Ex Parte Rabe et al

Patent Trial and Appeal Board

Jul 20, 2018

12688657 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/688,657 01/15/2010
27752 7590 07/24/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Thomas Elliot Rabe
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.
11227X 4078
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ELLIOT RABE and DAVID EDWARD WILSON 1
Appeal2017-006324
Application 12/688,657
Technology Center 3700
Before TONI R. SCHEINER, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-3,
and 5-15, directed to an apparatus for modifying a keratinous surface. The claims
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The Specification discloses an apparatus for precise application of a
modification composition to a keratinous surface, e.g., skin or hair. Spec. 1: 11,
3:3-9. Suitable modification compositions include inks, dyes, pigments,
adhesives, curable compositions, optically activated compounds, hair colorants,
1 Appellant identifies the Real Party in Interest as The Proctor & Gamble
Company. Appeal Br. 1.
Appeal2017-006324
Application 12/688,657
hair removal compositions, hair growth stimulants, metal oxides, bleaching agents,
texture reducing polymers, skin care compositions, and mixtures thereof. Spec.
2:22-25.
Figures 2--4 of the Specification, reproduced below, depict a portion of the
apparatus before, during, and after application of a modification composition to a
keratinous surface:
----------------------
r·· ····11
ii
rso.,_, : I
~= ~1, 14-0
~
, .................................... ___ ...,
. I I :
1 :
i :
1'" ""I:
Fig. ~3
Figures 2--4 of the Specification depict a portion of the apparatus before, during,
and after application of a modification composition to a keratinous surface.
[As shown in] Figure 2 ... CPU 132 analyzes keratinous surface 112
based on a sensor (not shown) reading. When a correction is desired,
CPU 132 activates motor 148 via optional motor lead 150. Applicator
120 is then propelled toward keratinous surface 112 until it contacts or
almost contacts keratinous surface 112 as shown in Figure 3. [U]pon
contact or near contact, modification composition 116 is released via
optional valve 128 onto keratinous surface 116. Applicator 120 is
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Application 12/688,657
then retracted as shown in Figure 4 leaving behind droplet 152 of
modification composition.
Spec. 5:28---6:2.
According to the Specification, "with the apparatuses and methods of the
present invention, the make-up, hair colorant, hair removal and hair growth
compositions can be precisely applied where ... needed." Id. at 3:3-5. "This
allows for the use of significantly less composition ... [ and] the surrounding
keratinous surfaces that are not treated with the modification compositions are not
irritated and are not unnecessarily colored." Id. at 3:5-7. "And when make-up is
applied, the coverage on the skin is small but the result is a natural, and substantial
improvement in the look of the consumer's skin." Id. at 3:7-9.
STATEMENT OF THE CASE
Claims 1-3 and 5-15 are on appeal. Independent claims 1 and 15 are
representative, and read as follows:
1. An apparatus for modifying a keratinous surface comprising:
an applicator comprising a motor and an applicator opening
which has a first position where the applicator opening is not in
contact with the keratinous surface, wherein the applicator opening is
in fluid communication with a first modification composition;
a sensor;
a CPU;
wherein the sensor reads the properties of a small portion of the
keratinous surface, the readings are transmitted to the CPU, the CPU
analyzes the sensor reading of the keratinous surface, the CPU sends a
signal to the applicator to treat the surface, the motor is activated to
move the applicator opening to a second position that is in direct
contact with the keratinous surface to apply a portion of the first
modification composition to the same portion of the keratinous
surface that was read by the sensor.
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Appeal2017-006324
Application 12/688,657
15. An apparatus for modifying a keratinous surface comprising:
an applicator comprising a motor and an applicator opening
which has a first position where the applicator opening is not in
contact with the keratinous surface, wherein the applicator opening
is in fluid communication with a first modification composition;
a sensor;
wherein the sensor reads the properties of a small portion of the
keratinous surface, the reading is compared to a pre-determined
baseline value, any variation from the pre-determined baseline is
compared to a predetermined threshold value, if the variation exceeds
the threshold the sensor sends a signal to the applicator to treat or not
to treat the analyzed surface, and when the sensor sends a signal to the
applicator to treat the surface, the motor is activated to move the
applicator opening to a second position that is in direct contact with
the keratinous surface to apply a portion of the first modification
composition to the same portion of the keratinous surface that was
read by the sensor.
The claims stand rejected under pre-AIA 35 U.S.C. § I03(a) as follows:
Claims 1-3, 8-10, 13, and 14 as unpatentable over Dauga2 and Samain3
(Ans. 2-3);
Claims 5 and 7 as unpatentable over Dauga, Samain, and Quintero4 (Ans. 3-
4);
Claims 6, 11, and 12 as unpatentable over Dauga and Samain (Ans. 4---6);
and
Claim 15 as unpatentable over Edgar, 5 Dauga, and Samain (Ans. 6-7).
2 U.S. Patent Application Publication No. 2004/0078278 Al, published April 22,
2004.
3 U.S. Patent Application Publication No. 2011/0129283 Al, published June 2,
2011.
4 U.S. Patent 6,547,467 B2, issued April 15, 2003.
5 U.S. Patent Application Publication No. 2007/0049832 Al, published March 1,
2007.
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Appeal2017-006324
Application 12/688,657
THE PRIOR ART
Dauga
Dauga discloses a device for application of a treatment composition, e.g.,
makeup or dye, to "a part of the body," e.g., skin, hair, or nails. Dauga ,r,r 10, 11,
41. The device comprises a positioning means, a means of taking images, a means
of analyzing images to obtain the local characteristics of the skin, and a means of
applying treatment products to the skin according to the local characteristics. Id. at
Figure 1, reproduced below, is a schematic view of Dauga's device:
FIG_1
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Appeal2017-006324
Application 12/688,657
Figure 1 is a schematic view of Dauga's device for applying compositions to a part
of the body, e.g., skin or hair. "The applicator 7 comprises a case 9 which may be
fixed to the floor or to any suitable support, an articulated assembly 10 fixed at one
end to the case 9 and supporting at the opposite end a product application head
11." Id. ,I 51.
"[T]he application of treatment products is carried out by a moving
application head which follows the relief of the part [ of the body] while remaining
a short distance away or while being in contact." Id. ,r 18. "The head may
comprise a powder puff, a roll or a course or fine brush, usually used in cosmetics"
(id.), and treatment products may be "applied by airbrushing, by transfer printing,
by tattooing or by a wipe impregnated with the product to be applied." Id. ,r 26. In
one embodiment,
The application head 11 comprises a row of spraying nozzles
17 fed with treatment products from one or more reservoirs ... placed
in the case 9, and two distance sensors 18 and 19 capable of
measuring the distance between the application head 11 and the
surface on which the treatment product is to be applied ... such that a
difference with respect to [the] desired distance can be readily
detected. The nozzles 17 may be of the inkjet type with a
piezoelectric crystal or an electrostatic means.
Id. ,I 54.
Dauga teaches that "[i]nkjet printing is a contact-free process." Id. ,r 55.
Dauga also discloses a "distribution head," where "[t]he distance from the
distribution head 38 to the area to be treated may vary between 20 µm and 10 cm,
preferably between 100 µm and 5 cm, and preferably, between 250 µm and 1 cm."
Id. ,I,I 90, 91.
Samain
Samain discloses "a device for applying a composition on human keratinous
material" comprising a non-colorimetric detection system; an application system
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Appeal2017-006324
Application 12/688,657
for applying the composition to keratinous material; and a processor unit for
controlling the application system as a function of data received from the detection
system. Samain ,r,r 23-26. The detection system and the application system, as
well as the processor unit, may be contained in a handpiece. Id. ,r 27. The device
may further include an actuator ( electromagnetic, electrostatic, pneumatic,
hydraulic, motor-driven, etc.) secured to the handpiece, "to bring the applicator
member automatically into engagement with the keratinous material." Id. ,r 45.
Samain teaches that "[t]he application system may include at least one print
head enabling the composition to be projected onto the keratinous material without
the print head coming into contact with the keratinous material." Id. ,r 38. Samain
further teaches that
The application system may also apply the composition by
means of an applicator member making contact with the keratinous
material. The application system may thus include an applicator
member that is secured to the hand-piece, being movable between a
composition application position where it is in contact with the
keratinous material, and a position where it is spaced apart from said
keratinous material. The applicator member may be selected from ...
applicators that retain composition by capillarity.
Id. ,r 39. "The applicator member may be secured to a moving portion carrying a
reservoir containing the composition for application, and the applicator member
may communicate with the reservoir via a capillary wick or via a channel, the
channel being formed within the movable portion." Id. ,r 42.
Samain teaches that "[a]ny print technology can be suitable" (id. ,r 103),
including offset printing, electrophotography, thermal printing, toner jet, and inkjet
printing (particularly "continuous ink jet" and "drop on demand" printing). Id.
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Application 12/688,657
DISCUSSION
"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'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid under
§ 103." Id. at 419.
Often, it will be necessary . . . to look to interrelated teachings of
multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in
order to determine whether there was an apparent reason to combine
the known elements in the fashion claimed.
Id. at 418 (2007).
Obviousness of Claims 1-3, 8-10, 13, and 14 over
Dauga and Samain
The Examiner finds, in relevant part, that Dauga discloses "an apparatus for
modifying a keratinous surface comprising an applicator 7 with a motor ... and an
applicator opening 17 ... which is in fluid communication with ... modification
composition[ s] such as inks, dyes, pigments, hair colorants, and skin care
compositions." Ans. 2 (citing Dauga ,r,r 35, 54, 101-116). The Examiner further
finds that Dauga's "applicator may have a first position not in contact with the
keratinous surface ... and a second position in contact with [the] keratinous
surface," but maintains that "[i]t is unclear if Dauga et al. disclose the opening of
the applicator having such a second position." Id. at 3 ( citing ,r 18).
Nevertheless, the Examiner finds that Samain "discloses an apparatus for
modifying a keratinous surface that includes an applicator with an opening having
a first position where the opening is not in contact with the surface and a second
position that is in direct contact with the surface." Id. (citing Samain ,r,r 39, 41, 42,
107). The Examiner concludes that it would have been obvious for one of ordinary
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Application 12/688,657
skill in the art "to include the applicator opening disclosed in Samain in the
teaching of Dauga et al. in order to contact a keratinous surface to be treated with a
composition." Id.
Appellants contend that "[ t ]he applicator of the present claims dispenses the
modification composition, [ and] the only element of Dauga that is arguably similar
is nozzles 17 which also dispense a treatment composition." Br. 3. Appellants
contend that "nozzles 17 of Dauga can never touch the skin," but "the claims on
appeal require that the applicator contact the skin" (id.). Appellants do not
address Samain, but contend that Dauga "clearly teaches away from the
combination asserted against the present claims," and that, therefore, the Examiner
"makes an impermissible combination of references where there is no motivation
to combine." Id. at 2.
We are not persuaded that Dauga teaches away from the Examiner's
proposed combination of Dauga's and Samain's teachings, or that the Examiner's
proposed combination is otherwise improper.
A reference is said to "teach away" from a claimed invention when it
"suggests that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). That is not the case here. It is true that Dauga
explicitly states that "[i]nkjet printing is a contact-free process." Dauga ,r 55.
Samain likewise teaches that its similar device----comprising a detection system ( a
sensor); a motorized application system (an applicator opening in fluid contact
with a treatment composition); and a processor unit (a CPU) for controlling the
application system----can be used for inkjet printing. See e.g., Samain ,r,r 23-26,
38, 104. But Dauga is not limited to inkjet printing, and Samain further teaches
that its similar device "may also apply the composition by means of an applicator
member ... movable between a composition application position where it is in
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Application 12/688,657
contact with the keratinous material, and a position where it is spaced apart from
said keratinous material." Id. ,r,r 39, 42, 139--183. Samain's teachings and
Dauga's teachings are not inconsistent. Rather, Samain's teachings overlap with
and extend Dauga's teachings, and Appellants have not identified anything in
Dauga that would lead one of ordinary skill in the art to expect that modifying a
keratinous surface using an applicator opening in direct contact with the keratinous
surface, as taught by Samain, would be unlikely to be productive of the desired
result.
Nor are we persuaded by Appellants' reliance on the prosecution history of
Dauga's application that "the present Office Action is entirely wrong with regard
to the combination of Dauga and Samain." Br. 4. Appellants contend that "[t]he
reason for allowance was based entirely on the applicator (not the head) being
maintained at a fixed distance ... from the skin." Id. Again, Appellants have not
addressed Samain, and both Dauga and Samain are relevant for what they would
have taught one of skill in the art at the time of the invention.
The rejection of claim 1 as unpatentable over Dauga and Samain is affirmed,
as is the rejection of claims 2, 3, 8-10, 13, and 14, as these claims were not argued
separately. 37 C.F.R. § 42.37(c)(l).
Obviousness of Claims 5 and 7 over Dauga, Samain, and Quintero;
Claims 6, 11, and 12 over Dauga and Samain; and Claim 15 over
Edgar, Dauga, and Samain
Claims 5, 7, 6, 11, and 12 depend directly from claim 1. Claim 15 is an
independent claim that, like claim 1, is directed to an apparatus with an applicator
movable between a first position not in contact with a keratinous surface, and a
second position in direct contact with the keratinous surface.
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Application 12/688,657
Appellants contend that the rejections of these claims are "based on the same
impermissible combination of Dauga and Samain" and should be overturned "for
the reasons discussed above with respect to the first rejection." Br. 6.
As discussed above, we are not persuaded that Dauga teaches away from the
Examiner's proposed combination of Dauga's and Samain's teachings, or that the
Examiner's proposed combination is otherwise improper.
Accordingly, these three rejections are affirmed as well.
SUMMARY
The rejection of claims 1-3, 8-10, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Dauga and Samain is affirmed;
The rejection of claims 5 and 7 under 35 U.S.C. § 103(a) as unpatentable
over Dauga, Samain, and Quintero is affirmed;
The rejection of claims 6, 11, and 12 under 35 U.S.C. §103(a) as
unpatentable over Dauga and Samain is affirmed; and
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Edgar, Dauga, and Samain is affirmed.
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
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