Ex Parte Datta et al

Patent Trial and Appeal Board

Nov 28, 2016

13790592 (P.T.A.B. Nov. 28, 2016)

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.
13/790,592 03/08/2013 Saswati DATTA 10300MD 6299
27752 7590 11/30/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
GOTFREDSON, GAREN
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SASWATI DATTA, WILLIAM RANDALL BELCHER,
SANDRA LOU MURAWASKI, MANNIE LEE CLAPP, STEVEN
HARDY PAGE, RICHARD TWEDDELL III, LOUIS FAY WONG,
MAGDA EL-NOKALY, SOHINI PALDEY, and RONALD R. WARNER
Appeal 2015-005292
Application 13/790,592
Technology Center 1600
Before ULRIKE W. JENKS, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
product evaluation. The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company of Cincinnati, Ohio. App. Br. 1.
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Application 13/790,592
STATEMENT OF THE CASE
Background
The present invention [] describes methods of use of a
substrate having properties of mammalian keratinous tissue
(“substrate”) developed by the applicants. A substance,
examples of which are consumer products, can be topically
applied to the substrate, which can be analyzed by a wide
variety of methods to gain insight into properties of the
substance and/or substrate. The data obtained from the analysis
can provide insight into properties such as product deposition,
adhesion, cleansing, feel, and appearance, which in turn can be
correlated to consumer needs and preferences.
Spec. 2:11-17.
The following rejections are before us to review:
A. Claims 1—7 and 9-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Woolston,2 Ramkumar,3 Zahouani,4 Carnaby,5 and
Koenig6 (Ans. 2).
2 US 2003/0233861 Al, published Dec. 25, 2003 (“Woolston”)
3 US 6,397,672 Bl, issued June 4, 2002 (“Ramkumar”)
4 US 7,958,775 B2, issued June 14, 2011 (“Zahouani”)
5 US 5,727,567, issued Mar. 17, 1998 (“Carnaby”)
6 US 2003/0109811 Al, published June 12, 2003 (“Koenig”)
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B. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Woolston, Ramkumar, Zahouani, Carnaby, Koenig, Morykwas,7 and
Lambers8 (Ans. 6).
Claims 1—11 are on appeal. Sole independent claim 1 illustrates the
appealed subject matter and reads as follows:
1. A method of product evaluation comprising the steps of:
a) providing an artificial first substrate having a physical
property representative of mammalian keratinous tissue;
b) providing a second substrate;
c) contacting at least one of the substrates to an
instrument capable of measuring frictional force using a load
cell;
d) bringing the first substrate into contact with the second
substrate;
e) moving the first substrate with respect to the second
substrate in a controlled manner while maintaining substantially
continuous contact between the first substrate and the second
substrate; and
f) measuring the frictional force generated by the
movement of the first substrate relative to the second substrate.
App. Br. Claims App’x. 9.
With regard to the first rejection, we select claim 1 as representative of
the claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv).
7 M.J. Morykwas et al., Zeta Potential of Synthetic and Biological Skin
Substitutes: Effects on Initial Adherence. 79(5) Plast. Reconstr. Surg.
732—9 (May 1987)(“Morykwas”).
8 H. Lambers et al., Natural Skin Surface pH is on Average Below 5, Which
is Beneficial for its Resident Flora, 28(5) Int. J. Cosmet. Sci. 359—70 (Oct.
2006)(“Lambers”).
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Appellants do not separately argue the rejection of claim 8 under 35 U.S.C.
§ 103(a) as unpatentable over Woolston, Ramkumar, Zahouani, Carnaby,
Koenig, Morykwas, and Lambers, but rely on their arguments pertaining to
the first rejection (see App. Br. 7). Accordingly, we address these rejections
together and find it necessary to consider only Woolston, Ramkumar,
Zahouani, Carnaby, and Koenig, using claim 1 as representative of the
claims subject to the grounds of both rejections.
ISSUE
The issue with respect to the rejections is: Does the evidence of
record support the Examiner’s conclusion that Woolston, Ramkumar,
Zahouani, Carnaby, and Koenig suggest the invention of claim 1?
FACTUAL FINDINGS (FF)
FF 1. The Specification discloses ‘“[sjubstrate,’ as used herein, means one
or more materials which may have one or more physical properties
representative of keratinous tissue.” Spec. 7: 1—2.
FF 2. The Specification discloses ‘“[kjeratinous tissue,’ as used herein,
means keratin-containing layers disposed as the outer layer of mammalian
epidermal tissue, including skin, hair, nails, lips, vulvar region, buttock, and
nails.” Spec. 5: 20-22.
FF 3. Woolston discloses prior art methods for assessing the condition of
hair, including “measuring the degree of friction generated by subjecting the
hair to certain conditions,” assessment “by means of deformation of a
deformable assembly on a probe,” “comparing forward and reverse friction
forces. ... by means of a torque meter,” and “passing a fluid in turbulent
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flow over a bundle of hair and measuring friction by detecting pressure loss
in the fluid.” (Woolston || 4—7).
FF 4. Woolston discloses:
According to a first aspect of the invention we provide a
method for measuring the friction generated by a bundle of hair
fibres [sic], comprising providing a friction member, drawing
the friction member through the bundle of hair, whereby a
frictional noise signal is generated, and capturing the frictional
noise signal by a noise sensor. Generally the captured noise
signal is converted to a form that can be displayed. The
converted signal is then displayed using display means. Such
means may include, but is not limited to display screens
selected from the group consisting of a computer screen, a
cathode ray tube device, and a liquid crystal display device.
Woolston 116.
FF 5 Koenig discloses:
An in vitro testing method for predicting a coefficient of
friction exhibited by a material passed over human skin, in
vivo. A material operatively connects between a scaffold and a
load cell and a synthetic sheet mounts on the scaffold. A
porous layer is applied to an exposed surface of the synthetic
sheet, forming a simulated human tissue. The material engages
the simulated human tissue and moves relative to the scaffold to
measure the coefficient of friction between the material and the
simulated human tissue with the load cell.
Koenig Abstract.
FF 6 Koenig discloses:
To evaluate the coefficient of friction between the
simulated human tissue 41 and the test material 23, the test
apparatus 21 moves the test material relative to the scaffold 33
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to measure the frictional force between the test material and the
simulated human tissue with the load cell 29. Because the
normal force applied by the mass 107 is known and constant,
the frictional force measured by the load cell 29 is proportional
to the coefficient of friction. Typically, the scaffold 33 and
simulated human tissue 41 remain stationary, while the load
cell 29 pulls the test material 23 across the simulated human
tissue. However, any relative motion between the test material
23 and the simulated human tissue 41 may be used to create
friction.
Koenig 128 (emphasis omitted).
Principle of Law
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). 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. Graham
v. John Deere Co., 383 U.S. 1, 17 (1966). A central question in analyzing
obviousness is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
ANALYSIS
The Examiner finds that,
Woolston discloses an evaluation method for assessing the
condition of hair [], the method comprising measuring friction
in a human hair sample (wherein “hair” is a “keratinous tissue”
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as stated at paragraph 23 of the instant specification as
published) by providing a friction member (an “artificial first
substrate” of claim 1) and a hair sample (a “second substrate”
of claim[] 1 []), continuously contacting the friction member
and the hair sample by drawing the friction member through the
hair in a controlled manner, and measuring the resulting
frictional force between the friction member and the hair
sample using a noise sensor []. Woolston teaches that the
amount of friction generated between the friction member and
the hair is related to the roughness/smoothness of the hair (i.e.,
the “feel” of the hair), such that the method can be used to
assess the condition of the hair, and in particular the degree to
which the hair is damaged ....
(Ans. 2)
The Examiner finds that, with regard to claim 1, “Woolston does not further
expressly disclose that [] the frictional force is measured using a load cell as
recited by claim 1.” Id. at 3. The Examiner finds this element supplied by
Koenig:
Koenig discloses a method for predicting a coefficient of
friction exhibited by a material passed over human skin using a
load cell.... Koenig teaches that as friction between skin and
a personal care product increases, the likelihood of causing
damage to the skin also increases, and further that determining
the frictional properties of a particular skin care product yields
information about the way the product will feel on skin during
use.
Id. at 4.
We adopt and incorporate by reference the Examiner’s findings and
conclusions as presented in the Final Action mailed May 29, 2014, and
Answer. We find the subject matter of Appellants’ claimed invention prima
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facie obvious in view of Woolston and Koenig alone.9 The Board may rely
upon less than all the references cited by the Examiner. See In re May, 574
F.2d 1082, 1090 (CCPA 1978). We address the arguments raised by
Appellants on appeal below.
Appellants argue the ordinarily skilled artisan “would not be
prompted to combine the elements of Woolston, Ramkumar, Zahouani,
Carnaby and Koenig to reproduce the method recited in claim 1 of the
present application with a reasonable expectation of success. App. Br. 2.
Appellants argue,
The entire description of Woolston is directed to
measuring frictional noise generated by running a comb
through hair (e.g., with a microphone), and displaying the
corresponding waveform on a visual display unit. Woolston
even discloses that “[i]n the method it is necessary to use both
a friction member and a noise sensor.”[] Thus, while Woolston
may be directed, generally, to a method of assessing hair
condition/damage, the way in which it accomplishes this (i.e.,
the principle of operation) is by measuring frictional noise with
a noise sensor and correlating the frictional noise to a level of
hair damage. In contrast, the principle of operation of the load
cell of Koenig is by determining load (i.e., force) versus time
for two surfaces in moved across one another. []
Consequently, the Office’s assertion that substituting the
load cell of Koenig for the frictional noise sensor of Woolston
does not change the principle of operation of the device of
Woolston is clearly erroneous.
App. Br. 3^4.
9 We recognize that the Examiner relied on the teachings of Ramkumar,
Zahouani, Carnaby, Morykwas, and Lambers to address elements pertaining
to Appellants’ dependent claims; however, as Appellants have not separately
argued those claims, we do not address them here. 37 C.F.R.
§ 41.37(c)(l)(iv).
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According to Appellants, the
noise sensor of Woolston and the load cell of Koenig function
differently and produce different results. That is, the ‘result’ of the
noise sensor of Woolston is a displayed waveform produced from the
vibration of comb tines contacting hair, which can then be correlated
to the level of damage in hair, whereas the ‘result’ of the load cell of
Koenig is a measurement of force versus time.
Id. at 4. Appellants argue the Examiner failed to “properly support the
position that the skilled artisan would be able to predictably indicate the
level of damage to hair based on the force versus time output of the load cell
of Koenig.” Id. Appellants argue that without such reasoning, “it cannot be
said that substituting the load cell of Koenig for the noise sensor of
Woolston would yield predictable results.” Id. at 5. Appellants further
argue “substitution of the load cell of Koenig for the noise sensor of
Woolston is not a simple substitution” and that it is “not unreasonable to
conclude that additional modifications would need to be made to the load
cell of Koenig so that it could be adapted for use in a comb,” including that
“different hardware,” “different correlating means” and adaptation due to
“the sheer size of the device in Koenig” may be necessary. Id.
The Examiner responds that Woolston’s principle of operation is “the
drawing of a friction member through hair to generate friction between the
member and the hair, measuring the degree of said friction, and correlating
the degree of friction to the condition of the hair, wherein more friction
indicates a rougher condition of the hair.” Ans. 8. Thus, the Examiner
argues, the principle of operation is “preserved despite the modifications to
Woolston laid out by the rejection.” Id.
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The Examiner further finds that Koenig is shown to be “capable of
measuring frictional forces between a friction member and a sample of tissue
that is keratinous in nature.” Id. Specifically, the Examiner finds that,
[s]ince Koenig expressly teaches that a load cell can be used to
measure the friction between a material that is in contact with, and
moving with respect to, a sample comprising tissue that is also
keratinous in nature, the skilled artisan would reasonably expect that a
load cell could be used to determine the condition of the hair in the
Woolston method.
Id. at 9. The Examiner finds Woolston “expressly discloses that it is known
in the art that devices and techniques other than a noise sensor can be used to
determine the condition of hair by measuring its frictional properties and
nowhere discredits the concept of using devices other than a noise sensor.”
Id. The Examiner argues that because Woolston’s guidance teaches other
mechanisms are possible, and discloses mechanisms such as “measur[ing]
the condition of hair by comparing forward and reverse friction forces by
means of a torque meter” and Koenig teaches use of a load cell as a device
“capable of measuring the degree of friction between keratinous tissue and a
friction member moving with respect to each other,” replacing the noise
sensor of Woolston with the load cell of Koenig is a “simple substitution of
one known element for another to obtain predictable results.” Id. at 10
(emphasis omitted).
Appellants respond in their Reply Brief that “the Office has
completely excluded the noise sensor of Woolston from the principle of
operation analysis [] even though the noise sensor is at the very heart of the
device in Woolston.” Reply Br. 2. Appellants argue that when “the noise
sensor is properly included, the modification proposed by the Office (i.e.,
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substituting the force sensor of Koenig for the noise sensor of Woolston)
clearly changes this principle of operation.” Id. Appellants point to
teachings in Woolston regarding the desirability of a means for measuring
the “levels of damage across a range of hair types” as “implicitly teaching]
away from the use of conventional force measurement [a load cell] for
assessing damage to hair.” Id. (Emphasis omitted.). Appellants further
argue that “Woolston and Koenig both contain ample disclosure for the
skilled artisan to easily conclude that the size, type and placement of their
respective hardware [] size are different” and point to disclosures in the
references describing and depicting placement of the relevant components.
Id. at 3. Appellants argue these disclosures would be understood by one of
skill in the art to mean the “respective devices employ very different
hardware, and that the hardware of Koenig would need to be substantially
modified for use with the device in Woolston,” meaning the substitution
would not be simple and results would not be predictable, precluding a
finding of obviousness. Id. at 4. Appellants argue,
the Office should identify some physical embodiment that the
skilled artisan is allegedly starting with, based on a reading of
the primary reference as a whole, and provide reasoning for
each proposed modification in a logical path that leads to the
embodiment ultimately used to support the prima facie case.
Id. Appellants contend the Examiner, in failing to do so, has not provided
“the requisite reasoning to support a logical progression from the
exemplified device of Woolston to the hypothetical device proposed in the
Examiner’s Answer.” Id. at 5.
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Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case as to claim 1. As
the Examiner established, the prior art teaches multiple methods of using an
apparatus to measure friction on keratinous tissue, which Appellants’
Specification defines to include “skin” or “hair” or a substrate having the
properties of keratinous tissue (FF 1 & 2). These prior art methods include
assessing friction “by means of deformation of a deformable assembly on a
probe,” “comparing forward and reverse friction forces ... by means of a
torque meter,” and “passing a fluid in turbulent flow over a bundle of hair
and measuring friction by detecting pressure loss in the fluid,” (FF 3) as well
as Woolston’s method of measuring the frictional noise signal (FF 4) and
Koenig’s measurement of frictional force using a load cell method (FF 5 &
6). We agree with the Examiner that substituting the load cell of Koenig is a
simple substitution of the use of a different apparatus to measure friction of a
keratinous tissue that is per se obvious. See In re Font, 675 F.2d 297, 301
(CCPA 1982) (“Because both [references] teach a method for separating
caffeine from oil, it would have been prima facie obvious to substitute one
method for the other. Express suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.”).
Appellants provide no evidence that the substitution is impossible, but argue
there would be difficulties apparent to one of skill in the art based on
information in the references themselves. Reply Br. 3. This argument is
unpersuasive as some adaptation of prior art for use in a new manner is
expected. See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) (finding it obvious to adapt a known product
“using modem electronic components in order to gain the commonly
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understood benefits of such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost”). Absent evidence
demonstrating why the proposed obvious substitution would not function as
proposed, Appellants’ attorney arguments are insufficient to overcome a
prima facie case of obviousness. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
We are also not persuaded by Appellants’ argument that Woolston’s
disclosure regarding the desirability of a means for measuring the “levels of
damage across a range of hair types” implicitly teaches away from the use of
a load cell for measurement for assessing damage to hair because Woolston
does not discourage use of a load cell. Reply Br. 2 (emphasis omitted).
Instead, “[t]he prior art’s mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find that
one of ordinary skill in the art would have a reasonable expectation of
success in substituting the load cell taught by Koenig instead of the noise
sensor used by Woolston. “Obviousness does not require absolute
predictability of success. ... For obviousness under § 103, all that is
required is a reasonable expectation of success.” In re O Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988) (citations omitted).
Conclusion of Law
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Woolston, Ramkumar, Zahouani, Carnaby, and Koenig.
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Claims 2—7 and 9-11 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
As discussed above, Appellants have waived arguments directed to
Morykwas and Lambers (see App. Br. 7). We, therefore, also affirm the
rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Woolston, Ramkumar, Zahouani, Carnaby, Koenig, Morykwas, and
Lambers. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the
event of such a waiver, the PTO may affirm the rejection of the group of
claims that the examiner rejected on that ground without considering the
merits of those rejections.”).
SUMMARY
We affirm the rejection of claims 1—11 for obviousness.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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