Ex Parte Stambaugh et alDownload PDFPatent Trial and Appeal BoardMar 29, 201612384447 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/384,447 0410412009 7590 03/30/2016 Paul M, Denk 763 South New Ballas Road, Suite 170 St. Louis, MO 63141 FIRST NAMED INVENTOR Blaine Stambaugh 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. 7868 4564 EXAMINER AHMED, HASAN SYED ART UNIT PAPER NUMBER 1615 MAILDATE DELIVERY MODE 03/30/2016 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 BLAINE STAMBAUGH and SVEN DOBLER Appeal2013-003059 Application 12/384,447 Technology Center 1600 Before DONALD E. ADAMS, DEMETRA J. MILLS, and ZHENYU YANG, Administrative Patent Judges. YANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. § 134 involving claims to a device for delivering to a consumer a sample of cosmetic, including fragrances, within a magazine or other sheets of material. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as Blaine Stambaugh, Sven Dobler, and Orlandi, Inc. Br. 4. Appeal2013-003059 Application 12/384,447 STATEivIENT OF THE CASE The present invention relates to a sampler that "contains liquid fragrance within the texture of one of more substrate layers." Spec. 6: 11-12. According to the Specification, liquid-delivery type fragrance samplers "are well known in the industry and are commonly found in magazines, used as retail handouts, or contained in advertising mailers." Id. at 2:7-11. The Specification characterizes the system as unique because it retains "a liquid fragrance sample upon the sampler using surface tension of the fragrance in cooperation with the texture of the sampler and without a perimeter weld or gluing of the sampler." Id. at 2: 11-14. Claims 5-8, 10-12, 14, 15, and 20-23 are rejected and on appeal. Claim 21 is the only independent claim. It reads as follows: 21. A device for delivering a sample of cosmetic, including fragrances, to a consumer within a magazine or other sheets of material comprising: at least one sheet of flexible material normally comprising paper material; at least one barrier coating applied to said at least one sheet of material, said barrier coating forming an impermeable surface across said at least one sheet of material, said barrier coating comprising an ultraviolet curable, cationic type varnish being applied to the sheet of material in a thickness of about 0.3 to about 0.6 mils, and then curing said barrier coating at an ultraviolet light curing station; at least one section of textured coating applied to a portion of said at least one sheet of material bearing said barrier coating, said textured coating section being formed of a plurality of raised concentric ridges or a plurality of raised concentric surfaces that form a pattern of spaced apart cells or a plurality of pockets generally shaped into square shaped, quad cell-type pattern, a dot-matrix-type pattern, or a random dot pattern of formed cells having a thickness ranging from about 0.25 mils to about 2.5 mils 2 Appeal2013-003059 Application 12/384,447 with regard to any fragrance to be loaded therein; said textured coating comprising an ultraviolet curable cationic type adhesive, having a viscosity of approximately 825 centipoise, which when cured forms a pattern of cells capable of accepting the sample of cosmetic and fragrance; said sample of cosmetic being placed within said textured coating and interiorly of the perimeter of said textured coating, said sample of cosmetic being one of lipstick, non-liquid cosmetic material, liquid cosmetic material, liquid fragrance, or substantially gelled fragrance, and placed within said textured coating section and upon said barrier coating, said cosmetic being treated and chemically altered to maintain its viscosity and surface tension between about 40 centipoise and 2,400 centipoise, the modification of said liquid fragrances viscosity including the addition of blends of cellulose gums, cellulose derivatives, carboxymethylcellulose, sodium carboxymethylcellulose, hydropro cellulose, hydroxyethyl cellulose, methylcellulose, ethylcellulose, vegetable gums, zanthan gum, arcadia gum, alginates, carrageenan, alcogum, silicones, versa gels, clays, veegum, dentogel, silicas, surfactants, sodium or sulfate, avodiumloralsulfate, fillers, calcium polycarbophil, emulsions, polyvinylalkohol, and any combination thereof~ in order to provide for retention of the cosmetic within the textured coating formed cells and to retard their wetting and capillary action and migration therefrom, or seeping into said one sheet of flexible material; and a cover locating over the sheet of flexible material, its barrier coating, and the textured coating containing the cosmetic sample to maintain the same therein, and at least one non- permanent adhesive to hold the cover in adhered proximity with the said one sheet of flexible material, and said adhesive being located outside of the textured coating when adhering said cover to the said sheet. 3 Appeal2013-003059 Application 12/384,447 The Examiner rejected claims 5-8, 10-12, 14, 15, and 20-23 as unpatentable under 35 U.S.C. § 103(a) over Gunderman,2 Whitaker,3 Mossbrook, 4 and Sullivan, 5 and as evidenced by SARAN WRAP™ data sheet. 6 DISCUSSION Claim 21 The Examiner rejected claim 21 as obvious over Gunderman, Whitaker, Mossbrook, and Sullivan, and as evidenced by SARAN WRAP™ data sheet.7 Ans. 2. The Examiner referred to Gunderman for teaching "a cosmetic sampler with an integral applicator in which the unit dose of cosmetic is screen printed onto a paper base." Id. (citing Gunderman, Abstract). The Examiner states that Gunderman teaches an embodiment wherein a makeup sample is applied to a substrate such as a mailer or magazine insert. Id. According to the Examiner, Gunderman teaches an applicator attached to the 2 Gunderman et al., U.S. Patent No. 5,690,130, issued on Nov. 25, 1997 (hereinafter "Gunderman"). 3 Whitaker et al., U.S. Patent No. 5,645,161, issued on July 8, 1997 (hereinafter "Whitaker"). 4 Mossbrook et al., U.S. Patent Application Pub. No. 2005/0019533 Al, published on Jan. 27, 2005 (hereinafter "Mossbrook"). 5 William E. Sullivan, U.S. Patent No. 4,094,119, issued on June 13, 1978 (hereinafter "Sullivan"). 6 Dow SARAN WRAP™ 3 Plastic Film, MatWeb Material Property Data, matweb.com (hereinafter "SARAN WRAP™ data sheet"). 7 We note the Examiner relied on Sullivan for teaching the use of a porous coating layer, a limitation recited in claim 8 only. Ans. 7. Thus, for the rejection of claim 21, we do not discuss Sullivan. 4 Appeal2013-003059 Application 12/384,447 substrate as a laminate, wherein an adhesive is printed on the substrate, and fibers are introduced into a chamber and flocked onto the substrate. Id. (citing Gunderman, 3:52-55). According to the Examiner, the flocked fibers read on the "textured coating" recited in claim 21. Id. at 4. The Examiner acknowledged that while Gunderman teaches placing the cosmetic sample on a base material such as high gloss face stock, a substrate such as polyester film, polyester board, poly-coated paper, coated board, or formed plastic, it does not explicitly teach a barrier coating. Id. at 3 (citing Gunderman, 4:21-22, 6:50-53, 8:14). The Examiner, however, referred to Whitaker for teaching a fragrance sampler comprising a carrier, a barrier applied to the carrier, and a wet fragrance sample applied to the barrier. Id. (citing Whitaker, 2:51-55). The Examiner also pointed to Whitaker for teaching an ultraviolet curable coating. Id. at 6 (citing Whitaker, 2:65). In this regard, the Examiner further referred to Mossbrook for explaining the advantages of radiation cured coatings. Id. (citing Moss brook i-f 70). The Examiner pointed out that Mossbrook teaches RAD-KOTE™ K261 as an example of radiation curable coating. Id. (citing Mossbrook i-f 81 ). According to the Examiner, because this is the same material as disclosed in the instant Specification, the properties, such as the viscosity, would be the same as those recited in claim 21. Id. at 12. Thus, the Examiner concluded that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the teachings of Gunderman, Whitaker, and Mossbrook to achieve the invention of claim 21. Id. at 7. Appellants first criticize that "it has taken the examiner the combination of five different pieces of prior art, to come up with alleged 5 Appeal2013-003059 Application 12/384,447 • ' ' ' ... ... ' .. .. • .. 1 • ' ' ' .... 2 ~ .. -answenng structure to me app11cants' ciam1eo subject matter."U tir. u. Reliance on a large number of references in a rejection, however, does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (affirming an obviousness rejection based on thirteen prior art references). Appellants next point out that Mr. Dobler, one of the inventors of this application, is also one of the named inventors of Whitaker. Br. 14. According to Appellants, "Mr. Dobler exceeds the qualifications of one skilled in the art, by being the inventor of the cited previous patent." Id. at 14--15. Appellants contend that ifthe claimed invention was not obvious to Mr. Dobler, then it cannot be obvious to one of ordinary skill in the art. Id. at 15. We disagree. The obviousness determination requires an objective analysis, which focuses on what a person of ordinary skill would have known at the time of invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Instead of ascertaining what was subjectively obvious to the inventor at the time of invention, we must ascertain what would have been objectively obvious to one of ordinary skill in the art at such time. Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). Thus, whether the claimed invention was obvious to Mr. Dobler is irrelevant to our inquiry of obviousness. 8 We note the Examiner relied on Sullivan for teaching the use of a porous coating layer, a limitation recited in claim 8 only. Ans. 7. 6 Appeal2013-003059 Application 12/384,447 Appellants acknowledge that "[t]here is no doubt that the variety of prior art cited by the examiner defines various fragrance samplers." Br. 14. Appellants further concede: The various prior art cited and relied upon by the examiner may show related materials, and how these materials individually may either provide for changing viscosity of some substance, the use of barrier coatings that may be radiation cured to prevent cracking of the coating, while other prior art may show radiation curable coatings. Id. at 16. Nevertheless, Appellants contend that "all of these considerations are just not used within the four comer of the invention as explained and claimed for the current invention." Br. 16. We are not persuaded. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane). For example, the Examiner relied on Gunderman for teaching the textured coating. See Ans. 4. Thus, we are not persuaded by Appellants' argument that Whitaker does not teach a textured coating, "as explained and claimed for the current invention." Br. 14-15. Appellants contend that Gunderman "does not describe ... any type of patterned cellular formed construction, in the manner of the textured surface 4 of applicants' invention, and does [not] specifically define dimensions, that form those grid work or cells that hold the fragrance therein." Id. at 14. Appellants also assert that, flocked fibers in Gunderman do not read on the claimed textured surface "that is formed of an ultraviolet 7 Appeal2013-003059 Application 12/384,447 curable adhesive, to form a skeletal like pattern structure for the formed cells of the current invention." Id. We are not persuaded by either argument. Gunderman teaches that fibers are flocked onto the substrate. Gunderman, 3:52-55. It is true that Gunderman does not teach the thickness of the flocked fibers (i.e., textured coating). The Examiner, however, found that Gunderman teaches "the flocked fiber adhered substrate containing cosmetic sample (equivalent to applicants' 'textured coating') may be die cut to a desired shape to form an applicator." Ans. 5 (citing Gunderman, 8:61---63). The Examiner also explained that "[t]hickness may be optimized by routine experimentation." Ans. 3. Appellants do not challenge this statement. We agree with the Examiner that the thickness of the textured coating merely depends on the amount of the fragrance to be contained in the sampler, and does not confer patentability to claim 21. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984) (holding that where the only difference between the prior art and the claims was a recitation of dimensions of the claimed device, and a device having the claimed dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device). Gunderman suggests that the shape and size of the textured coating are subjective, result effective variables, dependent upon what one of ordinary skill in the art desires for the shape and use of the applicator. Determining the optimal values of result effective variables is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980). See also In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here general conditions of a 8 Appeal2013-003059 Application 12/384,447 claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). Claim 21 recites patterns of the textured coating forming specific shapes of cells and pockets. Br. 19. The Examiner pointed out that Appellants have not shown any criticality in the patterns and shapes. Ans. 9. As a result, the Examiner determines, the patterns and shapes are "a matter of engineering design choice." Appellants do not challenge this conclusion either. We, again, agree with the Examiner. Gunderman teaches applying the flocked fabrics "in a chosen register or pattern" to form the applicator. Gunderman, 3:55-57; see also id. at 8:64--9:4 (describing applying the flocked fibers in a pattern on a substrate, and embossing/debossing the applicator area). Because Gunderman teaches cutting the flocked fabrics into any "desired shape" (id. at 8:61---63), and because Appellants have not shown the recited shape or pattern of the cells or pockets would provide any unexpected result, the shape "would be an obvious design choice within the skill of the art." See In re Magna Elecs., Inc., 611 F. App'x 969, 974 (Fed. Cir. 2015) (quoting In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)); see also In re Dailey, 357 F.2d 669, 672-73 (CCPA 1966) (holding that absent persuasive evidence showing the particular configuration of the claimed container was "significant or [was] anything more than one of numerous configurations a person of ordinary skill in the art would find obvious," the configuration of the claimed container was a "mere matter of choice"). Regarding Appellants' contention that, fibers, like cotton, do not read on textured coating "that is formed of an ultraviolet curable adhesive" (Br. 14 ), we first note that claim 21 recites "said textured coating comprising an 9 Appeal2013-003059 Application 12/384,447 ultraviolet curable cationic type adhesive." Br. 19 (emphasis added). The transitional term "comprising" is open-ended and does not exclude additional, unrecited elements. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371-73 (Fed. Cir. 2005). Thus, claim 21 does not limit the textured coating as formed solely of an ultraviolet curable adhesive. Moreover, as explained above, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. Merck, 800 F .2d at 1097. Here, Whitaker teaches an ultraviolet curable coating is preferred (Whitaker, 2:65), and Mossbrook explains various advantages of ultraviolet curable coating (Mossbrook i-f 70). Thus, we agree with the Examiner that an ordinary artisan would have been motivated to use an ultraviolet curable adhesive for the textured coating. See Ans. 7. Appellants assert that "Mossbrook is an unrelated invention," and the coating therein is used in food packaging, and thus for a different purpose. Br. 15. We are not persuaded. As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Here, the Examiner relied on Whitaker for teaching the ultraviolet curable coating. Ans. 6. The Examiner referred to Mossbrook merely to explain the advantages of such a coating. Id. Thus, an ordinary artisan, already aware of the ultraviolet curable coating taught in Whitaker, would have had confirmation from Mossbrook that such a coating is advantageous. In sum, we agree with the Examiner that it would have been obvious to a person of the ordinary skill in the art at the time of the invention to 10 Appeal2013-003059 Application 12/384,447 combine the teachings of Gunderman, Whitaker, Iviossbrook, and SARAN WRAP™ data sheet to arrive at the invention of claim 21. Dependent Claims The Examiner rejected dependent claims 5-8, 10-12, 14, 15, 20, 22, and 23 as obvious over Gunderman, Whitaker, Mossbrook, and Sullivan, and as evidenced by SARAN WRAP™ data sheet. Ans. 2. Claim 8 depends from claim 21, and further recites "a porous coating layer upon one of said textured coating section and said barrier coating." Br. 18. The Examiner relied on Sullivan for teaching this additional limitation. Ans. 7. According to the Examiner, the "use of a porous coating layer in a product used for dispensing a volatile substance was known in the art at the time the instant application was filed." Id. (citing Sullivan, 4:30-32). Appellants acknowledge that Sullivan teaches a porous coating layer to "control the rate of substance volatilization." Br. 15-16. Nevertheless, Appellants contend that Sullivan "is really not applicants' invention" because it "wants permeability," not "retards migration, as done with the current invention." Id. We are not persuaded. First, claim 8 does not require a porous coating layer that, as Appellants assert, "retards migration." Moreover, as explained above, prior art may be combined for reasons different from those contemplated by the inventor. Beattie, 974 F.2d at 1312. Here, Gunderman teaches a sampler for sampling fragrances (Gunderman, Abstract), and Sullivan teaches that a porous coating would determine the rate at which fragrance, a volatile substance, volatilizes from the dispensing device (Sullivan, 2:18-25, 5:24-- 27). Thus, even assuming, without deciding, that Sullivan "wants permeability," we agree with the Examiner that for a device designed to 11 Appeal2013-003059 Application 12/384,447 deliver fragrance, an ordinary artisan would have had a reason-to control the rate at which the fragrance volatilizes-to use a porous coating as taught by Sullivan. See Ans. 8. Appellants do not argue claims 7, 10, 11, and 14 separately. Thus, they fall with claim 21. For claims 5, 6, 12, 15, 20, 22, and 23, Appellants merely repeat the additional limitations and conclusorily asserts that the prior art does not teach those limitations. Br. 16. "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 37 C.F.R. § 41.37; see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating that "a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art" is insufficient under Rule 41.37). Thus, Appellants waived any separate patentability arguments as to claims 5, 6, 12, 15, 20, 22, and 23. These claims fall with claim 21 too. SUMMARY We affirm the rejection of claims 5-8, 10-12, 14, 15, and 20-23 under 35 U.S.C. § 103. 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 12 Copy with citationCopy as parenthetical citation