Ex Parte Garitano et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10770545 (B.P.A.I. Jan. 24, 2012)

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.
10/770,545 02/02/2004 Gilbert Garitano DERMA-08771 1878
72960 7590 01/25/2012
Casimir Jones, S.C.
2275 DEMING WAY, SUITE 310
MIDDLETON, WI 53562
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
01/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GILBERT GARITANO and LINDA GARITANO
__________

Appeal 2010-008994
Application 10/770,545
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of applying tattoos. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“The present invention relates to methods and compositions for the
needleless administration of permanent cosmetics and tattoos. In particular,
the present invention relates to hypodermic injectors for use in delivering
pigment or other desired materials to targeted layers of the skin” (Spec. 1, ll.
3-6).
The Claims
Claims 15, 17, and 18 are on appeal. Claim 15 is representative and
reads as follows:
15. A method of applying permanent and semi-
permanent tattoos or makeup within the skin of a
subject comprising:
a) providing a needleless injector, wherein said
injector comprises cosmetic dye;
b) placing a surface of said injector in contact
with the skin surface of said subject;
c) activating said injector at a sufficient
velocity to pierce the skin surface of said subject, such
that said cosmetic dye is injected into layers of the
skin; and
d) repeating steps b) and c) one or more times
so as to i) create a permanent or semi-permanent
tattoo within said skin of said subject, or ii) generate
permanent or semi-permanent makeup within said
skin of said subject.

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The issue

The Examiner rejected claims 15, 17, and 18 under 35 U.S.C. § 103(a)
as obvious over Magnet
1
and Castellano
2
(Ans. 3-4).
The Examiner finds that “Magnet discloses a conventional method of
applying permanent and semi-permanent tattoo or makeup within the skin of
a subject” (Ans. 3). The Examiner finds that “Magnet suggests that
providing a need[le] injector but not needle-less injector” (Ans. 3). The
Examiner finds that “Castellano teaches that a needle-less injector suitable
for injecting fluid medication through a skin surface (in other words, within
the skin) of a patient” (Ans. 3).
The Examiner finds it obvious to “try the method of using needle-less
injector, as taught by Castellano, in an attempt to provide an improved
method of tattoo, avoiding the ink/cosmetic dye to the blood stream” (Ans.
3).
Appellants contend that “Magnet teaches injecting under the skin
using a needle. Specifically, the Magnet reference teaches using „a
reciprocating needle to inject ink, dye or similar fluid under the patient’s
skin‟ (column 2, lines 33-35). The Magnet reference does not teach injecting
into layers of the skin as is presently claimed” (App. Br. 4). Appellants
contend that the “Castellano reference teaches injecting medication through
the skin, resulting in subcutaneous deposition beneath the layers of skin,
not within the skin” (App. Br. 5). Appellants contend that “[b]ecause of the
lack of guidance or expectation of success, there is no proper motivation

1
Magnet, Anton, US 5,279, 552, issued Jan. 18, 1994.
2
Castellano et al., US 5,851,198, issued Dec. 22, 1998.
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presented for why one of ordinary skill in the art would attempt such a
combination” (App. Br. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s finding that Magnet and Castellano render claim 15
obvious?
Findings of Fact
1. The Specification teaches that the “the term „sufficient velocity
to pierce the skin surface of a subject‟ refers to a velocity capable of
delivering an injectable material beneath the skin surface of a subject. In
preferred embodiments, the velocity delivers the injectable material to the
subdermal tissue, while avoiding substantial delivery to the bloodstream”
(Spec. 8, ll. 19-23).
2. The Specification teaches that “fluid materials can be delivered
beneath the skin if accelerated at a velocity between about 800 feet per
second and 1,200 feet per second, although lower or higher velocities may
be appropriate for particular injectable materials or skin types” (Spec. 8, ll.
24-26).
3. Magnet teaches “an intradermal injection device (or tattooing
device or intradermal surgical device) which is placed against the skin of a
patient and uses a reciprocating needle to inject ink, dye or similar fluid
under the patient‟s skin, usually in a predetermined visible pattern” (Magnet,
col. 2, ll. 31-36).
4. Magnet teaches that prior art “devices inject ink, dye or other
marking fluid (referred to hereafter collectively as „ink‟ for brevity) just
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under the skin surface, so that the ink is retained within the skin” (Magnet,
col. 1, ll. 13-16).
5. Magnet teaches that:
As needle 14 reciprocates, it alternately moves into chamber
8 and picks up ink and then moves outwardly with the ink,
punctures the patient‟s skin, and deposits the ink under the
skin surface. Thus with each reciprocation, a quantity of ink
is picked up on that portion of the surface of needle 14
which comes within the chamber 8. The surface of needle 14
is essentially completely covered with ink, and the
reciprocation causes a continual flow of ink distally along
the needle 14 and into the patient‟s skin.

(Magnet, col. 5, ll. 13-22).
6. Castellano teaches that “a compressed gas activated needle-less
injector device is suitable for injecting liquid medication through the skin
surface” (Castellano, col. 3, ll. 6-8).
7. Castellano teaches that the “fluid medication is generally
accelerated at a high rate to a speed of between about 800 feet per second
(fps) and 1,200 fps . . . This causes the fluid to pierce through the skin
surface without the use of a needle, resulting in the medication being
deposited in a flower pattern under the skin surface” (Castellano, col. 1, ll.
21-27).
8. Castellano teaches that this “method of medication delivery is
referred to as a subcutaneous injection” (Castellano, col. 1, ll. 28-29).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Magnet teaches “an intradermal injection device (or tattooing device
or intradermal surgical device) which is placed against the skin of a patient
and uses a reciprocating needle to inject ink, dye or similar fluid under the
patient‟s skin, usually in a predetermined visible pattern” (Magnet, col. 2, ll.
31-36; FF 3).
Castellano teaches “a compressed gas activated needle-less injector
device is suitable for injecting liquid medication through the skin surface”
(Castellano, col. 3, ll. 6-8; FF 6).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would combine the “the
method of using needle-less injector, as taught by Castellano, in an attempt
to provide an improved method of tattoo, avoiding the ink/cosmetic dye to
the blood stream” (Ans. 3). Such a combination is merely a “predictable use
of prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Appellants contend that “Magnet teaches injecting under the skin
using a needle. Specifically, the Magnet reference teaches using „a
reciprocating needle to inject ink, dye or similar fluid under the patient’s
skin‟ (column 2, lines 33-35). The Magnet reference does not teach injecting
into layers of the skin as is presently claimed” (App. Br. 4).
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We are not persuaded. Magnet expressly teaches that the deposition
device is an “intradermal” device (FF 2). An intradermal injection is
reasonably interpreted as an injection between the layers of the skin, and is
distinct from a subcutaneous injection underneath all of the layers of the
skin. This interpretation is consistent with the knowledge of the ordinary
artisan in the tattoo arts that a
number of intradermal injection and surgical devices for use
in applying permanent cosmetics have been known for
years. They are commonly used, for example, to create
decorative tattoos on a person's skin or to form permanent
eyelid liners to replace paint-on cosmetic eyelid liners. The
devices inject ink, dye, or other marking fluid just under the
skin surface, so that the ink is retained within the skin and
the color of the ink and the design formed by the ink
injection pattern is visible.

(Spec. 1, ll. 11-17).
Appellants contend that the “Castellano reference teaches injecting
medication through the skin, resulting in subcutaneous deposition beneath
the layers of skin, not within the skin” (App. Br. 5).
While Appellants correctly note that Castellano states that the device
results in subcutaneous injection, below the layers of the skin (FF 6-8), the
Examiner noted that the actual range of speeds taught by Castellano to inject
the material is 800 fps to 1200 fps (FF 7; Ans. 5), which is the exact same
range disclosed by Appellants‟ Specification, which teaches that “fluid
materials can be delivered beneath the skin if accelerated at a velocity
between about 800 feet per second and 1,200 feet per second, although
lower or higher velocities may be appropriate for particular injectable
materials or skin types” (Spec. 8, ll. 24-26; FF 2; Ans. 5).
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Since the range of speeds of injection disclosed in Appellants‟
Specification and in Castellano are identical (FF 2, 7), the Examiner
reasonably concluded that Castellano satisfied the functional limitation of
“sufficient velocity to pierce the skin surface of said subject, such that said
cosmetic dye is injected into layers of the skin” as required by claim 15. See
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) ( [W]here the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on. … Whether the rejection is
based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness”
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.”) Appellants have
provided no rebuttal evidence that the device of Castellano would not be
suitable for delivering cosmetic dyes intradermally.
Appellants contend that “[b]ecause of the lack of guidance or
expectation of success, there is no proper motivation presented for why one
of ordinary skill in the art would attempt such a combination” (App. Br. 5).
We are not persuaded. Magnet provides substantial guidance on
tattoo devices (FF 3-5) and Castellano teaches needleless delivery of
materials. See KSR, 550 U.S. at 419 (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective reach
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of the claim. If the claim extends to what is obvious, it is invalid under §
103.”).
Appellants also do not provide any evidence which either teaches or
suggests that there is any unpredictability in using the device of Castellano
to apply tattoos. Kubin stated that “[r]esponding to concerns about
uncertainty in the prior art influencing the purported success of the claimed
combination, this court [in O’Farrell] stated: „[o]bviousness does not require
absolute predictability of success … all that is required is a reasonable
expectation of success.”‟ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(citing In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)). Here,
given the teachings of Magnet and Castellano for delivery of materials into
and through the skin, particularly as Castellano uses the same velocity range
for delivery of the components (FF 2, 7), there is a reasonable expectation of
success in modifying the tattooing method of Magnet to use the needleless
injector of Castellano.
Conclusion of Law
The evidence of record supports the Examiner‟s finding that Magnet
and Castellano render claim 15 obvious.
SUMMARY
In summary, we affirm the rejection of claim 15 under 35 U.S.C. § 35
U.S.C. § 103(a) as obvious over Magnet and Castellano. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 17 and 18 as
these claims were not argued separately.

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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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