L'OREAL

Patent Trials and Appeals BoardAug 20, 2021

2021002568 (P.T.A.B. Aug. 20, 2021)

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. 15/104,026 06/13/2016 Alain BERHAULT 171345 8200 92793 7590 08/20/2021 OLIFF PLC (with Nony) P.O. Box 320850 Alexandria, VA 22320-4850 EXAMINER STEITZ, RACHEL RUNNING ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 08/20/2021 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): OfficeAction92793@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALAIN BERHAULT, ERIC CAULIER, and AUDREY THENIN ____________ Appeal 2021-002568 Application 15/104,026 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and BRETT C. MARTIN, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Aug. 13, 2020, hereinafter “Final Act.”) rejecting claims 1–6 and 8–18. Appellant’s representative presented oral argument on August 10, 2021. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. L’OREAL is identified as the real party in interest in Appellant’s Appeal Brief (filed Nov. 13, 2020, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2021-002568 Application 15/104,026 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is directed “to applicators for applying a cosmetic, makeup or care, product to the eyelashes or eyebrows.” Spec. 1, ll. 3–4. Claim 1 is illustrative of the claimed invention and reads as follows: 1. Applicator for applying a cosmetic or care product to eyelashes or eyebrows, having a moulded applicator member having: a core that extends along a longitudinal axis, spikes that are carried by the core and extend from the core, a majority of the spikes being substantially parallel to a reference direction which is a direction of an elongation axis of one of the spikes, elongation axes of the spikes being parallel or slightly inclined with respect to the reference direction at an angle of less than or equal to 15°, the core having, at least in cross section in a plane perpendicular to the longitudinal axis, an outwardly concave overall shape, forming a cavity, spikes being disposed inside the cavity in the core, and the core having a through-orifice. Appeal Br. A-1 (Appendix A, Claims App.) Appeal 2021-002568 Application 15/104,026 3 REJECTIONS I. The Examiner rejects claims 1–4 and 8–18 under 35 U.S.C. § 103 as being unpatentable over Gueret ’1812 and Gueret ’027.3 II. The Examiner rejects claims 5 and 6 under 35 U.S.C. § 103 as being unpatentable over Gueret ’181, Gueret ’027, and Thiebaut.4 ANALYSIS Rejection I The Examiner finds Gueret ’181 discloses an applicator including, inter alia, core 10, spikes 23, and through-orifice 19, but “does not disclose an outwardly concave overall shape of the core.” Final Act. 2 (citing Gueret ’181, Figs. 1, 2). Nonetheless, the Examiner finds Gueret ’027 discloses an applicator with a core having “an outwardly concave overall shape to help hold and retain a cosmetic product.” Id. at 3 (citing Gueret ’027, para. 180, Figs. 48, 49). Thus, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art to modify the core of the applicator of Gueret ’181 to “have an outwardly concave shape as taught by Gueret ’027 to help receive and store more cosmetic product prior to application.” Id. 2 Gueret, US 2006/0279181 A1, published Dec. 14, 2006. 3 Gueret, US 2007/0020027 A1, published Jan. 25, 2007. 4 Thiebaut, FR 2 968 906 A1, published June 22, 2012. We derive our understanding of this reference from the English language translation contained in the image file wrapper of this application. Appeal 2021-002568 Application 15/104,026 4 Appellant argues that a person of ordinary skill in the art “would not have been incited to bend the applicator of [Gueret ’181] to make it have a concave shape, because . . . opening 19 . . . already enables to load the eyelashes with a composition when the opening is filled therewith.” Appeal Br. 8. According to Appellant, the Examiner’s rejection is based on impermissible hindsight. Id. at 10. The reason proffered by the Examiner to modify the core of the applicator of Gueret ’181 to “have an outwardly concave shape as taught by Gueret ’027,” namely, “to help receive and store more cosmetic product prior to application” appears to already be performed by the applicator of Gueret ’181. See Final Act. 3. In particular, Gueret ’181 discloses opening 19 as being “completely filled with composition” in order to “enable the eyelashes to be well loaded.” Gueret ’181, paras. 116, 117. The Examiner has not provided any findings that Gueret ’181 recognized a problem with storing cosmetic product in opening 19 or that the concave shaped core of Gueret ’027 stores “more cosmetic product” than opening 19 of Gueret ’181. Neither has the Examiner adequately explained why a skilled artisan would have desired to store cosmetic product in both opening 19 and the concave shaped core of Gueret ’181, as modified by Gueret ’027. Moreover, even though we appreciate that paragraph 20 of Gueret ’027 discloses that “[t]he cavity may serve to constitute a supply of composition,” we note that the “cavity” refers to through-orifice 12 and not to the cavity shape of concave core 13. See Gueret ’027, para. 20, Figs. 2, 49. Hence, without a persuasive articulated rationale based on rational underpinnings for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) Appeal 2021-002568 Application 15/104,026 5 (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). In addition, we note that in reviewing the record, the Examiner’s Answer offers no rebuttal to Appellant’s hindsight argument that a skilled artisan would not have modified the applicator of Gueret ’181 to have a core with a concave shape, as taught by the applicator of Gueret ’027, because opening 19 of Gueret ’181 already stores cosmetic product. See Appeal Br. 8–10. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of claims 1–4 and 8–18 as unpatentable over Gueret ’181 and Gueret ’027. Rejection II The Examiner’s use of the Thiebaut disclosure does not remedy the deficiency of the Gueret ’181 and Gueret ’027 combination discussed supra. See Final Act. 4. Therefore, for the same reasons discussed above, we also do not sustain the rejection of claims 5 and 6 over the combined teachings of Gueret ’181, Gueret ’027, and Thiebaut. Appeal 2021-002568 Application 15/104,026 6 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–4, 8–18 103 Gueret ’181, Gueret ’027 1–4, 8–18 5, 6 103 Gueret ’181, Gueret ’027, Thiebaut 5, 6 Overall Outcome 1–6, 8–18 REVERSED