Ex Parte Cruz et al

Patent Trial and Appeal Board

Jan 30, 2017

13307121 (P.T.A.B. Jan. 30, 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.
13/307,121 11/30/2011 Kathy Cruz CR128U-US 9886
60723 7590 02/01/2017
Avon PrnHnots; Tno
EXAMINER
1 Avon Place
Suffern, NY 10901
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
PATENT.DEPARTMENT@AVON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHY CRUZ, BRENT SLOBODY, and GALINA LEVINA.1
Appeal 2016-003316
Application 13/307,121
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic kit comprising false eyelashes and an adhesive for applying the
false eyelashes which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is a cosmetic kit comprising false eyelashes and
an adhesive for attaching the eyelashes wherein the adhesive comprises a
1 Appellants identify the Real Party in Interest as Avon Products, Inc.
Appeal Br. 2.
Appeal 2016-003316
Application 13/307,121
non-allergenic latex. Spec 1—2. The non-allergenic latex can comprise
guayule latex. Spec. 1.
Claims 20-27 are on appeal.2 Claim 20 is illustrative and reads as
follows:
20. A kit comprising:
a. one or more false eyelashes; and
b. a sealed container including an adhesive composition
for attaching said one or more false eyelashes to the eyelids
comprising
i. about 15.0 wt.% to about 40.0 wt.% guayule rubber
latex solids;
ii. about 0.1 wt.% to about 20.0 wt.% film forming agent;
iii. about 0.1 wt.% to about 10.0 wt.% gellant;
iv. about 1.0 wt.% to about 9.0 wt.% plasticizer; and
v. water.
Claims 20—27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Feng3 in view of Green4 and Bodelin.5
DISCUSSION
Issue
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 20-27 would
have been obvious over Feng combined with Green and Bodelin under 35
U.S.C. § 103(a).
2 Appellants list claims 1—10 as pending in the application but note that they
have been withdrawn from consideration. Appeal Br. 2.
3 Feng et al., US 2007/0212316 Al, published Sept. 13, 2007 (“Feng”).
4 Green et al., US 2006/0110379 Al, published May 25, 2006 (“Green”).
5 Bodelin, US 2007/0256700 Al, published Nov. 8, 2007 (“Bodelin”).
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Application 13/307,121
The Examiner finds that Feng teaches a mascara composition
comprising a latex polymer, hydroxypropylcellulose, butylene glycol,
polyvinylpyrrolidone (“PVP”) and water. Final Act. 3. The Examiner finds
that the amounts of the components overlap with the amounts recited in the
instant claims. Final Act. 3^4. The Examiner finds that Green teaches the
use of guayule latex as a rubber containing composition. Final Act. 4. The
Examiner finds that Green also teaches the use of PVP as a film forming
agent and hydroxyethyl cellulose as a gelling agent. Id. The Examiner finds
that Bodelin teaches a kit containing false eyelashes and “an adhesive
composition (i.e., mascara).” Final Act. 5. The Examiner concludes that
“[a] person of ordinary skill in the art would have been motivated by these
advantages to place the composition of Feng and Green containing guayule
latex particles in a sealed container in a kit that also provided false
eyelashes. All of the compositions and components are useful for
application to the eye and eyelashes for cosmetic purposes.” Final Act. 6.
Appellants contend that none of the references teach an adhesive for
attaching false eyelashes. Appeal Br. 3. Appellants also contend that there
is no reason to use guayule latex in the composition of Feng. Appeal Br. 4.
Appellants argue that the Examiner has not articulated any rationale for
creating a kit containing both false eyelashes and an adhesive. Reply Br. 3.
Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.
FF1. The Specification teaches that “[f]alse eyelashes and other
cosmetic devices and materials have been used to enhance a person’s
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Application 13/307,121
appearance by providing a long, full and thick set of eyelashes on their own
or by augmenting a person’s natural eyelashes.” Spec. 1.
FF2. The Specification also teaches that “[cjosmetic adhesive
compositions containing traditional rubber Hevea latex or nitrocellulose
based formulations have been utilized to attach false eyelashes during use.”
Id.
FF3. Feng discloses a cosmetic mascara composition comprising 0.1
to 40 % latex polymer. Feng 113.
FF4. The mascara composition of Feng comprises from about 0.1 to
about 50% water. Feng 114.
FF5. The mascara composition of Feng may comprise from 0.05 to
about 20% of a thickening agent such as polyvinylpyrrolidone and
hydroxyethylcellulose. Feng H 20 and 21.
FF6. The composition of Feng may comprise 1,3-butylene glycol.
Feng 123.
FF7. Green discloses the use of latex generically and of guayule latex
specifically as a naturally occurring polymer that can be used in a
composition adhered to the skin, hair or nails. Green H 21,33 and 36.
FF8. Bodelin discloses a kit containing mascara and false eyelashes.
Bodelin H 20-24.
Principles of Law
“The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, and the level of ordinary skill in the art.”
In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
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Application 13/307,121
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U.S. 39, 50-51 (1966).
“An obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
“Where ... the claimed and prior art products are identical or
substantially identical... the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product. . . . [The] fairness [of the burden-shifting] is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
“Where a patentee uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give effect to that
usage. . . . Conversely, where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.” Rowe
v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
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Application 13/307,121
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Analysis
Claim 20 is representative of the rejected claims and is directed to a
kit containing one or more false eyelashes and an adhesive containing
guayule latex.
We agree with the Examiner that the subject matter of claim 20 would
have been obvious to one skilled in the art at the time the invention was
made. Feng teaches a latex containing mascara composition comprising the
same components in the same amounts as the adhesive composition of claim
22 but does not identify the species of latex as guayule latex. FF3—6. Green
teaches that guayule latex is a rubber composition that can be adhered to the
skin. FF7. Bodelin teaches a kit which contains mascara and false
eyelashes. FF8. We agree with the Examiner that it would have been
obvious to select guayule latex as the latex used in the composition of Feng
and to use the resulting mascara composition in the kit of Bodelin. Ans. 3—
4.
Appellants contend that the references do not teach an adhesive
composition for attaching false eyelashes. Appeal Br. 3. We are
unpersuaded. The mascara composition resulting from the combination of
Feng and Green contains the same components in the same amounts as the
adhesive composition. Appellants have offered no evidence, other than
attorney argument, that the composition of the art would not have the same
properties as the claimed composition. In re Best, 562 F.2d at 1255;
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Application 13/307,121
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’
argument is no substitute for evidence.”).
In addition, as the Examiner points out, the term “for attaching said
one or more false eyelashes to the eyelids” is a recitation of intended use.
Appellants have not shown that the recitation of the intended use results in a
structural difference. As discussed above, the composition resulting from a
combination of Feng and Green comprises the components as the claimed
invention. Ans. 3
Appellants contend that there is no reason to substitute guayule latex
for the latex disclosed in Feng. Appeal Br. 3^4. We are not persuaded. We
agree with the Examiner that “[o]ne of ordinary skill in the art would have
been motivated to select the guayule latex particles of Green et al. as they
are taught to coat the hair and skin and enable delivery of other agents, and
one would have predicted success as both latexes are taught to be
cosmetically appropriate.” Ans. 4.
Appellants also contend that the Examiner engaged in impermissible
hindsight in combining the references. Appeal Br. 4. We remain
unpersuaded. Hindsight is impermissible when it involves using information
gleaned solely from Appellants’ disclosure. In re McLaughlin, 443 F.2d at
1395. We find no evidence that the Examiner has improperly used
Appellants’ disclosure in forming a prima face case of obviousness. As the
Examiner points out, the teachings of the references as a whole would have
lead one skilled in the art to create the claimed kit. Ans. 3^4.
Finally, Appellants contend the Bodelin does not teach a kit
comprising an adhesive and false eyelashes. Reply Br. 3. We are
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Application 13/307,121
unpersuaded. Bodelin teaches a kit which contains mascara. FF8. Bodelin
goes on to teach that the kit can contain a make-up support “such as false
eyelashes.” Bodelin 124. As discussed above, the mascara composition of
Feng and Green would be expected to have the same adhesive properties of
the claimed composition. Thus substituting the composition of Feng and
Green for the mascara of Bodelin would result in a kit containing false
eyelashes and adhesive mascara composition. Moreover, as evidenced by
the art of record, it was well known at the time the invention was made to
provide a kit containing both false eye lashes and an adhesive. See,
Merszei6 H 36 and 40.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 20 would have been obvious over Feng combined
with Green and Bodelin under 35 U.S.C. § 103(a). We affirm the
obviousness rejection for the reasons of record.
Claims 21—27 have not been argued separately and therefore fall with
claim 20. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm/reverse the rejection under 35 U.S.C. § 103(a).
6 Merszei, US 208/019673 Al, published Aug. 21, 2008 (“Merszei”). Cited
by Appellants in the Information Disclosure Statement, filed Apr. 10, 2012.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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