Ex Parte Loo et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10321897 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LIONG YU LOO, LAI HEE MENG,
NOORANITA BINTI ZAIN, and ADELI KASSIM
____________

Appeal 2009-003427
Application 10/321,897
Technology Center 1600
____________

Decided: October 19, 2009
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY
N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 2, 5-14, 16-19,
31-36, 38-41, and 44-67. Claims 21-30 have been withdrawn from
consideration (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a treated glove (claims 1, 2, 5-12, 44, 45,
61-65, and 67); a method of applying a film to the inside surfaces of a glove
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(claim 13, 14, 16-19, and 46-57); a moisturizing glove (claims 35, 36, 38-41,
58-60); a method of moisturizing a hand of a human (claims 31-34 and 66).
Claims 1 and 65 are illustrative:
1. A treated glove comprising a cured latex material and a
hygroscopic film on the interior surface of the cured latex material, the film
comprising water, glycerol, and a botanical extract.

65. The glove of claim 1, wherein the water is present in an amount
ranging from about 30 mg to about 90 mg per glove.

The Examiner relies on the following evidence:
Wortzman US 4,820,508 Apr. 11, 1989
Fox, Jr. et al. US 5,019,096 May 28, 1991
O’Halloran et al. US 6,168,798 B1 Jan. 2, 2001
Chou US 6,274,154 B1 Aug. 14, 2001

The rejections presented by the Examiner are as follows:
1. Claims 1, 2, 5-7, 10, 11, 13, 14, 16-19, 31-36, 38-41, 44, 45, 47, 51-54,
57, 59, and 61-67 stand rejected under 35 U.S.C § 103(a) as unpatentable
over the combination of Chou and O’Halloran.
2. Claims 8, 9, 12, 55, and 56 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Chou, O’Halloran, and Wortzman.
3. Claims 46, 48-50, 58, and 60 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Chou, O’Halloran, Wortzman, and
Fox.
We affirm.

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PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). On
appeal to this Board, Appellants must show that the Examiner has not
sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606,
1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115,
1118 and 1123 (BPAI 2008) (precedential).
“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). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”). 35
U.S.C § 103(a) “forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.’” KSR, 550 U.S. at 405 (quoting 35 U.S.C. § 103(a)).
The:
law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. See, e.g., Gardner v. TEC Sys., Inc.,
725 F.2d 1338, 220 USPQ 777 (Fed. Cir.), cert. denied, 469
U.S. 830 [ 225 USPQ 232 ] (1984); In re Boesch, 617 F.2d 272,
205 USPQ 215 (CCPA 1980); In re Ornitz, 351 F.2d 1013, 147
USPQ 283 (CCPA 1965); In re Aller, 220 F.2d 454, 105 USPQ
233 (CCPA 1955). These cases have consistently held that in
such a situation, the applicant must show that the particular
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range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.

In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In re Geisler, 116
F.3d 1465, 1470, (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the
optimum or workable ranges by routine experimentation.’”) (quoting In re
Aller, 220 F.2d 454, 456 (CCPA 1955)).

Obviousness:

The combination of Chou and O’Halloran:
Appellants present separate arguments for the following groups of
claims: I. Claims 1, 2, 5-7, 10, 11, 13, 14, 16-19, 31-36, 38-41, 44, 45, 47,
51-54, 57, 59, and 61-64; and II. Claims 65-67. The claims in each group
will stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1 and 65 are
representative.

Claim 1:

ISSUE

Have Appellants established error in the Examiner’s conclusion that it
would have been prima facie obvious at the time of Appellants’ invention to
include glycerol, as taught by O’Halloran, in the hygroscopic film on the
interior surface of Chou’s treated glove?

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FINDINGS OF FACT
FF 1. Chou teaches a moisturizing and therapeutic glove that “includes [a]
thin layer of Aloe Vera coated evenly and uniformly on an inside surface of
the glove (abstract)” (Ans. 3).
FF 2. Appellants do not dispute the Examiner’s finding that Chou teaches
a glove comprising a cured latex material (see Ans. 3).
FF 3. The Examiner finds that the thin layer of Aloe Vera on the inside
surface of Chou’s glove is a “hydroscopic (sic, hygroscopic) film” (see Ans.
3-4).
FF 4. Chou teaches that “[p]rolonged wearing of disposable gloves causes
a moist environment on the surface of the hand that allows viruses, bacteria,
yeast and fungus to grow and multiply. Itchiness is a frequent result of
wearing disposable examination gloves for extended periods” (Chou, col. 1,
ll. 14-19).
FF 5. Chou teaches that Aloe Vera is a botanical extract that has been used
for the external treatment of, inter alia, skin irritations (Chou, col. 3, ll. 15-
17).
FF 6. The Examiner finds that “Chou does not disclose the use of glycerol
in the composition to be applied to the gloves” (Ans. 4).
FF 7. The Examiner finds that O’Halloran teaches compositions for the
treatment of skin disorders comprising botanical extracts and glycerol (Ans.
4).
FF 8. O’Halloran’s “invention provides cosmetic compositions or
astringents for reducing and/or eliminating skin conditions, such as acne, on
the skin via topical application on the desired site” (O’Halloran, col. 3, ll. 8-
11).
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FF 9. Chou teaches that a need exists in the art for “gloves that can apply
moisturizing and therapeutic substances to the hands during the glove use”
(Chou, col. 1, ll. 63-65).
FF 10. Chou teaches that “Aloe Vera is attached to the surface of the glove
through a controlled dehydration process” (Chou, col. 4, ll. 1-2). In this
regard, Chou teaches that “[t]he dehydration process provides an affiliation
force so that Aloe Vera can remain associated with the glove surface for an
extensive period of time” (Chou, col. 4, ll. 13-15).
FF 11. The Examiner finds that the amount of water present in the
hygroscopic film “would be related to the degree in which the glove is
‘dried’ according to [Chou’s] method” (Ans. 10).

ANALYSIS
Claim 1 is drawn to a treated glove. The treated glove comprises (1) a
cured latex material and (2) a hygroscopic film on the interior surface of the
cured latex material. Claim 1 requires the hygroscopic film to comprise (a)
water, (b) glycerol, and (c) a botanical extract.
There is no limitation in Appellants’ claim 1 relating to the amount of
any ingredient. More specifically, there is no limitation in Appellants’ claim
1 relating to the amount of water (e.g., moisture/humidity) present in the
hygroscopic film. Accordingly, claim 1 is open to include any amount of
water.
There is no dispute on this record that Chou teaches a treated glove
comprising a cured latex material (FF 3).

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Both Chou and O’Halloran disclose the treatment of skin conditions
with compositions comprising botanical extracts (FF 5 and 7). While
O’Halloran exemplifies acne, pimples, blemishes and redness as skin
conditions (see e.g., FF 8 and App. Br. 11-12), there is no indication from
O’Halloran that its disclosure is to be limited to these exemplified
conditions, but rather O’ Halloran refers more broadly to treating skin
disorders (FF 8). Therefore, we find that O’Halloran’s composition also
includes within its scope the skin conditions contemplated by Chou (see e.g.,
FF 4). Accordingly, we are not persuaded by Appellants’ contention that
Chou and O’Halloran are in different fields of endeavor or that the
compositions are not useful for the same purpose (App. Br. 15-17). To the
contrary, we agree with the Examiner’s conclusion that since Chou and
O’Halloran both teach “compositions for treating skin, it would have been
obvious to combine these components with the expectation that such a
combination would be effective in skin care compositions” (Ans. 5).
We are not persuaded by Appellants’ contention that “[t]here is no
teaching or suggestion that the invention of O’Halloran can be used with
gloves, or any other cured latex materials” (App. Br. 14; see also Reply Br.
5). O’Halloran teaches the application of a composition comprising a
botanical extract and glycerol to a desired site (FF 7 and 8). Chou teaches
that due to the adverse effects caused by wearing gloves (FF 4), the desired
site of treatment is the hands during glove use (FF 9). Accordingly, Chou
teaches treating the inner surface of a glove with a composition so that the
composition is applied to the hands during use of the glove (FF 9).
Appellants have provided no persuasive argument or evidence to support a
conclusion that O’Halloran’s composition could not be used in the manner
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disclosed by Chou, or that glycerol, as taught by O’Halloran, could not be
used in Chou’s composition.
Therefore, the issue distills down to whether the combination of Chou
and O’Halloran teach a hygroscopic film comprising (a) water, (b) glycerol,
and (c) a botanical extract applied to the inner surface of a cured latex glove.
We are not persuaded by Appellants’ contentions regarding Chou’s
teaching that Aloe Vera is attached to the surface of the glove through a
controlled dehydration process (see e.g., App. Br. 14 and 18). While
Appellants contend that “Chou repeatedly states the fact that the Aloe Vera
is in a dehydrated state” (App. Br. 18), Appellants have failed to provide a
persuasive argument or evidentiary basis to support a conclusion that the
Aloe Vera composition on the inner surface of Chou’s treated glove is not a
hygroscopic film comprising water. More specifically, Appellants provide
no persuasive argument or evidentiary basis to support a conclusion that “a
dehydrated state” means the complete absence of water (see FF 11). Since
Appellants’ claim 1 places no limitation on the amount of water present in
the hygroscopic film any amount of water will meet the requirements of the
claim.
Lastly, we are not persuaded by Appellants contention that
O’Halloran’s composition contains about 50-95% water and therefore
“O’Halloran does not teach or suggest a dehydrated solution. As such, using
the composition of O’Halloran with the glove of Chou would result in the
Aloe Vera being unaffiliated with the glove and subject to the whims of
gravity” (App. Br. 18; see also Reply Br. 5). This contention fails to take
into account Chou’s teaching that once the glove is treated with the
composition the glove is subjected to a controlled dehydration process (FF
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10). Alas, the Aloe Vera comprising composition would not be “subject to
the whims of gravity” (App. Br. 18); but instead the Aloe Vera in the
resulting hygroscopic film would remain associated with the glove surface
for an extensive period of time as a result of the affiliation force provided by
the dehydration process (id.). It is proper to “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 418. See also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).

CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s conclusion that
it would have been prima facie obvious at the time of Appellants’ claimed
invention to include glycerol, as taught by O’Halloran, in the hygroscopic
film on the interior surface of Chou’s treated glove.
The rejection of claim 1 under 35 U.S.C § 103(a) as unpatentable over
the combination of Chou and O’Halloran is affirmed. Claims 2, 5-7, 10, 11,
13, 14, 16-19, 31-36, 38-41, 44, 45, 47, 51-54, 57, 59, and 61-64 fall
together with claim 1.

Claim 65:

ISSUE
Have Appellants established error in the Examiner’s prima facie case
of obviousness?

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ANALYSIS
Claim 65 depends from and further limits the glove of claim 1 to
require that water is present in an amount ranging from about 30 mg to about
90 mg per glove.
Appellants contend that the combination of Chou and O’Halloran fails
to teach a treated glove that comprises water in an amount ranging from
about 30 mg to about 90 mg per glove (App. Br. 19). We are not persuaded.
As the Examiner explains the amount of water present in the
hygroscopic film “would be related to the degree in which the glove is
‘dried’ according to [Chou’s] method” (FF 11). Appellants provide no
persuasive argument or evidence to support a conclusion that Chou’s treated
glove does not comprise water in an amount ranging from about 30 to 90
mg. Further, Appellants do not explain why the particular amount of water
would not have been obvious. See In re Aller, 220 F.2d 454, 456 (CCPA
1955) (“[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.”)

CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s prima facie case
of obviousness.
The rejection of claim 65 under 35 U.S.C § 103(a) as unpatentable
over the combination of Chou and O’Halloran is affirmed. Claims 66 and
67 fall together with claim 65.

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The combination of Chou, O’Halloran, and Wortzman:

ISSUE
Have Appellants established error in the Examiner’s prima facie case
of obviousness?

ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 8 is representative.
Appellants rely on their arguments as presented for the rejection of
claim 1 and contend that “Wortzman fails to remedy the deficiencies of
Chou and O’Halloran” (App. Br. 19). We are not persuaded for the reasons
set forth with regard to claim 1.

CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s prima facie case
of obviousness.
The rejection of claim 8 under 35 U.S.C § 103(a) as unpatentable over
the combination of Chou, O’Halloran, and Wortzman is affirmed. Claims 9,
12, 55, and 56 fall together with claim 8.

The combination of Chou, O’Halloran, Wortzman, and Fox:

ISSUE
Have Appellants established error in the Examiner’s prima facie case
of obviousness?
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ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 46 is representative.
Appellants rely on their arguments as presented for the rejection of
claim 1 and contend that Wortzman and Fox fail to remedy the deficiencies
of Chou and O’Halloran (App. Br. 20). We are not persuaded for the
reasons set forth with regard to claim 1.

CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s prima facie case
of obviousness.
The rejection of claim 46 under 35 U.S.C § 103(a) as unpatentable
over the combination of Chou, O’Halloran, Wortzman, and Fox is affirmed.
Claims 48-50, 58, and 60 fall together with claim 46.

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

dm

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