Ex Parte Farage et al

Patent Trial and Appeal Board

Nov 29, 2012

11283174 (P.T.A.B. Nov. 29, 2012)

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.
11/283,174 11/18/2005 Miranda Aref Farage 10219 3504
27752 7590 11/29/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
11/29/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIRANDA AREF FARAGE
and ALEXANDRA KATSARI
____________

Appeal 2010-008752
Application 11/283,174
Technology Center 3700
____________

Before CHARLES N. GREENHUT, WILLIAM V. SAINDON, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Minerath (US 2004/0003670
A1; pub. Jan. 8, 2004). App. Br. 2.1 Claims 2 and 3 have been cancelled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION of claim
1 pursuant to our authority under 37 C.F.R. § 41.50(b).

1 Refers to Appeal Brief filed July 24, 2009.
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CLAIMED SUBJECT MATTER
Claim 1, the sole claim on appeal, is reproduced below:
1. A method for identifying individuals having vulva irritation
that does not require physical examination of the individual’s
vulva area, said method comprising the steps of
collecting facial skin information as an indicator of vulva
irritation from an individual through a question or
questionnaire, wherein the facial skin information is self-
reported facial skin sensitivity and self-reported facial skin
redness or erythema;
placing individuals self-reporting facial skin sensitivity and
self-reported facial skin redness or erythema in a first group of
individuals having vulva irritation; and
placing individuals not self-reporting facial skin sensitivity and
self-reported facial skin redness or erythema in a second group
of individuals not having vulva irritation.

ANALYSIS
The Examiner found that Minerath discloses a method of selecting a
group of individuals for testing based on whether or not the potential test
subject has skin irritation and facial skin sensitivity. Ans. 4. The Examiner
also found that Minerath identifies subjects with a known hypersensitivity to
facial tissues, cosmetic products, soaps, or lotions through interviews and
separates individuals with skin sensitivity and irritation from individuals
without skin irritation for product testing. Ans. 4-5, 6 (citing paras. [0030-
0031]). The Examiner found that although Minerath does not disclose a
method of selecting a group of individuals having vulva irritation, Minerath
tests for products such as tissue, facial tissue, wipes, and sanitary disposal
articles that are used in the vaginal area which generally involves some mild
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abrasion to the skin so that a skilled artisan would have been motivated to
use Minerath’s method to establish vulva irritation as the products tested are
from the same field of endeavor. Ans. 5.
Appellants argue that there is no suggestion or motivation to modify
Minerath to yield the method of claim 1 “wherein facial skin information in
the form of self-reported facial skin sensitivity and self-reported facial skin
redness or erythema is collected from an individual to determine if they have
vulvar irritation” because Minerath “uses its selection criteria to exclude test
subjects with excessive dryness and/or redness at or near the testing sites or
subjects with atopic dermatitis and/or eczema at the test sites, as one of its
steps involves controlling damaging of an area of skin.” App. Br. 4-5.
Appellants also argue that Minerath “teaches against the method of claim 1,
in that it purposefully excludes individuals having skin conditions from its
method for measuring the soothing attributes of personal care articles.”
App. Br. 5. These arguments are not persuasive because Minerath discloses
that test subjects may be either healthy subjects with no skin damage or test
subjects with skin damage. E.g., Paras. [0006, 0029, 0030]; see Ans. 5-6.
Appellants further argue that Minerath
would not motivate or suggest to one of ordinary skill in the art
the method of claim 1 for collecting facial skin information as
an indicator of vulva irritation, as it does not disclose or suggest
there is a connection between self-reported facial skin
sensitivity and self-reported facial skin redness or erythema and
vulvar irritation, particularly when it purposefully excludes
individuals having facial skin conditions from its method.

App. Br. 5. Appellants also contend that nowhere in Minerath is there a
disclosure that its method can be used to determine vulvar irritation in an
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individual because Minerath seeks to determine the soothing effects of a
personal care composition by contacting the composition with damaged skin
and rating the soothing effect rather than determining whether an individual
has vulvar irritation without any physical examination of the affected area
(vulva) as in claim 1. App. Br. 5-6. These arguments are not persuasive
because Minerath discloses the claimed method of collecting self-reported
facial skin sensitivity and skin redness/erythema information and grouping
individuals by those who self-report facial skin sensitivity and redness or
erythema information and those who do not. Paras. [0029-0031]. These
arguments also do not persuade us of error in the Examiner’s determination
that it would have been obvious to use Minerath’s method to establish vulva
irritation. Labeling individuals with skin sensitivity/redness as having vulva
irritation does not impart any new or non-obvious relationship to the claimed
method because test subjects are placed in the same groups based on skin
sensitivity and redness information irrespective of whether the group also is
considered to have vulva irritation. As such, this information amounts to
nonfunctional, descriptive material that does not change the function or steps
of the claimed method or distinguish claim 1 from the method disclosed by
Minerath.
NEW GROUND OF REJECTION
We also enter a New Ground of Rejection of claim 1 under 35 U.S.C.
§ 101 because it is directed to an abstract idea. The claim recites a mere data
gathering step and abstract mental steps. In particular, claim 1 recites the
step of collecting self-reported facial skin information by question or
questionnaire and the step of placing individuals who self-report facial skin
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sensitivity or redness information in one group and those who do not self-
report such information in another group. The information can be collected
through a questionnaire administered through a computer, interview process,
or filling out a form. Spec. 3, l. 18 to 4, l. 4. Depending on the answers
provided, individuals are placed in a group that is characterized as persons
having vulva irritation or in a group characterized as persons not having
vulva irritation. Spec. 4, ll. 6-17. The collecting step involves a mental step
of obtaining self-reported information in response to questions in an
interview or on a questionnaire. The grouping step involves the mental step
of assigning individuals to a particular group based on self-reported
information obtained during the information collection step.
DECISION
We AFFIRM the rejection of claim 1.
As provided supra, we enter a NEW GROUND OF REJECTION of
claim 1 under 35 U.S.C. § 101.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record….
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)

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