Ex Parte Miller

Patent Trial and Appeal BoardOct 7, 2016

12689943 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/689,943 01119/2010 Heidi L. Miller 24247 7590 10/12/2016 TRASKBRITT, P,C P.O. BOX 2550 SALT LAKE CITY, UT 84110 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. 3428-9818US 6840 EXAMINER BALDOR!, JOSEPH B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 10/12/2016 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): USPTOMail@traskbritt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEIDI L. MILLER Appeal2014-005194 Application 12/689,943 1 Technology Center 3700 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1, 5-9, and 23-28. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. BACKGROUND According to Appellant, "[ e ]mbodiments of the present invention relate to a toy for a child that simulates the physical characteristics of real 1 According to Appellant, the real party in interest is Heidi L. Miller. Appeal Br. 1. Appeal2014-005194 Application 12/689,943 cosmetics compos1t10ns or products, and provides the child with the experience of using such compositions." Spec. i-f 1. CLAIMS Claims 1, 5-9, and 23-28 are on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A cosmetic toy simulating a real cosmetic composition, compnsmg: a case comprising a body portion and a lid portion; and an element disposed within and affixed to the body portion of the case, the element having a feel approximating that of at least one of a powder cosmetic makeup product and a pressed powder cosmetic makeup product when perceived by touching, the element comprising a foam material simulating the at least one of the powder cosmetic makeup product and the pressed powder cosmetic makeup product, the foam material resisting degradation and transfer to a person or an applicator upon touching the element with a finger or an applicator, the cosmetic toy being free of any real cosmetic makeup product. Appeai Br. 57. REJECTIONS 1. The Examiner rejects claims 1, 5, 6, 8, and 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Kamen2 in view ofLoo. 3 2. The Examiner rejects claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Kamen in view of Loo and Tirio-Cloonan. 4 2 Kamen et al., US 5,529,781, iss. June 25, 1996. 3 Loo, US 2007/0173555 Al, pub. July 26, 2007. 4 Tirio-Cloonan, US 5,390,510, iss. Feb. 21, 1995. 2 Appeal2014-005194 Application 12/689,943 3. The Examiner rejects claims 23-25 under 35 U.S.C. Â§ 103(a) as unpatentable over Kamen in view of Loo and Alexander. 5 4. The Examiner rejects claims 26-28 under 35 U.S.C. Â§ 103(a) as unpatentable over Alexander in view of Kamen and Loo. DISCUSSION With respect to claim 1, the Examiner finds that Kamen discloses a device as claimed except that Kamen does not teach a foam material or the device being free from any real cosmetic product. Final Act. 2-3 (citing Kamen Fig. 2; col. 2, 11. 15-36; col. 3, 11. 12-16). The Examiner relies on Loo for these missing limitations and concludes that it would have been obvious to incorporate Loo's foam into Kamen's device "for the purpose of creating a softer, more realistic feel ... making the device more lifelike, and more attractive to the users." Id. at 3--4. The Examiner also finds that using a foam material would have been an obvious design choice. Id. at 4. The Examiner relies on similar findings and conclusions in rejecting independent claims 26 and 27 over Alexander, Kamen, and Loo. Final Act. 5-8. As discussed below, we are persuaded that the Examiner erred in rejecting the independent claims over the art of record. First, we agree with Appellant that the Examiner's reasoning is not sufficient to support the conclusions regarding obviousness of each of the independent claims. The Examiner first finds that it would have been obvious to incorporate a foam material as taught by Loo "for the purpose of creating a softer, more realistic feel." Final Act. 3. Loo discloses the use of foam material for making realistic looking and feeling imitation flowers. 5 Alexander et al., US 6,712,076 B2, iss. Mar. 30, 2004. 3 Appeal2014-005194 Application 12/689,943 Loo i1 0003. Although Loo discloses that the material is useful for making realistic-feeling imitation flowers, the Examiner has not provided a sufficient showing that it would have been obvious to one of ordinary skill in the art that such material could be used to modify Kamen' s device to produce a realistic-feeling powder cosmetic makeup product or a pressed powder cosmetic makeup product, as claimed. See Appeal Br. 21. We also find error in the Examiner's conclusion that because Loo's imitation flower does not include any real flower material, it would be obvious to modify Kamen's device such that it does not include any real cosmetic makeup product, as claimed. See id. Kamen discloses using some amount of real cosmetic product in a display product to accurately simulate the color of the real product, and the Examiner has not provided any articulated reason with the requisite rational underpinning to support the conclusion that it would have been obvious to modify Kamen's device in that regard. Finally, we are persuaded by Appellant's argument regarding the Examiner's finding that the use of the specific material would have been an obvious matter of design choice. See Appeal Br. 22-23. The Examiner finds that "it has been held that selection of a known material based on its suitability for its intended use is an obvious matter of design choice." Final Act. 4. However, the Examiner has not established that it was known to use a foam material in making toy cosmetic products or that one of ordinary skill in the art would have recognized any similarities between materials used for producing imitation flowers and materials used for producing toy cosmetic products. But, the Specification describes that the material of the toy cosmetic product needs to be soft and porous "to reproduce the feel of a 4 Appeal2014-005194 Application 12/689,943 cosmetic compos1t10n", which compos1t10n we find is not an 1m1tation flower (See, para. 19). Thus, the Examiner's conclusion in this regard is not sufficiently supported on the record before us. Based on the foregoing, we determine that the Examiner has not properly set forth any "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Accordingly, we do not sustain the rejections of claims 1, 26, and 27. We also do not sustain the rejections of dependent claims 5-9, 23-25, and 28 for the same reasons. CONCLUSION For the reasons set forth above, we REVERSE the rejections of claims 1, 5-9, and 23-28. REVERSED 5