L'OREAL

Patent Trials and Appeals Board

Jul 31, 2020

14426872 - (D) (P.T.A.B. Jul. 31, 2020)

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.
14/426,872 03/10/2015 Luc Maelstaf 085151-532954 1509
30678 7590 07/31/2020
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUC MAELSTAF and PIERRE YVES PASLIER
____________

Appeal 2020-000575
Application 14/426,8721
Technology Center 3700
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 6–14, 22, 23, and 25–32. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
L’OREAL. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a pot for a cosmetic product.”
(Spec. 1, l. 3.)
Claims 1, 25, and 26 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A pot containing a cosmetic product, comprising:
- a shell comprising a bottom so that the pot can be placed
on a surface, and a side part, said shell defining an axis along
which the side part extends, and
- an insert designed to contain the cosmetic product, the
insert being designed to be inserted into the shell and fixed on it
in an assembled position of the pot, in which the insert and the
shell define an interstitial space, wherein the interstitial space
extends between the insert and the bottom, and between the insert
and the side part,
in which the pot also comprises a mechanical tensioning
element of the shell that is in a compressed position when the
shell and the insert are in the assembled position, wherein in said
compressed position the mechanical tensioning element extends
through the interstitial space between the insert and the shell and
is axially compressed along the axis of the shell by the insert and
the shell,
wherein the tensioning element is fixed to the insert, at
least in the assembled position, wherein the tensioning element
extends between the insert and said bottom of the shell in the
assembled position, and wherein the tensioning element is flared,
the tensioning element is made in a single piece with the insert.

REJECTION
Claims 1, 6–14, 22, 23, and 25–32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Sauey (US 3,765,559, iss.
Oct. 16, 1973), Bodenbender (US 2008/0217344 A1, pub. Sept. 11, 2008),
and Blessing (US 3,365,092, iss. Jan. 23, 1968).
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ANALYSIS
Claims 1, 6–12, 14, 22, and 23
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Sauey discloses a shell (jacket 14), “an insert (inner cone 12) . . .
designed to be inserted into the shell,” and a “mechanical tensioning element
. . . between the insert and the shell . . . axially compressed along the axis of
the shell by the insert and the shell,” “wherein the tensioning element is
flared.” (Final Action 2–3.)
Appellant argues that “Sauey is concerned with a slush cone assembly
. . . and not with problems addressed by the present invention. Accordingly,
persons of ordinary skill in the art concerned with problems addressed by the
present invention would not have even considered Sauey.” (Appeal Br. 7;
see also Reply Br. 4.) In other words, Appellant argues that Sauey is not
analogous art.
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
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the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed.
Cir. 2006). In determining the field of endeavor, “the examiner and the
Board must consider the ‘circumstances’ of the application—the full
disclosure—and weigh those circumstances from the vantage point of the
common sense likely to be exerted by one of ordinary skill in the art in
assessing the scope of the endeavor.” In re Bigio, 381 F.3d 1320, 1326 (Fed.
Cir. 2004).
The Examiner determines
that the structure and construction similarities that the applied
references share are enough to establish analogous art, all
references are in the same field of endeavor, having a shell and
insert construction, and are all pertinent to the problem solved,
aligning an inner insert when placed within an outer shell.

(Answer 11.)
With regard to the field of endeavor, Appellant argues that “[t]he
references relied upon by the Examiner do not belong to the same field of
endeavor [as Appellant’s claimed invention], since the containers have very
different applications (foods or cosmetics).” (Reply Br. 4.)
Appellant’s application is titled “Double shell pot for cosmetic
product comprising a mechanical tensioning element and assembly method.”
(Spec. 1, ll. 1–2 (emphasis omitted).) The Specification discloses that
double shell plastic pots overcome the problem of single shell glass pots that
“are fairly heavy and have an impact on the environment related to their
fabrication.” (Id. at 1, ll. 18–21.) The Specification discloses that double
shell plastic
pots give the user an impression of insufficient quality, in
absolute terms and in comparison with the quality of single shell
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glass pots. Specifically, when the user places such a pot on a hard
surface, the interstitial space may cause a hollow sound that can
be unpleasant to some consumers.
Therefore one purpose of the invention is to disclose a pot
for a cosmetic product comprising a shell and an insert and
giving the user an impression of improved quality without any
significant increase in the weight and environmental impact of
the pot.
To achieve this, the purpose of the invention is a pot for a
cosmetic product of the type described above in which the pot
also comprises a mechanical tensioning element of the shell that
can be in a compressed position between the shell and the insert
when the shell and the insert are in the assembled position.

(Id. at 1, l. 34–2 l. 9.) The Specification also discloses:
The interstitial space between the outer shell and the insert
and particularly between the bottoms of the outer shell and the
insert in these double shell pots is sufficiently large to prevent
any contact between them in the assembled position. The
attachment of the insert to the outer shell could be affected and
even jeopardized if the bottom of the insert touches the outer
shell in the assembled position due to fabrication tolerances on
the height of these elements.

(Id. at 1, ll. 26–31.)
The Specification discloses that “[f]or the purposes of this invention,
‘cosmetic product’ means particularly a product like that defined in the
November 30, 2009 EC Regulation No. 1222/2009 [sic, No. 1223/20092] of
the European Parliament and the Council relating to cosmetic products.”
(Id. at 1, ll. 15–17.) The EC Regulation states that
[c]osmetic products may include creams, emulsions, lotions, gels
and oils for the skin, face masks, tinted bases (liquids, pastes,
powders), make-up powders, after-bath powders, hygienic
powders, toilet soaps, deodorant soaps, perfumes, toilet waters

2 Regulation No. 1222/2009 relates to labeling on tires.
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and eau de Cologne, bath and shower preparations (salts, foams,
oils, gels), depilatories, deodorants and anti-perspirants, hair
colorants, products for waving, straightening and fixing hair,
hair-setting products, hair-cleansing products (lotions, powders,
shampoos), hair-conditioning products (lotions, creams, oils),
hairdressing products (lotions, lacquers, brilliantines), shaving
products (creams, foams, lotions), make-up and products
removing make-up, products intended for application to the lips,
products for care of the teeth and the mouth, products for nail
care and make-up, products for external intimate hygiene,
sunbathing products, products for tanning without sun, skin-
whitening products and anti-wrinkle products.

Regulation (EC) No. 1223/2009 of the European Parliament and of the
Council of 30 Nov. 2009 on cosmetic products (recast), 1.
In view of the above, we determine that Appellant’s field of endeavor
was a double shell pot or similar container suitable for containing, e.g.,
creams, lotions, and liquids. Sauey discloses a double shell container for
containing a liquid. (Sauey, col. 1, ll. 38–43.) Therefore we determine that
Sauey is in the field of Appellant’s invention.
We also determine that a problem with which the inventors were
concerned was preventing touching of the bottom of the insert to the outer
shell. (See Spec. 1, ll. 26–31.) Sauey discloses “a plurality of flexible
members integral with and connected to the base of the jacket [(outer shell)]
and adapted to be outwardly compressed when the cone [(inner shell)] is
urged into the jacket against said members,” thus preventing touching of the
bottom of the inner cone with the base of the jacket. (Sauey, col. 1, ll. 56–
60.) Sauey also discloses knobs 40 and 42 “to prevent undue distortion of
the flexible fingers 38 when the inner core 12 is urged sufficiently
downwardly within the jacket 14.” (Id. at col. 2, ll. 64–67.) Thus, Sauey is
reasonably pertinent to the problem of preventing touching of the bottom of
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the insert to the outer shell, i.e., a problem with which the inventors were
concerned. Thus, we are not persuaded that Sauey is non-analogous art.
Appellant presents a similar non-analogous art argument with regard
to Blessing. Appellant argues that “Blessing like Sauey belongs to the
technical field of the food industry and in particular, an insulated food
container.” (Appeal Br. 10.)
Blessing discloses “an insulated food containing arrangement
comprising generally a plurality of nested cups” and that the foods to be
contained include “liquid foods.” (Blessing, col. 1, ll. 10–12, col. 1, l. 67–
col. 2, l. 2.) In other words, Blessing discloses a multi-shell container for
containing a liquid. Blessing also discloses that “[p]hysical contact between
each of the three containers is minimized by providing appropriately shaped
spacers and legs for support of the three containers in the spaced apart
relationship.” (Id. at col. 1, ll. 18–21.) For the reasons discussed above, we
determine that Blessing is in the field of Appellant’s invention and is
reasonably pertinent to the problem with which the inventors were
concerned. Thus, we are not persuaded that Blessing is non-analogous art.
Appellant argues that “Sauey does not disclose a container comprising
a flared tensioning element fixed to the insert.” (Appeal Br. 7.) The
Examiner answers, and we agree, that Figure 4 of Sauey shows the
“tensioning element (thermoplastic fingers 38) . . . act like compression
springs flaring outwardly due to [the] compression.” (Answer 9.)
With regard to the tensioning elements being “made in a single piece
with the insert,” as recited in claim 1, the Examiner acknowledges that the
tensioning elements in Sauey and Bodenbender are not disclosed as being
fixed to the insert. (Final Action 4.) However, the Examiner finds
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that there is little criticality placed on the position of the
tensioning element since the disclosure states that the tensioning
element is fixed to either the shell or the insert. Sauey discloses
the tensioning element (fingers 38) made in a single piece with
the shell as is best shown in the Fig. 4 cross section.

(Final Action 4; see also Spec. 2, ll. 13–14, 6, ll. 19–21.) The Examiner also
finds:
Blessing teaches a similar interstitial insulation space with
leg portions 50 extending from an insert (inner container 12) and
bearing on the upper surface of the bottom wall of a shell
(intermediate container 14). It would have been obvious to
reposition the tensioning element (fingers 38) on the insert
(swapping the position of the fingers 38, knob 42 and knob 40)
and to be made in a single piece with the insert as the tensioning
element works equally well as a tensioning mechanism but has
the advantage of hanging from the underside of an insert so that
the mechanism doesn't collect dirt or debris in this position as
compared to extending upwardly from a bottom wall of a shell.
This type of modification which doesn’t add elements but rather,
swaps the position of two elements that interact is commonly
referred to as “reversal of parts.” For this case, the reversal of
parts is not a destruction of a critical element. The reversal of
parts is appropriate where the shown or described configuration
has no criticality.

(Final Action 4.)
Appellant argues that the leg portions in “Blessing are not for the
purpose of proving [sic] a tensioning element” and “[t]he legs are intended
to define a permanent attachment of the inner container 12 to the
intermediate container 14.” (Appeal Br. 9 (citing Blessing, col. 4, ll. 3–13).)
Appellant argues that “[h]aving a permanent bond between the slush cone
and jacket of Sauey would tend to defeat the objective of Sauey.” (Id.)
“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
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references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). A reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In short, obviousness is more than what is specifically
disclosed in the cited references. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l Co., 550 U.S. at 417.
Here, Appellant does not persuasively argue why the Examiner
allegedly erred in determining that it would have been obvious to one of
ordinary skill in the art to modify Sauey in view of Blessing to fix the
tensioning element to the insert instead of the shell.
We are not persuaded that the Examiner erred in rejecting claim 1.
Claims 6–12, 14, 22, and 23 are not separately argued and fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).

Claims 13, 25, and 27–32
Appellant argues that “the cited art fails to disclose or suggest the
feature wherein the ratio of the [mass of the] tensioning element to the sum
of the masses of the tensioning element and the insert is less than 8%,” as
recited in claim 25. (Appeal Br. 11.) Appellant argues that “[t]his feature
emphasizes that the weight of the pot is nearly unchanged by adding the
tensioning element and that there is nearly no impact on the environment.”
(Id. (citing Spec. at 5, ll. 25–28 (“The tensioning element 13 accounts for a
very moderate added material . . . . Therefore the mass of the pot 1 is almost
unchanged and there is practically no impact on the environment compared
with a double shell pot without this element.”)).)
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The Examiner finds that
[t]here is no criticality to this particular ratio. None of the
references discuss mass ratios. The relative size of the tensioning
element (fingers 38) of Sauey as shown in Fig. 4 and 5 are
relatively small as compared to the size of the insert (inner cone
12) such that one would expect the mass of the tensioning
element (fingers 38) by itself to be less than 8% of the total mass
of the insert (inner cone 12) and most likely, far less than 8%.
Based upon what is shown in the Fig. 4 and 5 of Sauey, it would
have been obvious to try to make the tensioning element mass
less than 8% of the total insert mass as any larger size would
make the tensioning element cumbersome, would make the
entire container excessively heavy and would become a waste of
plastic material which would lead to excessive cost of material.
Such modifications of size of components is well within the
purview of a skilled artisan.

(Final Action 5.)
Appellant replies that the Examiner’s “conclusion is not deemed
tenable since the drawings of a patent application or a patent are not
supposed to be at scale, unless it is explicitly mentioned in the
specification.” (Reply Br. 5.)
“[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.” Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000). More particularly, “[a]bsent any written description in the
specification of quantitative values, arguments based on measurement of a
drawing are of little value.” In re Wright, 569 F.2d 1124, 1127
(CCPA 1977).
Here, the Examiner does not direct us to any indication in Sauey that
the figures relied upon are drawn to scale. Nonetheless, the Examiner’s
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obviousness determination relies on measurements the Examiner makes
based on the figures, i.e., “[t]he relative size of the tensioning element
(fingers 38) of Sauey as shown in Fig. 4 and 5 are relatively small” and
“[b]ased upon what is shown in the Fig. 4 and 5 of Sauey, it would have
been obvious to try.” (Final Action 5; see also Answer 11–12.) Therefore,
we are persuaded that the Examiner erred in rejecting independent claim 25,
and claims 27–32 which depend from claim 25. Dependent claim 13, which
depends from claim 1, also recites this limitation. Therefore, for the same
reason, we are persuaded that the Examiner erred in rejecting claim 13.

Claims 26 and 27
Independent claim 26 recites “wherein the insert is a single-walled
insert.” Dependent claim 27, which depends from independent claim 25,
includes identical language.
The Examiner interprets “the single-walled limitation . . . as ‘at least
one wall.’” (Final Action 5.) Thus, the Examiner determines, “[t]he
limitation doesn’t preclude the insert from having a double wall or more
than one wall. ‘Single’ can be defined as ‘one’ rather than ‘alone’ or ‘only
one.’ The insert of Sauey is a double-walled insert and the claim language
does not preclude a double-walled insert.” (Id.)
Appellant argues that the Examiner’s interpretation is “unreasonable
and unsupported” and “that if one were to interpret ‘single’ according to the
Examiner’s interpretation than the claimed recitation would be superfluous.”
(Reply Br. 5.)
Claims are construed in light of the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond,
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910 F.2d 831, 833 (Fed. Cir. 1990) (“During examination, ‘claims . . . are to
be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the
art.’”)). And, “[w]hile not an absolute rule, all claim terms are presumed to
have meaning in a claim.” Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004). With regard to
figures, they may be “highly relevant in construing . . . limitations of the
claims.” CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1153 (Fed. Cir.
1997).
Appellant’s Figures 3 and 5 show the insert as having a single wall.
The Examiner does not point to, and we did not find, any disclosure in the
Specification or drawings to support the Examiner’s broad interpretation.
Moreover, dependent claim 27 adds only the limitation “wherein the
insert is a single-walled insert.”
The doctrine of claim differentiation “create[s] a presumption
that each claim in a patent has a different scope.” Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed.Cir.1998). The difference in meaning and scope between
claims is presumed to be significant “[t]o the extent that the
absence of such difference in meaning and scope would make a
claim superfluous.” Tandon Corp. v. United States Int’l Trade
Comm’n, 831 F.2d 1017, 1023 (Fed.Cir.1987).

Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed.
Cir. 2005). If we were to construe the claim term “single-walled” to mean
“at least one wall,” e.g., to include double-walled, it would make the term
“single” superfluous, and claim 27 would not be of a different scope than
claim 25.
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In light of Appellant’s Specification and drawings, we conclude that
the Examiner’s interpretation of the term “single-walled” is not a reasonable
one. Because the Examiner’s obviousness determination depends on this
incorrect claim interpretation, we will reverse the rejection of claims 26
and 27.

CONCLUSION
The Examiner’s rejection of claims 1, 6–12, 14, 22, and 23 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 13 and 25–32 under 35 U.S.C.
§ 103(a) is reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6–14, 22,
23, 25–32
103(a) Sauey,
Bodenbender,
Blessing
1, 6–12, 14,
22, 23
13, 25–32

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)(1)(iv).

AFFIRMED-IN-PART