments as to the Examiner's reliance on each of
these references is similarly deficient as those against the combination
of Stambaugh, Wallschlaeger, and Chuang. Appellants argue that
Dunlap-Harris simply shows removable tattoo eyebrows. It is
just a colorant material applied to a sheet, that is applied against
the eyebrow region of the face, for transfer as a tattoo.
Structural-wise it is not similar to the structure of the currently
claimed invention.
App. Br. 10. This conclusory argument is not persuasive of error because
the rejection is grounded on a combination of references and the argument
fails to identify any deficiency in the teaching from Dunlap-Harris as relied
on in the rejection.
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As to Meyers, Appellants concede that "[t]he examiner only cites
[Meyers] for the purpose of showing the use of sunscreens, including
titanium dioxide ... within ... [a] lipstick composition," but argue
"applicants are the first to use this type of sunscreen material within its
composition, when applied to their structured body art device, as claimed."
Id. at 10-11. This conclusory argument, likewise, fails to identify any
deficiency or error in the rejection as set forth by the Examiner.
Accordingly, none of the arguments apprise us of reversible error in
the rejection of claim 4 in further view of Dunlap-Harris and of claims 13
and 14 in further view of Meyers.
DECISION
The Examiner's decision rejecting claims 1-6, 8, and 10-14 under
35 U.S.C. § 103(a) is AFFIRMED.
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).
AFFIRMED
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