Ex Parte Peters

Patent Trial and Appeal Board

Mar 28, 2019

14544983 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/544,983 03/12/2015 Shelley Peters
61364 7590 03/29/2019
ROBERT A. V ANDERHYE
801 RIDGE DR.
MCLEAN, VA 22101-1625
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.
9829
EXAMINER
SAFA VI, MICHAEL
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
03/29/2019 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 SHELLEY PETERS 1
Appeal2018-006354
Application 14/544,983
Technology Center 3600
Before BRETT C. MARTIN, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 The Appeal Brief indicates that Shelley Peters and Orchard International,
Inc. are the real parties in interest.
2 The Examiner issued a "Final" Office Action on November 13, 2017, but
issued a supplemental Office Action on November 24, 2017, indicating the
designation of this Office Action as "Final" was an error, and the rejection
Appeal2018-006354
Application 14/544,983
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 4I.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to magnetic silicone brush holders. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An article of manufacture comprising:
a hollow prism of elastomeric material having first and
second ends; and
a permanent magnet prism at said first end of said
elastomeric material prism;
wherein said second end of said elastomeric material
pnsm 1s open.
Appeal Br. 22 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Burrows US 3,197,169
Soucy US 4,753,138
Pawlus WO 2010/027416 A3
Comish AU 2014101376
Roncero Blazquez US 2013/0306815 Al
Gauger US 8,636,260 B2
Roffe US 2014/0068922 Al
Rosso US 2015/0052727 Al
Gillie3 US 2015/0251812 Al
July 27, 1965
June 28, 1988
March 11, 2010
Dec. 18, 2014
Nov. 21, 2013
Jan.28,2014
Mar. 13, 2014
Feb.26,2015
Sept. 10, 2015
of claims 1-20 is non-final. Our citations herein are to the November 13,
2017, "Non-Final Office Action."
3 Gillie was filed on March 4, 2015.
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Application 14/544,983
REJECTIONS
I. Claims 6 and 9 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
II. Claims 6 and 9 are rejected under 35 U.S.C. § 112(b) as
indefinite. 4
III. Claim 1 is rejected under 35 U.S.C. § 102(a)(2) as anticipated
by Gillie.
IV. Claims 11-13, 16, and 17 are rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Comish.
V. Claims 1 and 3 are rejected under 35 U.S.C. § 103 as
unpatentable over Roncero Blazquez and Burrows.
VI. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Roncero Blazquez, Burrows, and Roffe.
VII. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Gillie, and Roncero Blazquez.
VIII. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Roncero Blazquez, Burrows, and Gauger.
IX. Claims 5, 6, 11-13, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Roncero Blazquez, Burrows, Roffe, and Comish
or Rosso.
X. Claims 7, 14, 15, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or Rosso, and
Pawlus.
4 A rejection of claims 5 and 8 as indefinite is withdrawn in the Answer. See
Ans. 2, Non-Final Act. 5---6.
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Application 14/544,983
XI. Claims 8, 9, 11-13, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Roncero Blazquez, Burrows, Gauger, and either
Comish or Rosso.
XII. Claims 10, 14, 15, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or Rosso,
and Pawlus.
XIII. Claims 5, 6, 11-13, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or
Rosso, and Gillie.
XIV. Claims 7, 14, 15, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or Rosso,
Gillie, and Pawlus.
XV. Claims 8, 9, 11-13, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or
Rosso, and Gillie.
XVI. Claims 10, 14, 15, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or Rosso,
Gillie, and Pawlus.
XVII. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Roncero Blazquez, Burrows, Roffe, Comish or Rosso, and Soucy.
OPINION
Written Description
Rejection I, Claim 6 and 9
The Examiner determines that the limitation "wherein said
substantially horizontal surface is freely supported by two substantially
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Application 14/544,983
upright walls and a base independent of any other structures" in claims 6 and
9 is not supported by the Specification. Non-Final Act. 4--5.
Appellant contends that support for this limitation can be found in
Figure 3 and in the Specification at page 4, lines 25-27 and page 5, lines 23-
25. Appeal Br. 4.
In response, the Examiner finds that the Specification does not discuss
what it is to be "freely supported" or supported "independently of any other
structure." Ans. 2-3. Further, the Examiner finds that Figure 3 does not
make clear that system 20 is not attached to a wall or to a horizontal surface,
such as a table or shelf. Id. at 3.
Below, we reproduce the two portions of the Specification cited by
Appellant in traversing Rejection I. The first cited portion of Specification
states, "[i]n the FIGURE 3 embodiment the mounting storage system 20
preferably includes a substantially horizontal base 21, substantially upright
sides 22, 23, and a substantially horizontal top surface 24. At least part of
the substantially horizontal surface 24 (and preferably the entire surface 24)
is of a magnetic material .... " Spec. 4:25-28. The second cited portion
states,
When the brushes 16 are mounted by the system 20 as
illustrated in FIGURE 3 it is clear that the bristles 17 thereof will
not touch any other structures so that they will not be damaged
during storage and will not inadvertently transfer residual
cosmetic material onto other surfaces, and so that they can
quickly dry properly if washed with liquid.
Id. 5:23-26. Appellant's argument also refers to Figure 3, which we
reproduce below.
5
Appeal2018-006354
Application 14/544,983
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FIG. 3
Figure 3, as described in the Specification, "is an isometric view of a
storage system according to the invention for mounting a set of cosmetic
brushes so that the brush bristles do not touch any structure during storage so
that [ t ]he bristles are not damaged." Spec. 3: 11-13.
Although Appellant's Specification indicates that brush bristles 17 of
the brushes 16 do not touch other structures, we see no discussion or
explanation regarding the "freely supported" nature of the substantially
horizontal surface. Further, Figure 3, by itself, does not make clear how the
substantially horizontal surface is "freely supported." Accordingly, we
agree with the Examiner that claims 6 and 9 fail to comply with the written
description requirement, and we sustain Rejection I.
6
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Application 14/544,983
Indefiniteness
Rejection II, Claims 6 and 9
The Examiner determines that the same language discussed above in
claims 6 and 9 is unclear, stating the language of claims 6 and 9 appears
vague, indefinite, and, thus confusing in that it is not clear as to what is
being defined by "said substantially horizontal surface is freely supported by
two substantially upright walls and a base" and posing the inquiry "[h ]ow is
an article freely supported if it is supported at all?" Non-Final Act. 5---6.
Thus, the Examiner rejected claims 6 and 9 under 35 U.S.C. § 112(b ).
In the Appeal Brief, Appellant traversed a rejection of claims 5 and 8
as lacking antecedent basis for the term "said permanent magnets" (see
Appeal Br. 4--5), and the Examiner withdrew this rejection in the Answer
(see Ans. 2). However, Appellant made no argument traversing the rejection
of claims 6 and 9 as indefinite. See Appeal Br. 4--5.
In the Reply Brief, Appellant states,
Regarding the Withdrawn Rejections, since claims 6, 7, 9,
and 10 are dependent upon claims 5 & 8 and have no separate
rejection under this paragraph (even though 6 & 9 are rejected
for other §112 reasons) the withdrawal should state that "The
rejections of claims 5-10 under 35 USC§ 112(b) are withdrawn."
Reply Br. 1. Thus, contrary to the statement of rejection for indefiniteness
of claims 6 and 9 set forth on pages 5---6 of the Final Office Action,
Appellant erroneously concludes that claims 6 and 9 were not rejected under
35 U.S.C. § 112(b) for reasons other than their dependency from claims 5
and 8. As Appellant did not traverse the rejection of claims 6 and 9 as
indefinite, we summarily sustain this rejection.
7
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Application 14/544,983
Anticipation
Rejection III, Claim 1
The Examiner finds that Gillie discloses all of the elements recited in
claim 1, including a hollow prism of elastomeric material and having
first and second ends. Non-Final Act. 6.
Appellant contends that Gillie (which has a filing date of March 4,
2015) is not prior art because Appellant is entitled to the July 2, 2014, filing
date of the provisional application upon which the application on appeal (the
"non-provisional application") is based. Appeal Br. 6-7. Appellant
acknowledges that, in the original claim to priority (see Application Data
Sheet ("ADS"), filed March 17, 2016), the reference to the provisional
application contained an error in the provisional application serial number.
Id. at 6. However, Appellant contends that this error has been corrected
because Appellant filed an amendment that "listed the correct provisional
application number 1) in the specification, 2) on an application data sheet
[('supplemental ADS')], and 3) in a supplemental declaration of the
inventor." Id. Appellant argues that nothing further is necessary. Id.
The Examiner responds that Appellant has not complied with 37 CPR
§§ 1.76(c)(2) and 1.78(a)(4) because (i) the supplemental ADS does not
include markings indicating what has been changed, and (ii) the above-noted
supplemental ADS was filed on December 7, 2016, which is later than
allowed by§ 1.78(a)(4). 5
5 The provisional application was filed on July 2, 2014, approximately 29
months before the filing of the supplemental ADS, and§ 1.78(a)(4) requires
the claim for priority to be made within 16 months of the provisional
application filing date. See 37 CPR 1.78(a)(4).
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Application 14/544,983
In response, Appellant states that the Examiner is putting form over
substance in that
The Rules of Practice cited in the picayune arguments on
page 4 of the Examiner's Answer relate to a late claim of priority.
They do not relate to a claim where, as here, there was one
number in the designation of the provisional application that had
an error. The draconian provisions that the Examiner's Answer
seeks to apply have no relationship to a typographical error -
instead they relate to the failure to claim priority initially or
within the period set forth in the rules. Here there was a claim
for priority from the inception and the fact that there was a minor
typographical error is irrelevant.
Reply Br. 2.
Appellant's arguments relate to a petitionable, not appealable, matter.
Notwithstanding Appellant's original claim for priority to the provisional
application filing date, which did not properly identify the provisional
application by serial number, Appellant's later, corrected, claim for priority
amounts to a delayed claim for priority. 37 CPR 1.78(c) states
(c) Delayed claims under 35 USC l 19(e) for the benefit of a
prior-filed provisional application. If the reference required by
35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented
in an application after the time period provided by paragraph
(a)( 4) of this section, the claim under 35 U.S.C. 119( e) for the
benefit of a prior-filed provisional application may be accepted
if the reference identifying the prior-filed application by
provisional application number was unintentionally delayed. A
petition to accept an unintentionally delayed claim under 3 5
U.S.C. I19(e) for the benefit of a prior-filed provisional
application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and
paragraph (a)(3) of this section to the prior-filed provisional
application, unless previously submitted;
(2) The petition fee as set forth in§ 1.17(m); and
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Application 14/544,983
(3) A statement that the entire delay between the date the
benefit claim was due under paragraph (a)( 4) of this section and
the date the benefit claim was filed was unintentional. The
Director may require additional information where there is a
question whether the delay was unintentional.
Thus, the remedy for a delayed claim to priority requires the filing of a
petition along with the appropriate fee. Whether Appellant complied with
these requirements and the formal requirements for filing a supplemental
ADS are likewise a petitionable matters. Accordingly, pending a final
determination of the above-noted petitionable matter, the present application
is entitled only to its March 12, 2015, non-provisional filing date. Thus, on
the current record, Gillie is prior art against all of the claims on appeal. 6
Appellant next contends that Gillie fails to disclose a "simple hollow
prism." Appeal Br. 7. The Examiner replies that "the word prism as used in
the claims is taken as a Generic placeholder indicating any general element."
Ans. 3. In reply, Appellant states, "[t]he words of a claim are not mere
'placeholders,' but are to be given their normal interpretation consistent with
the disclosure. Here the last paragraph of page 3 of the specification clearly
indicates, with reference to FIGURES 1-3, what a hollow prism is, and the
definition there is completely consistent with the normal use of that term."
Reply Br. 1 ( emphasis added).
NEW GROUND of REJECTION, Claims 1, 2, and 4-10
For the reasons discussed below, we determine that claim 1 is
indefinite. The portion of the Specification cited by Appellant as defining a
6 Appellant concedes that claim 20 is not entitled to the July 2, 2014, filing
date of the provisional application. Appeal Br. 6.
10
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Application 14/544,983
hollow prism (the last paragraph of page 3) is reproduced below with
emphasis added.
The two basic components of an article of manufacture
according to the invention are illustrated by general reference
numeral 10 in FIGURES 1-3. These two basic components
comprise a hollow prism of elastomeric material 11, and a
prismatically shaped permanent magnet 12. In the preferred
embodiment illustrated the hollow prism 11 is a tube with a
substantially circular cross-section (typically less than about two
inches long with varying diameters depending on the diameters
of the handles of brushes with which it is used), and the
permanent magnet 12 is a substantially solid cylinder or disc,
having a cross-section generally corresponding in shape and
dimension to the interior of the tube 11 at one end thereof.
However, other cross-sectional shapes of the components 11, 12
may be provided, including but not limited to, oval, quadrate,
and hexagonal.
Spec. 3 :21-30. Thus, the Specification sets forth no definition of a hollow
prism ( or prism), but describes the preferred embodiment of the hollow
prism as a tube with a substantially circular cross-section less than about two
inches long, with varying diameters based on the brushes with which it is
used. Id. 3:24--26. The Specification states that the magnet (recited in claim
1 as a "permanent magnet prism") can be a substantially solid cylinder.
The Specification also states that other cross-sections shapes of "prism,"
such as oval, quadrate, and hexagonal are possible. Id. 3:28-29. The
Specification explicitly avoids limiting the prisms to these shapes. Id. 3 :29-
30.
A common definition of the word "prism" is "a polyhedron with two
polygonal faces lying in parallel planes and with the other faces
parallelograms." https://www.merriam-webster.com/ dictionary/prism (last
accessed March 22, 2019). Other definitions in this dictionary associate the
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Appeal2018-006354
Application 14/544,983
word prism with glass, crystal, or a medium that distorts light. Id. At least
two other common dictionaries have similar definitions of the word "prism."
See https :// en.oxforddictionaries. com/ definition/us/prism,
https://www.ahdictionary.com/word/search.html?q=prism. The common
feature among the dictionaries, in relation to the definition of a prism as a
shape (rather than a type of material), is the inclusion of parallelograms as
sides of the prism. Appellant's preferred embodiment of the hollow prism
and permanent magnet prism is inconsistent with these dictionary definitions
inasmuch as these preferred prisms are defined as a round tube and a solid
cylinder, respectively. Spec. 3 :24--27.
Further, we understand that Appellant does not intend to limit the term
"prism" to the shape of a round tube or solid cylinder because the
Specification explains that other shapes are possible, and claim 3, which
depends from claim 1, explicitly limits the "hollow prism" to the shape of a
round tube and limits the shape of the "permanent magnet prism" to a solid
cylinder or disc. See Appeal Br. 22 (Claims App.). If, under the broadest
reasonable interpretation, a hollow prism required a round tube and a
permanent magnet prism required a solid cylinder or disc, then there would
be no need to explicitly recite these requirements in dependent claim 3.
Thus, the broadest reasonable interpretation of the term "prism" is broader
than what is recited in claim 3 and ( contrary to the dictionary definitions
noted above) does not require any sides with a parallelogram shape.
With regard to the [35 U.S.C. § 112(b )] requirement for "'particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention,"' it has been stated that the "essence of that
requirement is that the language of the claims must make it clear what
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Application 14/544,983
subject matter they encompass." In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970). This has been frequently stated in a shortened form as a
requirement that the claims set forth the "metes and bounds" of their
coverage. See, e.g., In re Venezia, 530 F.2d 956,958 (CCPA 1976); In re
Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465,477
(CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366 (CCPA 1973). This
requirement is normally viewed from the perspective of a potential infringer,
"so that they may more readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement and
dominance." Hammack, 427 F.2d at 1382. In the present situation, claim 1
does not permit competitors to ascertain whether a particular device
infringes or does not infringe because the terms "hollow prism" and
"permanent magnet prism" as used in the Specification and claims,
eviscerate the limitations imposed in the plain and ordinary meaning of these
terms, and the Specification and claims provide no guidance as to a
substitute meaning. Thus, we enter a NEW GROUND OF REJECTION of
claim 1 and associated claims 2 and 4--10 as indefinite.
Dependent claim 3 specifically limits the shape of the "hollow prism"
to "a generally circular cross-section tube" and the shape of the "permanent
magnet prism" to "a substantially solid cylinder or disc." See Appeal Br. 22
(Claims App.). Thus, claim 3 remedies the lack of clarity in claim 1
discussed above and is not subject to the new ground of rejection.
Having determined that claims 1, 2, and 4--10 are indefinite, for the
reasons discussed above in the new ground of rejection, we do not sustain
the Examiner's rejection of claim 1 under 35 U.S.C. § 102(a)(2) because to
do so would require speculation as to the scope of this claim. See In re
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Application 14/544,983
Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because
the rejection was based on speculative assumptions as to the meaning of the
claims). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
Rejection IV, Claims 11-13, 16, and 17
The Examiner finds that Comish discloses all of the elements required
by claims 11-13, 16, and 17. See Non-Final Act. 6-8. We reproduce Figure
4 of Comish below.
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Figure 4 of Comish depicts magnetic frame 400 used in conjunction with
magnetic brushes 10. Comish 3 :23-24, 5: 16-18.
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Application 14/544,983
Appellant's sole argument against Rejection IV is that Comish7 does
not qualify as prior art because Appellant is entitled to the July 2, 2014,
priority date of its provisional application. See Appeal Br. 7, Reply Br. 2.
As discussed above, whether Appellant complied with the formal
requirements for a delayed claim for the benefit of a prior-filed provisional
application is a petitionable matter, not an appealable one, and, pending a
final determination of the above-noted petitionable matter, the present
application is entitled only to its March 12, 2015, non-provisional filing
date. Thus, Appellant's argument that Comish does not qualify as prior art
is unavailing. We sustain the rejection ofby claims 11-13, 16, and 17 as
anticipated by Comish.
Obviousness
Under the heading "Arguments related to all the obviousness
rejections" Appellant refers to a declaration submitted under 37 CPR§ 1.132
and signed by Robert A. Vanderhye (hereinafter "the Vanderhye
Declaration"). Appeal Br. 20-21. The Vanderhye Declaration states that
the prior art asserted against the present application was available to a
competitor, Winsung Industrial Co., Ltd., (hereinafter "Winsung").
V anderhye Declaration ,r 2. The V anderhye Declaration asserts that the
prior art did not restrict Winsung' s activities because the prior art was either
expired, not in force in the United States, or had narrow claims. Id. ,r 2. The
Vanderhye Declaration further asserts that Appellant sold brushes covered
by claims of the present application, and, thus, these brushes were
commercially available to Winsung. Id. ,r 3. The Vanderhye Declaration
states, "[t]he Winsung brushes, which are being sold commercially, and
7 Comish was published on December 18, 2014.
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Application 14/544,983
which I have in fact inspected, are specifically covered by at least claims 1,
2, and 11 of the instant application, and a method of use is suggested
specifically covered by at least claims 16 and 19 of the instant application."
Id. ,r 4. The Vanderhye Declaration includes photocopies of a commercial
brochure from Winsung (Appendix A) and photocopies of packages of
Appellant's commercially available brushes (Appendices Band C).
Appellant argues, "[ d]espite the free availability of all of these disclosures,
Winsung ... copied appellant's advantageous construction." Appeal Br. 21.
Copying "requires evidence of efforts to replicate a specific product."
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). "This may
be demonstrated either through internal documents; direct evidence such as
disassembling a patented prototype, photographing its features, and using the
photograph as a blueprint to build a virtually identical replica; or access to,
and substantial similarity to, the patented product (as opposed to the
patent)." Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325
(Fed. Cir. 2004) (internal citations omitted). "We note, however, that a
showing of copying is only equivocal evidence of non-obviousness in the
absence of more compelling objective indicia of other secondary
considerations." Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380
(Fed. Cir. 2000); see also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir.
1995) ("[M]ore than the mere fact of copying by an accused infringer is
needed to make that action significant to a determination of the obviousness
issue." (quoting Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1028
(Fed. Cir. 1985))).
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Appeal2018-006354
Application 14/544,983
We reproduce Appendix A below.
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Appendix A is a low-quality photocopy of what appear to be five brushes.
Appendices B and C are of similar quality to Appendix A. Appendix A
includes no labeling or annotations identifying elements of the depicted
structure. Neither the Vanderhye Declaration nor Appeal and Reply Briefs
provide any detailed analysis of the items depicted in Appendices A, B, and
C. Thus, it is not apparent that any of the claims on appeal read on
Winsung's (or Appellant's) products. As the underlying facts and reasoning
for the conclusion in the V anderhye Declaration that Winsung copied
17
Appeal2018-006354
Application 14/544,983
Appellant's invention are not provided, and no evidence of other objective
indicia of non-obviousness has been presented, we give the Vanderhye
Declaration little weight.
Rejection V, Claims 1 and 3
The Examiner finds that Roncero Blazquez discloses all the elements
recited in claims 1 and 3 except for the elastomeric material used in the
construction of the hollow prism. Non-Final Act. 9. Specifically, the
Examiner states, Roncero Blazquez teaches, in "Fig. 1 for example, a hollow
prism of elastic material 1 having first and second ends; and a permanent
magnet prism 2 at said first end of said elastic material prism; wherein said
second end of said elastic material prism is open." Id. The Examiner finds
that Burrows "teaches utilization of an elastomeric element 12 for hanging
brushes or brooms by the handle." Id. Based on this finding, the Examiner
concludes, "to have formed the elastic prism 1 of Roncero Blazquez from an
elastomeric material for enhanced gripping, would have been obvious to one
having ordinary skill in the art as taught by Burrows." Id.
Appellant contends that the Examiner erred in finding that the
embodiment of Figure 1 teaches that elastic material is used in the hollow
prism depicted in that figure because only Figures 2 and 3 of Roncero
Blazquez describe the material as being elastic. Appeal Br. 8. Further,
Appellant argues, "Roncero [Blazquez] specifically teaches against an
elastomeric material since it uses elastic clamps of discontinuous material,
undoubtedly most desirably of metal or a plastic." Id. at 9 (emphasis added).
Appellant asserts that, based on the use of structures such as fins and a bail
handle in Burrows, without any magnet, and the alleged teaching away from
elastic material in Roncero Blazquez, the Examiner's proposed combination
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Appeal2018-006354
Application 14/544,983
"is the epitome of hindsight reconstruction based upon knowledge of
appellant's simple invention." Id. Appellant also contends that claim 3
further distinguishes over Roncero Blazquez due to the semi-circular shape
of the embodiments depicted in Figures 2 and 3 of Roncero Blazquez, which
Appellant argues is "contrary" to the circular shape required by claim 3. Id.
at 9--10.
Apparently conceding that the Figure 1 embodiment of Roncero
Blazquez fails to disclose a hollow prism of elastic material, the Examiner
provides new reasoning, in the Answer, in support of the rejection of claims
1 and 3, stating, "[t]he rejection involving Roncero Blazquez utilizes the Fig.
1 embodiment of retainer/holder[, and] pp [0017] of Roncero Blazquez
teaches a friction fit. Burrows teaches to make a holder/retainer elastomeric.
Therefore, simple substitution (sic) of one material for another for enhanced
gripping action." Ans. 5.
In reply, Appellant contends that the Examiner ignored the arguments
presented in the Appeal Brief and did not address the argument for claim 3.
Reply Br. 2.
As discussed above, claim 1 is indefinite. Accordingly, we reverse
the rejection of claim 1 as unpatentable over Roncero Blazquez and
Burrows. See Steele, 305 F.2d at 862---63.
As for claim 3, in the Non-Final Office Action, the Examiner
provided insufficient reasoning for making the modification to Roncero
Blazquez based on the teachings of Burrows. See Non-Final Act. 9.
Specifically, the Examiner found that the elements of claim 1 were disclosed
in Roncero Blazquez and Burrows and then, in essence, concluded that it
would have been obvious to combine the teachings of these references in the
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same arrangement recited in claim 1, because it would enhance gripping,
without explaining how this would occur or why it would be an
improvement in the device disclosed by Roncero Blazquez. See id.
Appellant's argument that Roncero Blazquez and Burrows both teach away
from the arrangement recited in claim 1 does not point out how either
reference discourages this arrangement. Prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Nonetheless, Appellant's assertion of improper hindsight
raises the issue of whether the Examiner's reasoning for the proposed
combination of Roncero Blazquez and Burrow's teachings is supported by
rational underpinnings. The Examiner's obviousness rejection must be
based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSRint'l. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). As Appellant points out,
Burrows' device uses fins 16 to grasp the handle of a broom. See Burrows
2:11-14, "Also the fins 16 will frictionally grab the broom handle to hold it
but will permit removal of the member 12 by a twisting motion." The
Examiner does not provide adequate explanation as to how the use of
elastomeric material in the finned structure disclosed by Burrows would be
applicable to the non-finned structure disclosed by Roncero Blazquez. The
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Examiner's new reasoning on page 5 of the Answer does not remedy this
deficiency. Specifically, in addition to being new, this reasoning is
unsupported by a preponderance of the evidence inasmuch as paragraph 17
of Roncero Blazquez does not disclose a "friction fit" as asserted by the
Examiner. As the rejection of claim 3 on page 9 of the Non-Final Action
lacks sufficient reasoning, we do not sustain the rejection of claim 3 as
unpatentable over Roncero Blazquez and Burrows.
Rejection VI, claim 2
Claim 1, and claim 2 depending therefrom, are indefinite, as discussed
above. Accordingly, we do not sustain the rejection of claim 2 as
unpatentable over Roncero Blazquez, Burrows, and Roffe. See Steele, 305
F.2d at 862---63. Additionally, as this rejection is referenced again in
Rejections IX and XIII (Non-Final Act. 10, 13) we note that the rejection of
claim 2 finds that "Roffe teaches application and utilization of a mounting
16 to hang cosmetic Brushes," and then states, "[t]herefore, to have utilized
the elastomeric hanger 1 of Roncero Blazquez as modified for hanging
cosmetic brushes, thus allowing use for hanging cosmetic brushes, would
have been obvious to one having ordinary skill in the art as taught by Roffe."
Non-Final Act. 9. The Examiner's reasoning falls short of making a prima
facie case of obviousness inasmuch as it amounts to finding the claimed
elements in different references and then simply concluding that the
combination of these references would have been obvious to a person of
ordinary skill in the art.
Furthermore, Rejection VI is based on Rejection V, and the deficiency
in the reasoning discussed above regarding Rejection V permeates the
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rejection of claim 2 in Rejection VI. We do not sustain the rejection of
claim 2 as unpatentable over Roncero Blazquez, Burrows, and Roffe.
Rejection VII, Claim 3
In rejecting claim 3 as unpatentable over Gillie and Roncero
Blazquez, the Examiner determines that providing the "prism" of Gillie with
a substantially circular cross-section, as taught by Roncero Blazquez would
allow the device of Gillie to be used with "any given cross-section of
handle." Non-Final Act. 10.
Appellant asserts that Gillie is non-analogous art and is "necessarily
complex in order to get the results he requires," which, Appellant contends,
teaches away from the arrangement of claim 3. Appeal Br. 11. Appellant
states, that Roncero Blazquez cannot remedy the deficiencies of Gillie
because Roncero Blazquez "provides no teaching whatsoever to one of
ordinary skill in the art to go against the specific teachings of Gillie."
The Examiner's entire response is that "Roncero Blazquez has been
used to teach a simple change in shape to the Gillie holder/retainer." Ans. 5.
In reply, Appellant points out that the Examiner did not respond to
Appellant's arguments, and in particular, did not respond to the argument
that Gillie is non-analogous art. Reply Br. 3.
Appellant's arguments are unavailing because Gillie, like Appellant's
claimed invention, provides a hand-held tool (in Gillie's case, a scoop, in
Appellant's case, a brush) with a magnet in order to attach the end of the
handle to the inside of a container. Gillie explains "[t]he present invention
relates generally to keeping scoops easily available within a container."
Gillie ,r 2. Thus, to the extent that Gillie may not be in Appellant's field of
endeavor, it is reasonably pertinent to the particular problem with which the
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inventor is involved. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (citation omitted); see also Spec. 1:6-13 (explaining
the problem addressed by the Inventor).
Appellant's assertion that Gillie teaches away from the arrangement
recited in claim 3 is without merit because the minor difference in
complexity between the device disclosed by Gillie and the shapes recited in
claim 3 does not amount to criticizing, discrediting or otherwise
discouraging the recited arrangement. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). We sustain the rejection of claim 3 as unpatentable
over Gillie and Roncero Blazquez.
Rejection VIII, Claim 4
Claim 4 depends from claim 1. See Appeal Br. 22 (Claims App.).
Claims 1 and 4 is indefinite, as discussed above. Accordingly, we do not
sustain Rejection VIII. See Steele, 305 F.2d at 862---63.
Rejection IX, Claims 5, 6, 11-13, 16, 17, and 19
The Examiner rejects claims 5, 6, 11-13, 16, 1 7, and 19 as
unpatentable over Roncero Blazquez, Burrows, Roffe, and either Comish or
Rosso.
Claims 5 and 6 depend from claim 1. See Appeal Br. 22 ( Claims
App.). Claims 1, 5, and 6 are indefinite, as discussed above. Accordingly,
we do not sustain Rejection IX as to claims 5 and 6. See Steele, 305 F.2d at
862---63.
The Examiner states that the rejected claims are unpatentable over
Roncero Blazquez, Burrows, and Roffe "as applied to claim 2 above, and
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further in view of either" Comish or Rosso. 8 Non-Final Act. 6 (bolding
omitted). As discussed above, the Examiner does not provide adequate
explanation as to why the combination of the teachings of Roncero
Blazquez, Burrows, and Roffe would have been obvious. Accordingly, we
do not sustain the rejection of claims 11-13, 16, 17, and 19 as unpatentable
over Roncero Blazquez, Burrows, Roffe, and either Comish or Rosso.
Rejections X-XVII
We need not restate the analysis regarding the deficiency in the
Examiner's proposed combination of the teachings of Roncero Blazquez and
Burrows. All of Rejections X-XVII rely on the same inadequate reasoning
discussed above regarding Rejection V (see Non-Final Act. 9 and 11-16),
and, accordingly, we do not sustain Rejections X-XVII for the same reasons
discussed for Rejection V.
DECISION
I. We affirm the rejection of claims 6 and 9 as failing to comply
with the written description requirement.
II. We affirm the rejection of claims 6 and 9 as indefinite.
III. We reverse the rejection of claim 1 as anticipated by Gillie.
8 None of claims 11-13, 16, 17, and 19 depends from claim 2 or even from
the same independent claim as claim 2. See Appeal Br. 22-24 (Claims
App.). As such, Rejection IX is unclear as to that manner in which Burrows
is applied to claims 11-13, 16, 17, and 19. Indeed, claim 19 is the only one
of these claims that recites an elastomeric element ( elastomeric tube). See
id.
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IV. We affirm the rejection of claims 11-13, 16, and 17 as
anticipated by Comish.
V. We reverse the rejection of claims 1 and 3 as unpatentable over
Roncero Blazquez and Burrows.
VI. We reverse the rejection of claim 2 as unpatentable over
Roncero Blazquez, Burrows, and Roffe.
VII. We affirm the rejection of claim 3 as unpatentable over Gillie
and Roncero Blazquez.
VIII. We reverse the rejection of claim 4 as unpatentable over
Roncero Blazquez, Burrows, and Gauger.
IX. We reverse the rejection of claims 5, 6, 11-13, 16, 17, and 19
as unpatentable over Roncero Blazquez, Burrows, Roffe, and either of
Comish or Rosso.
X. We reverse the rejection of claims 7, 14, 15, and 18 as
unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or Rosso, and
Pawlus.
XI. We reverse the rejection of claims 8, 9, 11-13, 16, 17, and 19
as unpatentable over Roncero Blazquez, Burrows, Gauger, and either of
Comish or Rosso.
XII. Wereversetherejectionofclaims 10, 14, 15, and 18 as
unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or Rosso,
and Pawlus.
XIII. We reverse the rejection of claims 5, 6, 11-13, 16, 17, and 19
as unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or Rosso,
and Gillie.
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XIV. We reverse the rejection of claims 7, 14, 15, and 18 as
unpatentable over Roncero Blazquez, Burrows, Roffe, Comish or Rosso,
Gillie, and Pawlus.
XV. We reverse the rejection of claims 8, 9, 11-13, 16, 17, and 19
as unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or
Rosso, and Gillie.
XVI. We reverse the rejection of claims 10, 14, 15, and 18 as
unpatentable over Roncero Blazquez, Burrows, Gauger, Comish or Rosso,
Gillie, and Pawlus.
XVII. We reverse the rejection of claim 20 as unpatentable over
Roncero Blazquez, Burrows, Roffe, Comish or Rosso, and Soucy.
We enter a NEW GROUND OF REJECTION of claims 1, 2, and 4--
10 under 35 U.S.C. § 112(b) as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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Application 14/544,983
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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