Ex Parte Pender et al

Patent Trial and Appeal BoardJul 31, 2013

11582636 (P.T.A.B. Jul. 31, 2013)

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. 11/582,636 01/05/2007 Gail Pender 1680.00100 1287 62763 7590 08/01/2013 Tod T. Tumey P.O. BOX 22188 HOUSTON, TX 77227-2188 EXAMINER GRANO, ERNESTO ARTURIO ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 08/01/2013 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 GAIL PENDER and ANDREW D. CAIN ____________________ Appeal 2011-007990 Application 11/582,636 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM A. CAPP, and BEVERLY M. BUNTING, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007990 Application 11/582,636 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8- 11, 13-17, 19-23, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to health and beauty product packaging. Claims 8, 14, and 21 are independent. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. Cosmetic-product packaging comprising: a clear, solid base made of an acrylic material, wherein a top side of the solid base is in a shape of a square, and wherein tubular-shaped openings are formed in the top side of the solid base and do not penetrate through the base; and bottles fit in the tubular-shaped openings in the solid base, wherein each of the bottles is fit into a corresponding tubular-shaped opening in the solid base, wherein each of the bottles contains a cosmetic product, wherein each of the bottles is of the same size, and wherein a plain cap is on each of the bottles. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yankovich Hicks Bouix Tsai Finocchiaro Versace US D217,851 US 3,885,578 US 5,875,795 US 6,276,569 B1 US 6,371,131 B1 US D472,469 S June 23, 1970 May 27, 1975 Mar. 2, 1999 Aug. 21, 2001 Apr. 16, 2002 Apr. 1, 2003 Appeal 2011-007990 Application 11/582,636 3 REJECTIONS The Examiner made the following rejections: Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Finocchiaro and Hicks. Ans. 4. Claims 14-17, 21-23, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Finocchiaro and Hicks. Ans. 5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Finocchiaro, Hicks and Tsai. Ans. 7. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Finocchiaro, Hicks and Tsai. Ans. 8. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Finocchiaro, Hicks and Versace. Ans. 8. Claim 27 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Finocchiaro, Hicks and Yankovich. Ans. 9. ANALYSIS Claims 8-11: Finocchiaro, Hicks Appellant argues claims 8-11 as a group. App. Br. 4-11. We select claim 8 as representative, treating claims 9-11 as standing or falling with representative claim 8. See 37 C.F.R. § 41.37(c)(1)(vii) (2011) The Examiner found that Finocchiaro discloses a cosmetic-product package that includes a clear, solid base of polymer material having tubular openings 91 formed in the top side of the base for receiving bottles 192 containing a cosmetic product and sealed with a plain cap. Ans. 4, citing Finocchiaro col. 2, ll. 60-64; col. 3, ll. 22-31; col. 4, ll. 56-59; col. 5, ll. 19- Appeal 2011-007990 Application 11/582,636 4 21, l. 25; fig. 18. The disclosure of Hicks was relied on by the Examiner to teach that the tubular-shaped openings (12 and 14) do not penetrate through the base (bottom of 10). Id, citing Hicks, col. 2, ll. 48-53; fig.1. Based on these teachings, the Examiner reasoned it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Finocchiaro in view of Hicks “in order to prevent the bottles from falling through the bottom of the base when in use.” Id. at 5. Acknowledging that Finocchiaro and Hicks do not teach the use of an acrylic material, the Examiner pointed out that acrylic (poly(methyl methacrylate)) is a well-known synthetic polymer material, and reasoned it would have been obvious to use acrylic since it is “within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.” Id. Appellants argue that the Examiner erred since modifying the cosmetic product package of Finocchiaro with that of Hicks would not result in a solid base. App. Br. 5. While admitting that the base of Hicks does include holes that do not penetrate all the way through the base, Appellants contend the modified device would not have a solid base since “multiple devices (rings) of Finocchiaro would have to be stacked to provide a solid base with holes into which bottles can be fit if the holes pass all the way through the base.” Id, citing Finocchiaro, col. 3, ll. 33-45; figs. 1,14. Appellants also contend that the Examiner has not provided a reasoning or explanation as to how to modify Finocchiaro so that a bottle can fit into the openings in the single ring embodiment, since the single ring (base) modified by Hicks would not be of sufficient height. Id. at 6, citing Finocchiaro, figs. 1, 2. Appeal 2011-007990 Application 11/582,636 5 Appellants do not apprise us of error in the Examiner’s determination that the cosmetic-product package of Finocchiaro holds a cosmetic article in place, and Hicks discloses preventing a cosmetic article from falling through the opening in the base. Ans. 9. We agree with the Examiner that the bottle would fit into the opening of the modified cosmetic-product package in the same way as disclosed by Finocchiaro in order to prevent the cosmetic article from falling through the opening in the base. Id. at 10. Appellants’ arguments regarding the height of the solid base when only a single ring is used also do not persuade us that one of skill in the art would not know how to adjust the size of a single solid base and openings therein so as to hold different sizes of bottles, as Finocchiaro discloses that the opening may be sized or shaped to receive “virtually any cosmetic article”.1 See Finocchiaro col. 3, ll. 65-67. Further, the disclosure of Finocchiaro suggests that the holder “may be hollow or solid.” See Finocchiaro, col. 5, ll. 25-29. Next, Appellants argue the Examiner erred since the Examiner has failed to present any evidence showing that acrylic has the properties of elasticity and compressibility suitable for use in the device of Finocchiaro. App. Br. 6-9. Reply Br. 2. Since acrylic is asserted by Appellants to lack the essential properties of elasticity and compressibility needed for the intended use in Finocchiaro, Appellants contend “it would not have been 1 “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Appeal 2011-007990 Application 11/582,636 6 obvious to modify Finocchiaro to include a solid base made of an acrylic material, as taught by independent claim 8.” Id. at 9. In response, the Examiner countered that Finocchiaro discloses the use of various polymeric materials, “such as polyolefin or polyethylene or PET or polypropylene or polyethylene or other polymer having an elasticity that permits it to ‘pop’ over a nub.” Id. at 10. The Examiner pointed out that PET and Acrylic (poly(methyl methacrylate)) have a very similar Modulus of Elasticity (Young's Modulus), which for PET is up to 2.7 GPa and Acrylic is 3.2 GPa. Id. at 10. While the specific polymeric materials identified by Finocchiaro may be more elastic than acrylic, Finocchiaro also discloses that “the holder may be made of a less elastic material” depending on the particular embodiment of the holder. See Finocchiaro, col. 4, l. 56 - col. 5, l. 11; fig. 15. Therefore, the use of an acrylic having a higher Modulus of Elasticity than PET represents the use of a “less elastic material” as contemplated by Finocchiaro. Further, Appellants argue that the combination of Finocchiaro and Hicks is improper because such a combination would change the principle of operation upon which Finocchiaro was designed to operate, i.e. the display function of the product package. App. Br. 9; Reply Br. 2-3. According to Appellants, the cosmetic holder of Finocchiaro has nubs and the bottle has a groove that engages the nubs in the opening to support the bottle and prevent the bottle from falling through the opening. Id. Appellants suggest that if the base was modified so that the openings do not penetrate all the way through, then “multiple rings could not be stacked” since bottles could not be inserted through multiple rings. Id at 10. The Examiner reasonably responded that modifying the bottom of the cosmetic-product packaging of Appeal 2011-007990 Application 11/582,636 7 Finocchiaro to be closed would not interfere with the principle of operation of the cosmetic-product holder, which is to hold and display a cosmetic article. Ans. 11, See Finocchiaro, Abs. Appellants do not point to any feature of the cosmetic-product package of claim 8 that is structurally distinguishable from Finocchiaro as modified by Hicks. Also, Appellants have not directed us to any language in Finocchiaro that criticizes, discredits or otherwise discourages modifying the opening in the base so as to preserve the function of supporting the bottle within . Thus, Appellants do not apprise us of error in the Examiner’s reason to combine the teachings of Finocchiaro and Hicks, which is expressly articulated and supported by rational underpinnings.2 As such, the rejection of claims 8-11 is sustained. Claims 14-17, 21-23, and 26: Finocchiaro and Hicks Appellants argue claims 14-17, 21-23, and 26 as a group. App. Br. 11-17. We select claim 14 as representative, treating claims 15-17, 21-23, and 26 as standing or falling with representative claim 14. The Examiner found that Finocchiaro combined with Hicks discloses all of the claimed elements as discussed supra with respect to claim 8. Ans. 5-7. Appellants reiterate the arguments provided with respect to claim 8. Appellant’s arguments are not persuasive for the reasons discussed supra in connection with claim 8. We sustain the rejection of claims 14-17, 21-23, and 26. 2 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Appeal 2011-007990 Application 11/582,636 8 Claims 13: Finocchiaro, Hicks and Tsai Claim 13 depends from claim 8. Appellants argue that claim 13 is allowable for the reasons provided with respect to the rejection of claim 8 over the combination of Finocchiaro and Hicks. App. Br. 17. Appellants’ arguments are not persuasive for the reasons discussed supra in connection with claim 8. Therefore, we sustain the rejection of claim 13. Claims 19: Finocchiaro, Hicks and Tsai Claim 19 depends from claim 14. Appellants argue that claim 19 is allowable for the reasons provided with respect to the rejection of claim 14 over the combination of Finocchiaro and Hicks. App. Br. 17. Appellant’s arguments are not persuasive for the reasons discussed supra in connection with claim 14. Therefore, we sustain the rejection of claim 19. Claim 20: Finocchiaro, Hicks and Versace Claim 20 depends from claim 14. Appellants argue that claim 20 is allowable for the reasons provided with respect to the rejection of claim 14 over the combination of Finocchiaro and Hicks. App. Br. 18. Appellant’s arguments are not persuasive for the reasons discussed supra in connection with claim 14. Therefore, we sustain the rejection of claim 20. Claim 27: Finocchiaro, Hicks and Yankovich Claim 27 depends from claim 21. Appellants argue that claim 27 is allowable for the reasons provided with respect to the rejection of claims 14 and 21 over the combination of Finocchiaro and Hicks. App. Br. 18. Appeal 2011-007990 Application 11/582,636 9 Appellant’s arguments are not persuasive for the reasons discussed supra in connection with claim 14. Therefore, we sustain the rejection of claim 27. DECISION For the above reasons, the Examiner’s rejection of claims 8-11, 13-17, 19-23, and 27 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)(1)(iv) (2009). AFFIRMED Klh