Ex Parte Zaguroli

Board of Patent Appeals and Interferences

Jun 8, 2012

11399618 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES ZAGUROLI, JR.
__________

Appeal 2011-001713
Application 11/399,618
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
reducing wrinkles. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 4, 5, 7, and 8 stand rejected and appealed (App. Br. 1).
Claims 1 and 7 illustrate the appealed subject matter and read as follows:
1. A method of reducing wrinkles in the human skin comprising
stretching the skin adjacent the wrinkle to flatten out the wrinkle and
applying a multilayer tape piece over the flattened out wrinkle and
adjacent stretched skin said tape piece comprised of an outer flexible
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cover layer, an intermediate stiffener layer of a stiff but resiliently
bendable material able to hold the skin in the stretched out condition,
and an inner cushioning foam adhesive layer to hold the piece against
the flattened out skin;
said intermediate layer being made smaller than said inner layer
to create a cushioned perimeter around a perimeter edge of said
intermediate stiffener layer;
leaving said tape piece applied to the stretched skin for an
extended period of hours; and, thereafter removing said tape piece.

7. The method according to claim 1 wherein said flexible
outer layer is made of a breathable woven material.

The following rejections are before us for review:
(1) Claims 1, 4, 5, and 8, under 35 U .S.C. § 103(a) as obvious1 over
Kim2 and Singh3 (Ans. 3-4); and
(2) Claim 7, rejected under 35 U.S.C. § 103(a) as obvious over Kim,
Singh, Carlton,4 and Miner5 (Ans. 4-5).
DISCUSSION
The Examiner found that Kim taught a wrinkle reducing method
substantially as recited in claim 1, except that Kim did not disclose the skin-
adhering layer of its multilayer tape as being “a cushioning adhesive layer
made of an adhesive foam material” (Ans. 4). To meet that limitation, the

1 The Examiner’s initial statement of the rejection contains a typographical
error stating that the claims are rejected “under 35 U.S.C. [§] as being
anticipated” (Ans. 3). However, as is evident from the text of the rejection
(see id. at 3-4), and as Appellant concedes (App. Br. 2), the rejection is
clearly for obviousness under § 103(a).
2 U.S. Patent App. Pub. No. 2003/0208230 A1 (published November 6,
2003).
3 U.S. Patent No. 6,716,186 B1 (issued April 6, 2004).
4 U.S. Patent No. 3,782,372 (issued January 1, 1974).
5 U.S. Patent No. 6,649,181 B1 (issued November 18, 2003).
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Examiner cited Singh as disclosing the use of a foam adhesive on a skin-
adhering splint, and reasoned that an ordinary artisan would have considered
it obvious to “form the adhesive layer of Kim from an adhesive foam
material since Kim is silent as to the composition of the adhesive layer and
Singh et al. teach adhesive foam materials are well known in the art for
providing an adhesive layer for attaching a material to the skin” (id.).
The Examiner also conceded that Kim failed to disclose that the
intermediate layer is made smaller than the inner layer and outer layer, and
again cited Singh to meet that deficiency (id.). The Examiner reasoned that
an ordinary artisan would have considered it obvious to provide Kim’s
wrinkle reducing sticker with an “intermediate stiffener layer which is
smaller than both the outer layer and inner layer to allow the edges of the
tape beyond the intermediate stiffener layer to be flexible for enhanced
ability to conform to the curves in the skin surface while still maintaining the
stretch of the skin” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellant’s arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case of obviousness as
to claim 1.
Specifically, Appellant notes that Singh describes a splint for fingers
that includes a curable support layer that solidifies after the splint is applied:
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Thus, the support layer 20, 120 [of Singh] as applied
would allow the stretched skin to relax in the time before the
support layer is cured rendering its strip ineffective in the
context of the wrinkle removal method of Kim, since the skin
would not remain stretched when the fingers were removed to
enable curing of the support layer 120.

(App. Br. 3-4.) Furthermore, Appellant argues, “there is no suggestion that
any of the features would be deemed applicable to Kim’s method who seeks
to maintain flattened skin rather than providing a splint which
accommodates the curvature of a body member such as a finger, thus having
opposite incompatible objects” (id. at 4).
We do not find these arguments persuasive. It might be true that
Singh’s curable support member would not be a suitable substitute for the
wood, plastic, or metal solid support in Kim’s sticker that maintains
flattened skin (see Kim [0006]). It might also be true that Singh’s support
member, due to its curability, accommodates the curvature of a finger, rather
than maintaining a flattened skin surface.
The Examiner does not, however, rely on Singh for its support
member. Rather, the Examiner relies on Kim as disclosing a device
containing claim 1’s stiff but resilient material that holds the skin in a
stretched out condition so as to remove wrinkles (see Ans. 3). The Examiner
cites Singh only as evidence that “adhesive foam materials are well known
in the art for providing an adhesive layer for attaching a material to the skin
and thus one skilled in the art would find it obvious to use such a cushioned
adhesive with the device of Kim” (id. at 6).
Therefore, as Appellant’s arguments do not address the combination
of prior art features advanced by the Examiner as being suggested by the
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cited references, we are not persuaded that Appellant’s arguments
demonstrate error in the Examiner’s conclusion that claim 1 would have
been obvious to an ordinary artisan. Accordingly, we affirm the Examiner’s
obviousness rejection of claim 1 over Kim and Singh. As they were not
argued separately, claims 4, 5, and 8 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner also rejected claim 7 as obvious over Kim, Singh,
Carlton, and Miner (Ans. 4-5). While the Examiner conceded that Kim did
not disclose that the flexible outer layer of Kim’s wrinkle-removing sticker
was a breathable woven material as required by claim 7, the Examiner
concluded that it would have been obvious to use such a material as Kim’s
outer layer in view of Carlton’s disclosure that a porous material was
advantageous in a wrinkle removing tape because it “allow[ed] air to reach
the skin” (Ans. 5 (citing Carlton, col. 2, ll. 37-38)). The Examiner further
reasoned that an ordinary artisan would have considered it obvious to use a
woven material to impart that breathability in view of Miner’s disclosure
that “woven materials are well known in the art for providing a breathable
material” (id.).
In addition to relying on the deficiencies discussed above regarding
Singh, Appellant argues that “there is no motivation apparent of adding the
woven cover layer on the strips of Carlton or Miner to Kim and this rejection
is deficient for that further reason” (App. Br. 4).
We are not persuaded. As noted above, Appellant’s arguments do not
convince us that the Examiner erred in concluding that it would have been
obvious to use Singh’s foam adhesive on Kim’s device.
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Moreover, contrary to Appellant’s argument, as explained by the
Examiner, providing a woven outer layer to Kim’s device would allow air to
reach the wearer’s skin (Ans. 5). We are, therefore, not persuaded that the
Examiner has failed to explain why an ordinary artisan would have been
motivated to practice the claimed process using a device with the features
recited in claim 7. We therefore also affirm the Examiner’s obviousness
rejection of that claim.

SUMMARY
We affirm the Examiner’s obviousness rejection of claims 1, 4, 5, and
8 over Kim and Singh.
We also affirm the Examiner’s rejection of claim 7 as obvious over
Kim, Singh, Carlton, and Miner.

TIME PERIOD
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

APJ Initials:

clj