Ex parte Wyeth

• Decision Date: 04 February 2010
• Docket Number: 009,APPEAL 2009-008674,Reexamination Control 90/007
• Parties: Ex parte WYETH, Patent Owner and Appellant Patent 6, 695, 510 B1 Technology Center 3900
• Court: Patent Trial and Appeal Board

Ex parte WYETH, Patent Owner and Appellant Patent 6, 695, 510 B1 ^[1] Technology Center 3900

APPEAL 2009-008674

Reexamination Control 90/007, 009

United States Patent and Trademark Office, Patent Trial and Appeal Board

February 4, 2010

Before CAROL A. SPIEGEL, DANIEL SONG, and KEN B. BARRETT Administrative Patent Judges.

DECISION ON APPEAL

SPIEGEL, Administrative Patent Judge.

I. Statement of the Case

Appellant appeals under 35 U.S.C. §§ 134 and 306 from an Examiner's final rejection of all pending claims, claims 11, 22, 26, 28, 31, and 32 (App. Br.^[2] 2 Ans.^[3] 2). Oral argument was heard August 5 2009.^[4]We have jurisdiction under 35 U.S.C. §§ 134 and 306. We REVERSE.

A reissue application on the 510 patent was filed September 21, 2006 and assigned application number 11/526, 900 (hereinafter "the 900 application"). Prosecution in the 900 application has been suspended pursuant to 37 C.F.R. § 1.103(e) until conclusion of this reexamination proceeding (Reply Br.^[5] 2).

The subject matter on appeal is directed to a multi-composition stick product comprising a multi-color stick composition that is directly molded in the container in which the product is sold such that the stick composition is in sliding contact with the walls of the container. The stick composition is molded in a predetermined pattern and appears transparent or translucent when applied to a substrate. Claim 32 is illustrative and reads (App. Br. App'x A 19, underlining omitted, emphasis added):

32. A multi-composition stick product, comprising:

(a) a container having walls, said walls being substantially smooth; and

(b) a molded multi-color stick composition disposed so as to be in sliding contact with the walls of the container and be advanceable and retractable in the container, wherein all of the walls of the container proximate to said molded stick composition are rigid throughout, the stick composition comprising:

(i) a first composition containing wax and in contact [sic, with] the walls; and

(ii) a second composition containing wax and in contact with the first composition and the walls;

wherein the first and second compositions differ in color and are arranged in a predetermined non-random image that is reproducible, and wherein the stick composition appears transparent or translucent when applied to a substrate.

Claims 1, 22, 26, and 28 define the stick product as a lip balm. Claim 31 defines the stick product as a lip balm, sunscreen, or deodorant.

The Examiner has rejected the claims as unpatentable under 35 U.S.C. § 103(a) as follows: (i) claims 11, 26, 28, and 31 as obvious over the combined teachings of Oeda^[6] and Kapustin^[7] (Ans. 5-7), (ii) claim 22 as obvious over the combined teachings of Oeda, Kapustin, and Sheehan^[8] (Ans. 7), and (iii) claim 32 as obvious over the combined teachings of Oeda, Kapustin, and Pisani^[9] (Ans. 7-9).

According to Appellant, all of the claims stand or fall together (App. Br. 7). Therefore, we decide this appeal on the basis of claim 32. 37 C.F.R. §41.37(c)(1)(vii).

Appellant argues that (a) the applied prior art describes lipsticks, (b) lipsticks do not touch the sides of their containers, and (c) lipsticks are used to impart a color when used, not to be transparent or translucent when applied (App. Br. 7, 9-12; Reply Br. 3-4, 6, 11-12). Appellant relies on Hoffman, ^[10] Lynn, ^[11] and Clark^[12] as evidence that lipstick products comprises a stick composition seated in a cup within a container wherein the cup is used to raise and lower the stick composition without touching the sides of the container (App. Br. 8; Reply Br. 3-4).

At issue is whether Appellant has shown that the Examiner reversibly erred in finding that Oeda and/or Kapustin teach or suggest a lipstick product containing (a) a stick composition in sliding contact with the walls of its container and (b) which appears transparent or translucent when applied by a user. II. Findings of Fact (hereinafter "FF")

The following findings of fact are supported by a preponderance of the evidence of record.

A. The 510 patent

[1] The 510 patent defines the term "stick product" as

a product comprising a container and a stick composition, where the stick composition is (a) manufactured directly in the container in which it is sold, so that the container also serves as a mold during the casting process, whereby the composition is in contact with the side walls of the container, and (b) advanced/ejected and retracted, such as by mechanical rotation or mechanical force without rotation, through an open end of the container (510 patent 4:23-31).

[2] The stick composition is suitable for use as a lip balm, lipstick, lip gloss, deodorant, sunscreen, or glue stick (510 patent 7:46-49).

[3] In one embodiment, a multi-composition stick product is manufactured by inserting a mold shaft into a container; dispensing a first composition into the container around the mold shaft; removing the mold shaft, thereby forming a cavity; and, filling at least a portion of the cavity with a second composition (510 patent 2:46-52).

[4] Each composition contains at least one component, such as a colorant, fragrance, or flavoring, not contained in the other composition (510 patent 2:33-44; 4:65-5:3; 6:30-31).

[5] The term "color" includes "clear, transparent, opaque, as well as any other color, shade or tone of the color spectrum", such as titanium dioxide, red iron oxide, Red 21, and Red 27 (510 patent 6:33-36; 7:13-18).

[6] Typically, the compositions become transparent or translucent due to the thinness of the film formed or a property of the compositions when the stick composition is swiped or applied onto a substrate (510 patent 7:7-12). B. The applied prior art

[7] Oeda discloses a core-sheath type lipstick molded from two compositions, one containing a low viscosity oily ingredient and wax and the other containing a viscous oily ingredient and wax, suitable for use as a colored lip rouge or as an uncolored lip cream (Oeda 2:45-68; 3:66-4:6; 5:44-49).

[8] Oeda Figure 5 depicts an embodiment of a molded lipstick comprising a sheath composition 5 and a core composition 7 which differ in color (i.e., the amount and type of pigments present in each composition) and arranged in a defined pattern (Oeda 8:1-44). Figure 5 is reproduced below.

(Image Omitted)

(Figure 5 of Oeda above depicts a core-sheath type lipstick with a circular core pattern.}

[9] According to Oeda, uncolored lip cosmetics usually contain no color, whereas colored lip rouges may contain inorganic or organic color pigments, such as titanium dioxide or Red No. 21, respectively (Oeda 5:38-62).

[10] According to Oeda, a molten mass of sheath composition is poured into a cavity of mold containing a central rod and cooled to solidify. The rod is removed and a molten mass of core composition is poured into the hollow left by the rod and cooled to form the core. The resulting product is removed from the mold and mounted in a suitable case to obtain a core-sheath type lipstick (Oeda 6:60-7:17; 8:28-41).

[11]Pisani discloses a molded parallel tri-colored or alternating bi-colored lipstick which permits the user to apply a variety of colors or blends of colors to the lips (Pisani abstract; 1:7-11; 2:34-44; Fig. 1).

[12]According to Pisani, a T-shaped insert is centrally placed in a cylindrical cavity of a main body of a mold in order to form color divisions, first and third laminae are poured, the insert is later removed, the second intermediate lamina is poured, and the lipstick is removed from the mold (Pisani abstract; 2:51-56; Figs. 5-6).

[13] Kapustin Figure 1 illustrates a molded lipstick composition 10 having (a) a shape that would fit within a casing having a base portion cup of approximately V₂ inch diameter and (b) a lip liner 16 extending along and intimate contact with a portion of a lipstick mass 14 slidably mounted in casing 12 which permits a user to apply both the lipstick and liner at the same time (Kapustin 2:8-23; 3:29-40). Figure 1 is reproduced below.

(Image Omitted)

(Figure 1 of Kapustin above is a perspective view of a lipstick bullet slidably mounted in a lipstick case.}

C. Appellant's rebuttal evidence

[14] Hoffman depict a lipstick material 12 supported in a cup shaped slidable carrier 13 within a container 10 in a closed and open position, respectively (Hoffman 1:35-41; 1:48-2:2). Stepped side plates 15a and 16a of guide lining 14 and aligned walls of wings 21 ofrotatable member 20 provide guide means for raising and lowering carrier cup 13 (Hoffmann 2:26-30). Figures 2 and 3 are reproduced below.

(Image Omitted)

(Figures 2 and 3 above depict a lipstick container according to Hoffman in the closed and open positions, respectively.}

[15] Lynn discloses a lipstick container with a removable cover. Figure 2 shows cup 9 adapted to be slidably positioned within an inner tubular member 1 and carrying a lipstick material 10 (Lynn 2:14-16). To insert the lipstick into the container, cap 5 is removed and the cup 9 is moved into the interior of the inner tubular member 1 (id. 2:22-24).

Figure 2 is reproduced below.

(Image Omitted)

(Figure 2 above is a longitudinal sectional view of a lipstick container according to Lynn.}

[16] According to Clark, "it has always been a problem to load cosmetic substance into the carrier without smearing the cosmetic substance on the hands or around the container" (Clark 1:19-22).

[17] Clark discloses a carrier-cup-and-lipstick assembly fully encased by a disposable closure cap which is removably attached to and carried by the outer periphery of the carrier cup (Clark 2:40-45).

[18] An embodiment shown in Figure 6 of Clark depicts a lipstick-cartridge assembly comprising a lipstick 41 in a carrier (cup) 14'...