Ex Parte McClernon et al

Patent Trial and Appeal Board

Aug 25, 2017

12574377 (P.T.A.B. Aug. 25, 2017)

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.
TTY.12-03 8009
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
12/574,377 10/06/2009
43662 7590 08/25/2017
DUFAULT LAW FIRM, P.C.
PO Box 1219
Minnetonka, MN 55345
Patrick F. McClernon
08/25/2017 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 PATRICK F. McCLERNON, RUSSELL BLETTE
and DONNA DEARINGER
Appeal 2016-004266
Application 12/574,377
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI,
and JAMES C. HOUSEL, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—4, 7, 21—27 and 29—35. We have jurisdiction under 35 U.S.C. § 6.
Appeal 2016-004266
Application 12/574,377
Appellants’ invention relates generally to tattoo aftercare utilizing a
transparent, breathable, polyurethane film. (Spec. 1,11. 12—13). Claim 1 is
illustrative of the subject matter on appeal:
1. A method of tattoo aftercare comprising:
preparing a cover assembly for application over a newly-created
tattoo and associated open skin abrasion;
applying an air permeable transparent polyurethane film over
the tattoo and open skin abrasion such that the tattoo is visible
through the film; and
leaving the film in place over the tattoo for at least 12 hours.
Claims Appendix to App. Br.
I. Claims 1—4, 21—24, 27, 29, and 31—34 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combined
teachings of Hudson (“Tattoo Aftercare - How to Take Care
for Your New Tattoo” About.com) in view of Johns (US
4,513,739, iss. Apr. 30, 1985), Cartmell (US 5,059,424, iss.
Oct. 22, 1991), Strauch (US 2,164,360, iss. July 4, 1939)
and in further view of Valentine (US 5,447,505, iss. Sept. 5,
1995).
II. Claims 7, 30, and 35 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Hudson,
Johns, Cartmell, Strauch, Valentine and in further view of
Sinyagin (US 2004/0015115 Al, pub. Jan. 22, 2004).
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Application 12/574,377
III. Claims 25—26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Hudson, Johns,
Cartmell, Strauch, Valentine and in further view of Broyles
(US 2006/0111656 Al, pub. May 25, 2006).
OPINION1’2
After consideration of Appellants’ arguments and evidence and the
Examiner’s position in the Final Office Action and Answer we AFFIRM the
obviousness determination. We incorporate the findings and discussions
presented in our prior decision on appeal for application 12/574,377, Appeal
2012—010832 mailed March 18, 2014.
The Examiner determined that the claimed subject matter would have
been obvious over the teachings of the combination of Hudson, Johns,
Cartmell, Strauch and Valentine. (Final Act. 2—5). In rebuttal to the
appealed rejections, Appellants argue the Examiner’s rejection is in error
due to the failure to properly consider the declaration establishing
commercial success and copying by others3 as well as the declarations from
six tattoo artists.4 (App. Br. 13—14). Appellants also argue the Examiner
1 Appellants ‘arguments presented in the Briefs are not directed to claims 1—
4, 7, 21—27 and 29-35 individually. We select independent claim 1 as
representative of the subject matter on appeal and will limit our discussion
thereto.
2 We refer to the Final Office Action, mailed March 6, 2015, for a complete
statement of the Examiner’s rejection. (Final Act. 2—8).
3 The Declaration of Russell Blette.
4 The Declarations of Gaia Marika, Michael Gutowski, Roger Kane,
Frank FaNatra, Fauma Marika and Parament Chotipradit.
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Application 12/574,377
erred in applying the wrong standard in determining who is of ordinary skill
in the relevant art. (App. Br. 6—8).
We do not agree with Appellants that the Examiner erred in applying
the wrong standard in determining who is of ordinary skill in the relevant
art. Medical professionals are inclusive of persons of ordinary skill in the art
regarding open skin abrasions. When a new tattoo is created, open tissue
that is susceptible to infection is also created. (Spec. 5). The Specification
further discloses that utilizing the film in the present method provides a
sterile waterproof covering which prevents abrasion to the tattoo (as well as
the skin where the tattoo is located). (Spec. 3).
Appellants also contend that the secondary considerations provide
evidence of copying by others and evidence of increasing sales (i.e.,
commercial success). In support of these contentions, Appellants refer to the
Russell Blette Declaration. (App. Br. 13).
The Blette Declaration including the single graft of Exhibit 1 is
insufficient evidence to establish commercial success. In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (Appellant must offer proof that the asserted
commercial success occurred in the relevant market and “that the sales were
a direct result of the unique characteristics of the claimed invention—as
opposed to other economic and commercial factors unrelated to the quality
of the patented subject matter.”); Geo. M. Martin Co. v. Alliance Machine
Systems Int’lLLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010) (“The commercial
success of a product is relevant to the non-obviousness of a claim only
insofar as the success of the product is due to the claimed invention.”) On
the present record, the Declaration does not indicate that the sales of the
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Tatu-derm® product were a result of the claimed method of tattoo aftercare.
The Declaration fails to explain that the increased sales of the Tatu-derm®
product were the result of the unique characteristics of the claimed method.
The Declaration also fails to identify the marketing and advertising
conditions utilized for sales of this product including whether such
disclosures were related to the claimed method.
In addition, the Declaration does not provide any other evidence
establishing the increased sales of Tatu-derm®, and establishing that the
sales of Tatu-derm® resulted directly from the merits of the claimed method
of tattoo aftercare. In this regard, as discussed above, the Blette Declaration
does not indicate the market in which the Tatu-derm® product (allegedly
inclusive of the claimed method) were sold. Even assuming that this was the
case, the Declaration does not indicate the level of sales of the Tatu-derm®
product in the tattoo aftercare products market, or the actual market share of
the Tatu-derm® product in a given market. The Declaration indicates only
that the Tatu-derm® product experienced increased sales, but does not
indicate how this compares to other products in the tattoo aftercare market.
The Declaration also does not specify the extent of advertisement employed
for the Tatu-derm® product, i.e., below, above, or identical to a given
industry norm.
The evidence presented in the Blette Declaration to establish copying
by others is insufficient. The references cited by the Examiner in the
rejection establishes that the utilization of transparent breathable dressings
for covering wounds to the skin were known to persons of ordinary skill in
the art. Valentine establishes the application of these known dressings were
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maintained for a period of 24 hours. (Valentine col. 11). Johns establishes
that transparent breathable dressings formed from polyurethanes were
known to persons of ordinary skill in the art. Neither the Declaration nor
Appellants have established that the descriptions cited in Exhibits B—E were
not following the known techniques for treatment of skin wounds and
irritations.5
We have considered the Declarations of Gaia Marika, Michael
Gutowski, Roger Kane, Frank LaNatra, Lauma Marika and Parament
Chotipradit, but do not find the testimony persuasive of establishing
patentability of the appealed subject matter. Although factual evidence is
preferable to opinion testimony, such testimony is entitled to consideration
and some weight so long as the opinion is not on the ultimate legal
conclusion at issue. While an opinion as to a legal conclusion is not entitled
to any weight, the underlying basis for the opinion may be persuasive. In re
Chilowsky, 306 F.2d 908, 916 (CCPA 1962). Some weight may be given to
a persuasively supported statement of one skilled in the art on what was not
obvious to him (see In re Lindell, 385 F.2d 453, 456 (CCPA 1967) and In re
Weber, 341 F.2d 143 (CCPA 1965)).
On this record, we find the testimonial evidence in the Declaration of
Gaia Marika, the Declaration of Michael Gutowski, the Declaration of Roger
Kane, the Declaration of Frank FaNatra, the Declaration of Fauma Marika
5 It is noted that Sani-Tat states “[the Transparent Film is intended for a wide
range of wounds in the healing phase such as superficial bums, IV sites,
abrasions, lacerations, tattoo sites, superficial pressure ulcers, closed surgical
wounds, and may help to prevent skin breakdown.” (Blette Declaration,
Exhibit C, p. 16).
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and the Declaration of Parament Chotipradit to be entitled to little, if any,
weight. See, e.g., In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1368
(Fed. Cir. 2004) (citing Velanderv. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
2003); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
294 (Fed. Cir. 1985)) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.”). In each case, the Declarant Gaia
Marika, Michael Gutowski, Roger Kane, Frank LaNatra, Lauma Marika and
Parament Chotipradit provides opinion testimony regarding the products and
methods that they were utilizing for tattoo aftercare treatment prior to
utilizing the Tatu-derm® product. The Declarants did not explain why
tattoo artists, whose job function of applying a tattoo which necessarily
creates wounds to the skin, would not look to recognize treatments for skin
wounds such as described by the prior right cited by the Examiner. The
Declarants did not provide testimony regarding the prior art cited by the
Examiner which establishes that the utilization of transparent breathable
dressings for covering wounds to the skin were known.
For the reasons stated above sustain the Examiner’s rejections of
claims 1—4, 7, 21—27 and 29-35 under 35 U.S.C. § 103(a).
ORDER
The rejections of claims 1—4, 7, 21—27 and 29—35 under 35 U.S.C. §
103(a) are affirmed.
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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.
AFFIRMED
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