Ex Parte Rubinstenn et al

Board of Patent Appeals and Interferences

Sep 23, 2010

10024496 (B.P.A.I. Sep. 23, 2010)

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.
10/024,496 12/21/2001 Gilles Rubinstenn 05725.0980-00 4463
22852 7590 09/23/2010
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
09/23/2010 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 GILLES RUBINSTENN, DANIELA
GIACCHETTI, and FRANCIS PRUCHE
____________

Appeal 2010-009210
Application 10/024,496
Technology Center 3600
____________

Before HUBERT C. LORIN, JEAN R. HOMERE, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-009210
Application 10/024,496

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-50 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral
arguments were presented on September 14, 2010.

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to methods and systems
for providing beauty advice based on personal information and local
information such as weather. (Spec. [001]). Claim 25, reproduced below
with the numbering in brackets added, is representative of the subject matter
of appeal.

25. A method for providing beauty advice to a subject,
the method comprising:
obtaining, by a computer system, personal information about
the subject, the personal information including at least demographic
information about the subject, the demographic information reflecting
a geographic area location of the subject;
generating a list of a plurality of cosmetic products for the
subject;
receiving from the subject a request for cosmetic advice;
[1] accessing local information for the geographic area; and
[2] generating, by the computer system, at least one
recommendation for use of at least one cosmetic product on the list,
the at least one recommendation being a function of the personal
information of the subject and the local information.
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Application 10/024,496

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Fox US 5,796,932 Aug. 18, 1998
Farchione US 2002/0059248 A1 May 16, 2002
Anderson US 2002/0082869 A1 Jun. 27, 2002
Maloney WO 01/18674 A2 March 15, 2001
Ogilvie, Madeline, Why Women Wear Lipstick: Preliminary
Findings, Edith Cowan University.

The following rejections are before us for review2:
1. Claims 25 and 26 are rejected under 35 U.S.C. § 102(a) as
anticipated by Maloney.
2. Claims 1-9, 11-13, 17-18, 20-24, 27, 30-32, and 34-50 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney and Fox.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maloney, Fox, and Anderson.
4. Claims 14-16, 28-29, and 33 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Maloney, Fox, and Farchione.
5. Claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Maloney, Fox, and Official Notice.

2 We note that the Examiner has withdrawn the rejections made under 35
U.S.C. § 101 (Ans. 22).
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Application 10/024,496

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THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to the rejections of claims 25 and 26, this issue turns on
whether Maloney discloses the argued cited claim limitations [1] and [2].
With regards to the rejections of claims 1-24 and 27-50 this turns first
on whether the cited prior art discloses the argued claim limitations as made
for each respective claim. This issue turns second on whether a proper
rationale has been provided for combining the references.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:3
FF1. Maloney has disclosed a method and apparatus for providing a
customized product to a consumer (Title, Abstract). The products may
include beauty care products (Col. 7:15-17).
FF2. Maloney has disclosed collecting profile data about a consumer by
providing them with a test kit which can comprise tests to determine the
physiological conditions of the consumer such as skin dryness, skin oiliness,
hair dryness, and color complexion. The test kit would also preferably
comprise environmental tests for factors such as water hardness, water pH,
etc. (Col. 11:6-15).

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF3. Maloney has disclosed customizing a customer selected product to
meet the consumer’s physiological and external conditions (water hardness,
etc.). Questions are presented to elicit this consumer profiling data (Col.
10:5-12).
FF4. Maloney has disclosed that a list of recommend product choices
which correspond to an updated consumer profile is provided to the
customer. (Col. 16:2-6).
FF5. Fox has disclosed a system for displaying the impact of weather on
managerial planning decisions (Title) including retail planning applications
for personal care and consumer products (Abstract).
FF6. Fox has disclosed presenting the user with a graphical presentation of
last years weather variables by time period by location. The weather/sales
variables are presented by comparison to last years data and forecasted data.
Weather variables include forecasted temperature, precipitation, and
snowfall. Weather data may include humidity, cloud cover, and
heating/cooling degree days. (Col. 13:4-15).
FF7. Fox has disclosed the effect of weather variables on sales for a given
product and at a particular location for a particular time period (Col. 16:36-
39).
FF8. Fox has disclosed that client data is used to refer to all types of data
which is weather impacted. Data includes demographic data (Col. 9:18-24).
FF9. Anderson has disclosed a system for providing customized health care
information based on an individual’s genome (Title).
FF10. Farhicone has disclosed a method for determining proper color for
makeup and clothing (Title).
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FF11. Ogilvie has disclosed that lipstick is an important part of most
respondent’s daily grooming routine with 76% of a sample responding that
they would wear lipstick 6 or more days a week (Page 4).

ANALYSIS
Claims 25-26
The Appellants argue that the rejection of claims 25-26 is improper
because Maloney fails to disclose claim limitations [1] and [2] (Br. 17-19,
Reply Br. 7).
In contrast the Examiner has determined that the rejection of claims
25- 26 is proper (Ans. 22-24).
We agree with the Examiner. In claim 25, claim limitations [1] and
[2] require:
[1] accessing local information for the geographic area; and
[2] generating, by the computer system, at least one recommendation
for use of at least one cosmetic product on the list, the at least one
recommendation being a function of the personal information of the
subject and the local information. (Claim 25).

Maloney has disclosed collecting profile data about a consumer by
providing them with a test kit which can comprise tests to determine the
physiological conditions of the consumer such as skin dryness, skin oiliness,
hair dryness, and color complexion. The test kit can also include
environmental tests such as water hardness, water pH, etc. (FF2, FF3).
These environment tests for water hardness and pH serve as the claimed
“local information for the geographic area” since water hardness and pH
vary by locality and would be accessed when the profile data was used
meeting the cited claim limitation [1] under the broadest reasonable
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interpretation. Maloney has also disclosed that a list of recommend product
choices which correspond to an updated consumer profile is provided to the
customer (FF4) which serves the claimed product recommendation for both
personal (physiological) and local (external conditions such as water
hardness and ph) information meeting the cited claim limitation [2]. For
these reasons the rejection of claims 25-26 is sustained.

Claims 1-18, 20-24, 27-50
The Appellants argue that the rejection of claims 1 is improper
because Maloney and Fox fail to disclose generating a recommendation for a
product for many of the same reasons addressed above (Br. 20-22). The
Appellants also argue that Fox merely discloses depicting the effect of
weather variables for a given product at particular location and time period
and that there is no proper rationale for the combination (Br. 22, Reply Br.
8).
In contrast the Examiner has determined that the rejection of claim 1
is proper (Ans. 25-27).
We agree with the Examiner. As discussed above, Maloney does
disclose generating a product recommendation (FF4) based on personal and
local information. Fox has disclosed a system for displaying the impact of
weather on managerial planning decisions including retail planning
applications for personal care and consumer products (FF5). Fox has also
disclosed presenting the user with a graphical presentation of last years
weather variables by time period by location and that the weather data may
include humidity, cloud cover, and degrees of heat. (FF6). Fox has also
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disclosed the effect of weather variables on sales for a given product and at a
particular location for a particular time period (FF7) as well as the use of
demographic data (FF8). The modification of the system of Maloney,
which makes product recommendations, to also include weather and
demographic data as disclosed by Fox is considered an obvious, predictable
combination of familiar elements for the advantage of having a more
accurate product recommended by taking into account those additional
factors of weather and demographics. For these reasons the rejection of
claim 1 is sustained. The Appellants have provided the same arguments for
claims 2-9, 11-13, 17-18, 20-24, 30-31, and 48 and the rejection of these
claims is sustained for these same reasons.
With regards to claim 27, the Appellants make many of the same
arguments addressed above (Br. 23-24). The Appellants also argue that
Maloney and Fox fail to disclose “memory for storing a program that
accesses local information for the geographic area” (Br. 23, Reply Br. 9-10).
The Examiner has determined that Maloney discloses such a feature (Ans.
27-28). We agree with the Examiner. Both Maloney and Fox are both
directed to the use of a system on computers so the use of the memory would
be provided in either reference. For this reason and the reasons given above,
the rejection of claim 27 is also sustained.
The Appellants have provided essentially the same arguments for
claims 32, 34-47, and 49-50 (Br. 25-30) and the rejection of these claims is
sustained for the same reasons given above as well. With regards to claim
32 note that Fox discloses using forecasted weather data which under the
broadest reasonable interpretation serves as a “weather forecast”. With
regard to claims 43-47 Maloney has disclosed making a product
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recommendation (FF4) which would be considered making a “cosmetic
analysis” under the broadest reasonable interpretation in light of the
Specification. Note that the Appellants has cited to Fig. 2 of the
Specification as providing support for the “cosmetic analysis” (Br. 13) and
that Fig. 2 shows such a product recommendation.
The Appellants argue that the rejection of claims 10 is improper for
many of the same reasons addressed above (Br. 31). For the same reasons
given above, the rejection of claim 10 is sustained. Note that the
combination of Maloney and Fox would provide product recommendations
which would result in the exclusion of certain products which were not
recommended. Only those arguments actually made by Appellants have
been considered in this decision. Arguments which Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Appellants also argue that the rejection of claims 14-16, 28-29,
and 33 is improper for the same reasons addressed above (Br. 32-33). For
the same reasons given above, the rejection of these claims is also sustained.

Claim 19
The Appellants argue that the rejection of claim 19 is improper
because the Examiner has failed to take proper Official Notice that
consumers have a habit to use cosmetic products everyday and that the
“suggesting” feature would not have been obvious (Br. 35-36, Reply Br. 13).
In contrast the Examiner has determined that the rejection of claim 19
is proper (Ans. 43-44).
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We agree with the Examiner. In response to the Appellants’ assertion
of an improper taking of Official Notice, the Examiner provided the Ogilvie
reference which shows that consumers use lipstick (a consumer product)
almost daily (FF11). It would have been an obvious modification to the
combination to provide a “suggestion” that the consumer keep an adequate
supply of beauty products in their supply to increase sales for those products.
In a Section 103 analysis “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Here, one of ordinary skill in the art would have
readily inferred that suggesting consumers bought enough products as would
be required could increase product sales. For these reasons the rejection of
claim 19 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 25 and 26 under 35 U.S.C. § 102(a) as anticipated by
Maloney.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-9, 11-13, 17-18, 20-24, 27, 30-32, and 34-50 under 35
U.S.C. § 103(a) as unpatentable over Maloney and Fox.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Maloney, Fox, and Anderson.
Appeal 2010-009210
Application 10/024,496

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We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 14-16, 28-29, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Maloney, Fox, and Farchione.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Maloney, Fox, Official Notice.

DECISION
The Examiner’s rejection of claims 1-50 is sustained.

AFFIRMED

MP

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON DC 20001-4413