Ex Parte Edgar et al

Patent Trial and Appeal Board

Jun 7, 2017

12029524 (P.T.A.B. Jun. 7, 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.
12/029,524 02/12/2008 Albert D. Edgar 23783-0004001 9006
26201 7590 06/09/2017
FISH & RICHARDSON P.C. (AU)
P.0 BOX 1022
Minneapolis, MN 55440-1022
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT D. EDGAR, DAVID C. IGLEHART,
and RICK B. YEAGER1
Appeal 2016-002223
Application 12/029,524
Technology Center 3700
Before JOHN G. NEW, RICHARD J. SMITH, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
1 Appellants state the real party-in-interest is TCMS Transparent Beauty
LLC. App. Br. 4.
Appeal 2016-002223
Application 12/029,524
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—7. Specifically, claims 1—4 stand
rejected as unpatentable under 35 U.S.C. § 112 (second paragraph) for
reciting a means-plus-function limitation but failing to describe sufficient
structure to achieve the recited function.
Claims 1, 3, and 4 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of over Dauga et al. (US
2004/0078278 Al, April 22, 2004) (“Dauga”) and Desormeaux (US
6,543,893 B2, April 8, 2003) (“Desormeaux).
Claim 2 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of over Dauga, Desormeaux, and
Barnett et al. (US 5,268,166, December 7, 1993) (“Barnett”).
Claims 5—7 stand rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of over Dauga and Barnett.
Claims 1—7 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 1—22 of US Patent
Application No. 11/503,629 (now US Patent No. 9,247,802).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a computer-controlled system for
determining attributes of an area of human skin and applying an
electrostatically charged modifying agent (RMA) at the pixel level, to make
the skin appear more attractive. Abstract.
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Application 12/029,524
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An apparatus to improve a visual attractiveness of a
region of human skin, the apparatus comprising
a housing;
at least one image generating element that generates one
or more images of the region of human skin, the region of human
skin being allocated into a plurality of frexels;
a computing environment configured to process the one or
more images to measure reflective properties of a pattern within
the plurality of frexels, that determines a total amount of a
reflectance modifying agent (RMA) that could be applied to
specific frexels of the plurality of frexels to provide a desired
correction, the total amount being determined based on the
reflective properties of each of the plurality of frexels, and that
determines an amount of the RMA to apply to the specific
frexels, the amount being a portion of the total amount such that
multiple passes of the apparatus over a same area of the region
of human skin provide the desired correction; and
at least one RMA application element configured to
selectively apply an electrostatically charged RMA to specific
frexels based on the amount to modify the pattern.
App. Br. 18.
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Appeal 2016-002223
Application 12/029,524
ISSUE AND ANALYSIS
A. Rejection of claims 1—4 under 35 U.S.C. $ 112, sixth paragraph
Issue
Appellants argue the Examiner erred in finding claims 1—4 invalid as
indefinite for reciting a means-plus-function claim limitation without
providing sufficient structure to perform the function.
Analysis
The Examiner treated the limitation of claim 1 reciting “at least one
RMA application element configured to selectively apply” as a means-plus-
function claim limitation because it uses a non-structural term coupled with
functional language, but it is not modified by some structure, material, or
acts recited in the claim. Final Act. 4. The Examiner finds that is unclear
that the recited “at least one RMA application element” is sufficient for
performing the claimed function. Id. The Examiner requires a showing that
the limitation at issue is sufficiently described in Appellants’ Specification
pursuant to 35 U.S.C. 112, sixth paragraph. Id.
The Examiner also finds the limitation of claim 1 reciting “a
computing environment configured to process,” is a generic placeholder, i.e.,
“computing environment,” coupled with the functional language “configured
to” that does not recited sufficient structure to achieve the function. Final
Act. 5. Furthermore, the Examiner finds, the generic placeholder is not
preceded by a structural modifier. Id. The Examiner finds a “computing
environment” is an equivalent of a “means” and “configured to” is an
equivalent of “for” and therefore interprets the claim language as reciting a
means-plus-fimction claim limitation. Id.
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Application 12/029,524
The Examiner therefore looks for the corresponding structure
described in Appellants Specification that achieves the claimed function.
App. Br. 5—6. The Examiner finds that a review of the Specification shows
that the corresponding structure of “a computing environment” is a
“personal computer, server, or portable computing device.” Id. at 6.
(quoting Spec. 6,11. 26-27). The Examiner finds this is insufficient to
support the implied “means for” language of the claim. Id.
Appellants contend that if the “RMA application element” is
considered to be a means-plus-fimction claim limitation, US Patent
Application No. 11/503,806 at col. 20,11. 21—26 and col. 41,11. 25—30,
which was incorporated into the instant application by reference, provides a
clear description of the structure corresponding to the term. App. Br. 11.
Appellants alternatively contend that the claim language reciting “at least
one RMA application element” recites a structural term. Id.. According to
Appellants, the Examiner erred in disregarding the structure disclosed in the
claim (e.g., “at least one RMA application element”) when considering
whether claim 1 invokes 35 U.S.C. § 112, sixth paragraph. Id. at 12 (citing
MPEP § 2181.1). Furthermore, Appellants argue, our reviewing court has
held that the claim language “configured to” can be read as having a
narrower meaning, indicating that the claimed structure (e.g., “at least one
RMA application element”) is designed or constructed to perform a function.
Id. (citing {In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014).
The Examiner responds that the claim term “at least one RMA
application element configured to” does not have a known structural
embodiment in the art. Ans. 12. The Examiner finds the term “element”
coupled to the term “configured to” is language that invokes 35 U.S.C. 112,
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Application 12/029,524
sixth paragraph. Id. at 12—13. The Examiner notes that Appellant has not
provided sufficient information to persuade Examiner that “configured to”
can be read so as to have a narrower meaning in such a way as to overcome
the invocation of § 112, sixth paragraph, and that Appellants have not
provided a comparison to the fact patterns of Aspex Eyewear, Inc. v.
Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) or Gianelli.
Ans. at 13. The Examiner therefore interprets the claim limitation under 35
U.S.C. § 112, sixth paragraph, with the corresponding structure of the “at
least one RMA application element configured to selectively apply” as “an
inkjet printer” as disclosed in Appellants’ Specification. Id. (citing Spec. 9).
The Examiner, however, finds persuasive Appellants position that the
structure corresponding to the “RMA application element” is disclosed in
US Patent Application No. 11/503,806, and withdraws the rejection under 35
U.S.C. § 112 with respect to this limitation. Id. Accordingly, the aspect of
the Examiner’s indefmiteness rejection relating to “RMA application
element” is no longer before us on appeal.
With respect to the aspect of the Examiner’s indefmiteness rejection
relating to the “computer environment” limitation, which the Examiner
maintains, Appellants reply that MPEP § 2181 provides that: “35 U.S.C.
112, paragraph 6, will not apply if persons of ordinary skill in the art reading
the specification understand the term to have a sufficiently definite meaning
as the name for the structure that performs the function, even when the term
covers a broad class of structures or identifies the structures by their
function.” Reply Br. 1. Furthermore, Appellants argue, a “term is not
required to denote a specific structure or a precise physical structure to avoid
the application of... 35 U.S.C. 112, paragraph 6.” Id. at 1—2. More
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Application 12/029,524
specifically, Appellants contend, to “determine whether a word, term, or
phrase coupled with a function denotes structure, examiners should check
whether: ... the specification provides a description sufficient to inform one
of ordinary skill in the art that the term denotes structure.” Id. at 2.
We are not persuaded by Appellants’ arguments. As an initial matter,
Appellants do not address the Examiner’s rejection of the limitation reciting
“a computer environment configured to” as designating a means-plus-
fimction claim in their Appeal Brief. We therefore summarily affirm the
Examiner’s rejection of the claim on this basis.2
Moreover, we observe that the Examiner’s rejection explicitly
included the finding that the claim term “a computing environment
configured to process,” is a generic placeholder coupled with the functional
language “configured to,” without reciting sufficient structure to achieve the
function. Final Act. 5. Appellants’ Specification does not give an explicit
definition of “computing environment” but discloses, by way of example, “a
computing environment 100 — for example a personal computer, server, or
portable computing device” and that:
The computing environment 200 further comprises an
application algorithm 230; storage 250 — which may be may be
non-volatile data storage; an application map 232 — which is
created by application algorithm 230 to provide instructions for
applications onto an area of skin 302; a printable enhancement
2 Appellants address this basis of the Examiner’s rejection in their Reply
Brief. See Reply Br. 2—3. However, we need not reach arguments made in
the Reply Brief that could have been included in the Appeal Brief, but were
not. See 37 C.F.R. § 41.37(c)(l)(vii); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not”).
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Application 12/029,524
image 234 — which is the set of instructions for applications onto
an area of skin 302.
Spec. 6—7. However, a general purpose computer is usually only sufficient
as the corresponding structure for performing a general computing function
(e.g., “means for storing data”). A means-plus-fimction computer limitation
reciting a more specific function requires more than simply a general
purpose computer or microprocessor. In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011).
In light of this, we find that the requirement of claim 1 that the recited
computing environment configured to:
process the one or more images to measure reflective properties
of a pattern within the plurality of frexels, that determines a total
amount of a reflectance modifying agent (RMA) that could be
applied to specific frexels of the plurality of frexels to provide a
desired correction, the total amount being determined based on
the reflective properties of each of the plurality of frexels, and
that determines an amount of the RMA to apply to the specific
frexels, the amount being a portion of the total amount such that
multiple passes of the apparatus over a same area of the region
of human skin provide the desired correction
requires a more explicit disclosure in the Specification than a “a personal
computer, server, or portable computing device” with an unspecified
“application algorithm” and applications for performing the claimed
function. We therefore find that the Examiner has established a prima facie
case under 35U.S.C. § 112, sixth paragraph.
B. Rejection of claims E 3, 4, and 5 under 35 U.S.C. $ 103(a)
Issue
Appellants argue that the Examiner erred in finding the claimed
invention obvious over the cited art because the combined references fail to
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Application 12/029,524
teach or suggest the limitation of claims 1 and 5 reciting: “an amount of the
RMA to apply to the specific ffexels, the amount being a portion of the total
amount such that multiple passes of the apparatus over a same area of the
region of human skin provide the desired correction.” App. Br. 12.
Analysis
The Examiner finds that Dauga teaches all of the limitations of the
claims, except for the limitation reciting “multiple passes of the apparatus
over a same area of the region of human skin [applying RMA to] provide the
desired correction.” Final Act. 7—9. The Examiner finds that Desormeaux
teaches multiple passes of an apparatus over a same region of human skin
using the apparatus to provide the desired correction. Id. at 9 (citing
Desormeaux col.l, 11. 21—27 (printhead slides back and forth, with the page,
which may be human skin, being advanced in steps between each pass of the
printhead); col. 6,11. 1—16 (a drop control device, and an inkjet print head)).
Appellants argue that the portions of Dauga relied upon by the
Examiner teach multiple passages of the printhead that allow the deposition
of different products, e.g., a care product at a first passage, a color product at
the second passage, and a matting agent at the third passage. App. Br. 15
(see Dauga ]ff[ 62—64). Appellants contend this is different from the claim
requirement that the amount of RMA being deposited on a given pass is only
a portion of the total amount, such that multiple passes of the apparatus over
a same area of the region of human skin provide the desired correction, as
recited in the claims. Id.
Furthermore, Appellants argue, Desormeaux teaches: “the printhead is
held in a carriage that slides back and forth along a guide rod in a
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Application 12/029,524
‘reciprocating printhead’ system, with the page being advanced in steps
between each pass of the printhead.” App. Br. 15 (quoting Desormeaux col.
1,11. 25—28). Appellants assert that Desormeaux teaches that the page is
advanced in steps between each pass of the printhead, which, Appellants
argue, is different than the claims requirement that multiple passes of the
apparatus over a same area of the region of human skin. Id.
Finally, Appellants argue further that Barnett is not cited by the
Examiner as curing the alleged deficiencies of Dauga and Desormeaux.
App. Br. 15—16.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the multiple passes of a plurality of
different RMA (as taught by Dauga) with multiple passes of a signal RMA,
as taught by Desormeaux, because it would provide regulated deployment of
a pigment. App. Br. 15.
We are not persuaded by Appellants’ argument. We agree with the
Examiner’s findings with respect to the teachings of Dauga. Furthermore,
Dauga additionally teaches: “Advantageously, the process comprises steps
of recognizing the desired visual characteristics and of applying treatment
products, especially makeup or dyeing products, over a part to be treated,
especially to be made up, according to said desired characteristics.” Dauga 1
13. Dauga further teaches:
In one embodiment of the invention, the process comprises
a step of storing, for a given person, the products used and the
visual characteristics obtained .... Advantageously, the local
characteristics obtained immediately after applying the treatment
products are monitored .... The monitoring may be carried out
by feedback or automatic control, with real-time correction of the
makeup operation or of the treatment, if necessary.
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Application 12/029,524
Dauga 1115—17. We find that a person of ordinary skill would realize that
Dauga thus teaches a system that monitors the application of the treatment
products and, by employing feedback, determines whether, after application,
additional product is needed. If additional product is needed, the system
applies it, through another application pass. We consequently find that the
combined cited prior art teaches or suggests all of the limitations of the
claims, and we affirm the Examiner’s rejection. Furthermore, Appellants
rely upon these same arguments in appealing the Examiner’s rejection of
dependent claims 2-4, 6, and 7. App. Br. 16. We therefore similarly affirm
the Examiner’s rejection of those claims.
C. Rejection of claims 1—7 for obvious-type double patenting
Appellants do not address the Examiner’s double patenting rejection.
We therefore summarily affirm the obviousness-type double patenting
rejection. See Manual of Patent Examining Procedure § 1205.02 (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, that ground of rejection will be summarily sustained by the Board.”).
DECISION
The Examiner’s rejection of claims 1—4 under 35 U.S.C. § 112, sixth
paragraph, is affirmed.
The Examiner’s rejection of claims 1—7 under 35 U.S.C. § 103(a) is
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(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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