Ex Parte Lucido

Patent Trial and Appeal Board

Oct 12, 2018

14166469 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/166,469 01/28/2014
124857 7590
Michael Victor Lucido
7009 Argyle Ave
San Bernardino, CA 92404
10/12/2018
FIRST NAMED INVENTOR
Michael Victor Lucido
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.
3006
EXAMINER
BOUTSIKARIS, SOCRATES L
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
10/12/2018 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 MICHAEL VICTOR LUCIDO 1
Appeal2017-009068
Application 14/166,469
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a mechanical hair puller for
pulling out unwanted hairs. The Examiner rejected the claims as obvious
under 35 U.S.C. § 103. Appellant appeals the rejection of the claims as
unpatentable pursuant to 35 U.S.C. § 134. We have jurisdiction under
35 U.S.C. § 6(b). The rejection is reversed.
STATEMENT OF THE CASE
As set forth in the Examiner's Answer dated March 17, 2017
("Ans."), the claims stand finally rejected by the Examiner as follows:
1 The Appeal Brief ("Appeal Br.") 2 lists Michael Victor Lucido as the real
party in interest.
Appeal2017-009068
Application 14/166,469
Claims 1-3 under 35 U.S.C. § I03(a) as obvious in view of Kerr (U.S.
Pat. No. 2,458,911, issued Jan. 11, 1949; "Kerr"), Rassman (U.S. Pat. No.
5,817,120, issued Oct. 6, 1998; "Rassman"), and Bodduluri et al. (U.S. Publ.
Pat. Appl. No. 2010/0030234 Al, published Feb. 4, 2010; "Bodduluri").
Independent claim 1 is reproduced below:
1. A mechanical hair puller for pulling unwanted hairs,
the mechanical hair puller comprising:
an elongate substantially cylindrical housing having a finger
rest and a stopper;
a plunger having a thumb rest and a plunger stop; and
a spring having a spring tab at a top end of the spring;
wherein an outer diameter of the spring at an undeformed state
is larger than an inner diameter of the housing;
wherein a bottom portion of the spring is screwed into a top
portion of the housing;
wherein a portion of the plunger slides within the housing over
a limited range of movement between a first end position
and a second end position;
wherein the plunger stop of the plunger contacts the stopper of
the housing at the first end position;
wherein the thumb rest of the plunger contacts a bottom surface
of the housing at the second end position; and
wherein a top surface of the plunger pushes the spring tab and
extends a top portion of the spring during a movement of
the plunger toward the second end position.
DISCUSSION
The claimed mechanical hair puller comprises "a plunger having a
thumb rest and a plunger stop" and "wherein a portion of the plunger slides
within the housing over a limited range of movement between a first end
position and a second end position" and "wherein the plunger stop of the
plunger contacts the stopper of the housing at the first end position."
(Emphasis added.)
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Appeal2017-009068
Application 14/166,469
The Examiner found that the hair removal device of Kerr
("depilatory") comprises the claimed plunger, but not a plunger stop that
"contacts the stopper of the housing at the first end position." Final Act. 3.
The device of Kerr is reproduced below with annotations:
b1 k
. al s::;;ri,~,;_, ;0,l
cl
<::::\\ .... ·.·.·.·.·.·~~-:: ·.·.·.·.····~i ..
~FIG.4.
el
h'
FIG.5.
~~&--h'
FIG.6.
Figure 4 shows the depilatory or hair removal device of Kerr in which
the spring a1 is "in the normally closed form." Kerr, col. 1, 11. 42--43. Kerr
describes e1 as the sliding member (identified by the Examiner as the
"housing" of the claims) and h1 as the stationary member (identified by the
Examiner as the "thumb rest") of the claims. Id. at col. 1, 11. 42-50. Kerr
teaches that sliding member e1 is pulled back over pin c1 (identified by the
Examiner as the "plunger" of the claims) toward h 1, which extends the
spring as shown in Figures 4 and 5. Id. Fig. 6 is cross-section of Fig. 4,
showing the spring a1 in the closed form before e1 is pulled back, as in Fig.
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Appeal2017-009068
Application 14/166,469
5, to extend the spring. The element "l" is where the spring a1 is engaged
with sliding member e1. Id. at col. 2, 1. 3.
Kerr explains how the device works:
In this case the spring is extended by drawing the sliding
member [ e1] towards the stationary member h 1 of the holder,
and whilst in this state is pressed against the skin, after which
the sliding member e 1 is released, whereupon the spring in
closing grips the hairs between the coils thereof.
Kerr, col. 1, 11. 48-53.
Although the Kerr describes the sliding member e1 as being moved
toward h 1, the Examiner found that if the sliding member e 1 was held
stationary, the pin c1 would move and serve as the claimed plunger and e1
would serve as the claimed housing. Final Act. 3, 8-9; Ans. 5.
The Examiner acknowledged that Kerr "is silent regarding the
housing having a stopper and the plunger having a plunger stop, wherein the
plunger stop of the plunger contacts the stopper of the housing at the first
end position" as required by claim 1. For these features, the Examiner cited
Rassman as teaching that it is well known to have a stopper and spring
"come into contact with a stop." Final Act. 3. The Examiner found that
Rassman teaches:
a compression washer 29 and a spring 27 that come into contact
with a stop (see "stop" in Figure 2E below) within the housing
22 at a first end position so as to control movement of the
plunger within the housing such that a more fluid motion is
incurred during use (Column 9, line 62---Column 10, line 5).
Final Act 3--4.
Fig. 2E of Rassman, with the Examiner's annotations, is reproduced
below.
4
Appeal2017-009068
Application 14/166,469
Fig. 2E2 shows the "stop", spring 27, and the compression washer 29
in Rassman's device. Rassman, col. 9, 1. 62----col. 10, 1. 5.
The Examiner finds that the washer 29 and spring 27 of Rassman
serve as a "plunger stop." Final Act. 4. The Examiner finds it obvious to
have placed a compression washer 29 and spring at position "l" in Figs. 4, 5,
and 6 of Kerr, and to have configured Kerr's device with a housing "stop."
The Examiner's reason to have placed washer and spring at the "l" position
is to provide "a more fluid motion in executing a plunging action" as taught
by Rassman. Ans. 7.
The Examiner further cited Bodduluri for the claimed limitation of
"wherein a bottom portion of the spring is screwed into a top portion of the
housing." Final Act. 4--5.
2 Best copy available.
5
Appeal2017-009068
Application 14/166,469
We agree with Appellant that the Examiner did not establish that the
claims are prima facie obvious over Kerr, Rassman, and Bodduluri.
Independent claim 1 recites:
wherein a portion of the plunger slides within the housing
over a limited range of movement between a first end position
and a second end position;
wherein the plunger stop of the plunger contacts the
stopper of the housing at the first end position;
The Examiner did not indicate in what part of Kerr a "stopper of the
housing" would be installed and how this would serve as a stop for the
movement of the plunger, particularly when there would be a spring ahead
of the washer 29 and spring 27 of Kerr and where the plunger/pin c1 of Kerr
extends the full length of the depilatory device (see Fig. 6 of Kerr
reproduced above).
In addition, as indicated by Appellant, the spring 27 in Rassman is
used to control the movement of implanting member 31 by compressing the
spring 27 to advance 31. Rassman, col. 7, 1. 40-col. 8, 1. 12; col. 9, 1. 45-
col. 10, 1. 5. The Examiner's rejection uses the washer 29 and spring 27 to
apparently control the spring a 1 of Kerr. The Examiner did not state what
configuration the spring a 1 of Kerr ( open or close and compressed) is in
when the spring 27 is in the compressed state or in the extended state. Thus,
we agree with Appellant that the Examiner's explanation is deficient,
particularly in view of the fact that the Examiner's proposes to use Kerr's
device differently than Kerr: Kerr uses e1 as a sliding member to control
movement of the spring, while the Examiner proposes to hold e1 stationary
and move c1.
Furthermore, as stated by Appellant:
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Appeal2017-009068
Application 14/166,469
Rassman states "[ o ]nee pressure is removed from plunger 26,
spring 27 expands", lines 3-4, column 10. Rassman further
states "compression washer 29 has not fully compressed spring
27", line 28, column 11. At an undeformed state, the spring 27
of Rassman is in an expanded state configured to receive
compressive force. At an undeformed state, Kerr's spring a 1 of
Fig. 4 is in a bottomed-out state (fully compressed state)
configured to receive tensile force. Kerr's spring a 1 at an
undeformed state of Fig. 4 configured to receive tensile force
teaches away from being modified so as to include the spring
27 of Rassman at an undeformed state configured to receive
compressive force.
Br. 7 ( emphasis added).
The Examiner asserts that Appellant did not explain why Kerr is a
teaching away from combining Rassman (Ans. 6), but it is apparent from
Appellant's explanation that an adequate reason was not provided by the
Examiner for installing a spring for compression as taught by Rassman on a
spring that is already compressed as taught by Kerr (see Fig. 4). If the
Examiner intends to use spring 27 /washer 29 to close spring a 1, the
Examiner did not explain why a stopper on the housing would be necessary
and where it would be installed.
The Examiner also did not adequately explain how the spring 27
would make the motion of c1 (which the Examiner describes as a moving
plunger in opposite to Kerr's description of it as stationary) more fluid when,
there is already a spring in Kerr's device. It is not clear if the Examiner is
proposing to use the spring 27 to close the spring a1 or to extend it. As
Rassman's washer and spring are a compressive force, the Examiner had
the burden to explain how utilizing it in Kerr's device would provide a
compressive force compatible with the movement necessary in Kerr's device
to close the spring.
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Appeal2017-009068
Application 14/166,469
The Examiner bears the burden of establishing a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For
the foregoing reasons, we conclude that the Examiner did not meet the
burden of establishing that independent claim 1, and dependent claims 2 and
3 would have been obvious to one of ordinary skill in the art at the time of
the invention based on Kerr, Rassman, and Bodduluri.
REVERSED
8