Ex Parte Price et al

Board of Patent Appeals and Interferences

Jun 10, 2009

10568131 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES E. PRICE and TIMOTHY P. PHILIPP
__________

Appeal 2009-004810
Application 10/568,131
Technology Center 3700
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Decided:1 June 10, 2009
__________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

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

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-004810
Application 10/568,131

STATEMENT OF THE CASE
The invention is a bandage that provides skin tone matching. (Spec.
1:9-15.) The “skin tone is applied to one side of an absorbent pad.” (Id.)
“The absorbent pad is attached to a transparent strip so that the bandage
appears very close to the skin tone of the user.” (Id.) Claims 1-11, which
are all the pending claims, are on appeal. Appellants state that claims 2-6
stand or fall with claim 1, and claims 8-11 stand or fall with claim 7. (App.
Br. 12.) See 37 C.F.R. § 41.37(c)(1)(vii). The representative claims read:
1. A cosmetic bandage comprising:

a transparent backing layer having a top side and a bottom side;

a transparent adhesive layer applied to the bottom side of the
transparent backing layer;

an absorbent pad having a bottom side and a top side,
the top having a non-toxic pigmented composition applied to it
so as to be derma matching and having a melanin likeness and
appearance so as to substantially match human skin tones and
colors,
the top side of the absorbent pad being attached to the bottom
side of said backing layer so as to be visible therethrough; and

at least one removable strip applied to the bottom side of said backing
layer and said pad.

7. A method of constructing a cosmetic bandage comprising:

forming an absorbent pad having a bottom side and a top side;

applying a non-toxic pigment to the top side of the pad; and

attaching the pigmented top side of the pad to a transparent backing
layer.
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Application 10/568,131

The Examiner rejected the claims as follows:
• claims 1-6 under 35 U.S.C. § 103(a) over the combined teachings of
Carmody,2 Dow3 and Smith;4 and
• claims 7-11 under 35 U.S.C. § 103(a) over the combined teachings
of Carmody and Dow.

OBVIOUSNESS
The Issues
The Examiner found that Carmody, Smith and Dow all described
cosmetic bandages made to match skin tone. Carmody described a bandage
similar to Appellants’ in which a pigmented plastic strip was applied to an
absorbent pad to match skin tone. Carmody, however, did not describe its
adhesive as transparent, and did not state its pigment was non-toxic. The
Examiner’s position is that Smith’s transparent adhesive and Dow’s non-
toxic pigments would have been obvious choices for the unspecified
adhesive and the skin tone pigments that Carmody called for.
Appellants contend that at least one element in claims 1 and 7 is “not
suggested, disclosed, or claimed in Carmody, Smith, or Dow.” (App. Br. 9.)
The missing element is said to be “an absorbent pad . . . the top having a
non-toxic pigment composition applied to it.” (Id.) Appellants dispute the
Examiner’s finding that “[Carmody’s] pigmented strip is . . . a pigmented
composition that is applied to absorbent pad (16).” (Id.)

2 U.S. Patent No. 3,687,136, issued to Dewey Blain Carmody, Aug. 29,
1972.
3 U.S. Patent No. 5,120,325, issued to James E. Dow, Jr., Jun 9, 1992.
4 U.S. Patent No. 2,905,174, issued to Clifford W. Smith, Sep. 22, 1959.
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Application 10/568,131

Appellants argue that Smith teaches away from the invention “by
discouraging the use of transparent backing.” (Id. at 11.) Appellants
characterize the Examiner’s findings of motivation to use transparent
adhesive and non-toxic pigments as merely identifying the purpose of those
elements, and argues “[t]hey do not illustrate a suggestion, teaching, or
motivation, to combine the elements.” (Id. at 12.)
Appellants argue that claim 7’s step of “applying a non-toxic pigment
to the top of the pad” is not found in the prior art. (App. Br. 9.)
The issues are:
was Carmody’s pigmented strip a pigmented composition;
did the Examiner identify a reason why a person of ordinary skill in
the art would have seen a benefit in using Smith’s transparent adhesive to
make Carmody’s bandage;
did the Examiner identify a reason why a person of ordinary skill in
the art would have seen a benefit in using Dow’s non-toxic pigment to make
Carmody’s bandage; and
did the prior art disclose a step of applying a non-toxic pigment to the
top of an absorbent pad?

Findings of Fact
Specification
1. The “Summary of the Invention” states: “[a]n absorbent pad having a
top side and a bottom side is arranged so that one of the sides has a
non-toxic pigment composition applied to it so as to be derma
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Application 10/568,131

matching and having a melanin likeness and appearance.” (Amdt.
dated Feb. 10, 2006, at p. 3 of 8.)
2. The “Summary of the Invention” further states: “[t]he composition is
preferably applied by flood printing or a silk screening process, in
which a speckle matrix arrangement is employed to provide improved
skin matching capabilities.” (Id.)

Carmody
3. Carmody described a bandage having:
transparent backing 10 corresponding to Appellants’ backing layer;
pressure sensitive adhesive 12 corresponding to Appellants’ adhesive;
an absorbent pad 16 corresponding to Appellants’ absorbent pad;
a pigmented plastic strip 14 corresponding to Appellants’ pigmented
composition; and
removable backing strips 18 corresponding to Appellants’ removable
strip.
4. Carmody’s pigmented strip was of “suitable color to match the skin of
the user.” (Col. 1, ll. 11-14.)
5. Carmody stated that the color of the pigmented strip “determines the
color of the bandage.” (Col. 1, ll. 18-19.)
6. Carmody did not describe the adhesive 12 as transparent.
7. Carmody did not describe the pigmented plastic strip 14 as non-toxic.

Smith
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Application 10/568,131

8. Smith described a pigmented bandage made with transparent
adhesive, that was “both attractive in appearance and substantially less
noticeable.” (Col. 2, ll. 8-14.)

Dow
9. Dow described a skin-color matched adhesive bandage made with
non-toxic pigment. (Col. 1, ll. 29-49.)

Principles of Law
“It is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their broadest
reasonable interpretation consistent with the specification, . . .
and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill
in the art.”

In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citation omitted).
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). The proper question to ask is whether a person of
ordinary skill in the art, facing the wide range of needs created by
developments in the field of endeavor, would have seen a benefit to
combining the prior art teachings. KSR, 550 U.S. at 424; see also In re
Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (the desirability of the
combination may arise from nature of the problem, teachings of references,
or the ordinary knowledge of those skilled in the art).
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Appeal 2009-004810
Application 10/568,131

[A] combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield
predictable results. . . . [I]f a technique has been used to
improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond [his or her] skill.

KSR, 550 U.S. at 401.
A prior art reference is said to teach away from an applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Analysis
The Examiner found that “Carmody discloses all features of the claim
except that the [claimed] adhesive is transparent and that the pigment is non-
toxic.” (Ans. 8.) We agree. Carmody’s pigmented plastic strip applied to
the top of an absorbent pad is a “pigment composition” that claim 1 recites is
applied to the top of an absorbent pad. Consistent with this interpretation,
Appellants’ Specification describes the absorbent pad as including a pigment
composition applied to it. (FF1.) The Examiner reasonably understood
Carmody’s pigmented plastic strip to be a pigmented composition because
the pigment was present in the plastic material from which the strip was
made.
The Specification also describes preferred embodiments in which
pigment is printed onto the pad. (FF2.) But during patent application
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prosecution, claim terms are interpreted as having their broadest reasonable
meaning consistent with the Specification, not as limited to preferred
embodiments.
Appellants argue the Examiner did not find that Carmody’s pigmented
plastic strip is a pigment composition, but that the Examiner instead relied
on an “equivalent element” theory. (App. Br. 9-10.) We disagree. The
Examiner’s discussion of “equivalency” was in the context of finding that
Carmody’s pigmented plastic strip and Dow’s non-toxic pigment were
equivalents. (Ans. 8.) The Examiner’s “equivalence” rationale for replacing
Carmody’s pigmented strip with Dow’s non-toxic pigments cited case law
holding that such a substitution may be obvious even without an express
suggestion. (Id.) Appellants’ arguments about the “equivalency of a
pigmented plastic strip and a pigment composition applied to a pad” (App.
Br. 10), are thus misdirected. To repeat the Examiner’s finding, Carmody’s
pigmented plastic strip applied to an absorbent pad is a pigment composition
applied to an absorbent pad. That finding is consistent with the
Specification’s broad description of the claimed “pigment composition
applied to it” language (FF1).
The Examiner’s conclusion that it would have been obvious to use
Dow’s non-toxic pigment, where Carmody did not specify non-toxicity, had
two rationales. We agree with the “equivalency” rationale already
discussed. If Dow’s non-toxic pigments were applied to Carmody’s
absorbent pad, they would have accomplished the same skin-tone matching
function of “render[ing the] bandages inconspicuous on a user.” (Ans. 8.)
We also agree with the Examiner’s motivation or suggestion rationale to
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Application 10/568,131

substitute Dow’s non-toxic pigment to “ensure that the user is not poisoned
by the pigment.” (Ans. 4.) Appellants argue that the Examiner merely
identified the “purpose” of the non-toxic pigment, which does “not illustrate
a suggestion, teaching, or motivation, to combine the elements.” (App. Br.
12.) We disagree. Those of ordinary skill in the art at the time of
Appellants’ invention would have appreciated the advantage the Examiner
identified for non-toxicity and would have seen it as a benefit in pigmented
bandages. See Fulton, 391 F.3d at 1200.
Appellants similarly fault the Examiner’s finding of a suggestion to
use transparent adhesive. (App. Br. 12.) The Examiner found that using
Smith’s transparent adhesive on Carmody’s bandage would “render[] the
adhesive invisible to the eye [and] so render the bandage inconspicuous.”
(Ans. 8.) The evidence supports that finding because it is the same
advantage that Smith taught. (FF5.) We cannot agree that Smith’s concern
with unsightly and unattractive wound appearance taught away from using
transparent adhesive on Carmody’s bandage. (App. Br. 11.) Carmody’s
pigmented strip and absorbent pad hid the wound, regardless of the kind of
adhesive used. On these facts, we do not agree there was any “teaching
away.” See Gurley, 27 F.3d at 553.
Appellants argue that claim 7’s step of “applying a non-toxic pigment
to the top side of the pad” is not found in the prior art. (App. Br. 9.) The
Examiner found that “Carmody discloses applying a pigment in the form of
a colored plastic strip (14).” (Ans. 5.) As explained above, the Examiner’s
reasoning is supported by the evidence. Appellants have not shown an error
in the Examiner’s finding.
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Application 10/568,131

CONCLUSIONS OF LAW
Carmody’s pigmented strip is a pigmented composition;
the Examiner’s finding of motivation for using Smith’s transparent
adhesive to make Carmody’s bandage was sound; and
the Examiner’s equivalency rationale and motivational rationale for
substituting Dow’s non-toxic pigment into Carmody’s bandage were both
sound; and
Carmody disclosed a step of applying a non-toxic pigment to the top
of an absorbent pad.

SUMMARY
We affirm the rejection of claims 1-6 under 35 U.S.C. § 103(a) over
the combined teachings of Carmody, Dow and Smith; and the rejection of
claims 7-11 under 35 U.S.C. § 103(a) over the combined teachings of
Carmody and Dow.
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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