Ex Parte Peyrelevade et al

Patent Trial and Appeal Board

Aug 29, 2013

10024355 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/024,355 12/21/2001 Jerome Peyrelevade 05725.1008-00 4653
22852 7590 08/30/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
08/30/2013 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 JEROME PEYRELEVADE and RICHARD NAUDIN
___________

Appeal 2011-010183
Application 10/024,355
Technology Center 3600
____________

Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jerome Peyrelevade et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-72. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 1

THE INVENTION
Claim 36, reproduced below, is illustrative of the subject matter on
appeal.
36. A beauty product selection system,
comprising:
a display for displaying a facial image;
means for receiving a selection by a user of at least
one beauty product for simulated application to the
facial image;
an identifier that recommends a beauty product
based on the at least one selected product; and
a simulator that causes on the facial image a visual
simulation of the at least one selected beauty
product and the at least one recommended beauty
product.

1 Our decision will make reference to the Appellants’ Appeal Brief
(hereinafter “Br.,” filed May 24, 2010) and the Examiner’s Answer
(hereinafter “Ans.,” mailed Mar. 17, 2011).

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DISPOSITION ON APPEAL
The Examiner entered a new ground of rejection in the Examiner's
Answer against claims 1-22, 25-35, and 68-72 under 35 U.S.C. § 101. Ans.
3-8. The Examiner properly gave notice of the new ground of rejection (id.)
and the Technology Center Director approved it. Ans. 22-27 and 38. As the
Answer indicated (Ans. 37-38), the Appellants were required to respond to
the new ground within two months in either of two ways: 1) reopen
prosecution (see 37 CFR 41.39(b)(1)); or 2) maintain the appeal by filing a
reply brief as set forth in 37 CFR 41.41 (see 37 CFR 41.39(b)(2)), “to avoid
sua sponte dismissal of the appeal as to the claims subject to the new ground
of rejection.” According to the record before us, neither option appears to
have been exercised. Accordingly, the appeal as to claims 1-22, 25-35, and
68-72 subject to the new ground of rejection under 35 U.S.C. § 101 stands
dismissed. Upon return of the application to the Examiner, the Examiner
should (1) cancel claims 1-22, 25-35, and 68-72 subject to the new ground of
rejection and (2) notify the Appellants that the appeal as to claims 1-22, 25-
35, and 68-72 subject to the new ground of rejection under §101 is dismissed
and that claims 1-22, 25-35, and 68-72 are cancelled. See Manual of Patent
Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008. The
rejections before us for review are reduced to as follows:

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Voticky US 6,801,216 B2 Oct. 5, 2004
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Orpaz US 6,937,755 B2 Aug. 30, 2005

The Examiner alleges that the Appellants admit that “it was old and
well know[n] at the time the invention was made to analyze historical
data to provide guidance concerning consumer preferences.” Ans. 21
[Hereinafter, APA].

The following rejections are before us for review:
1. Claims 36-55 and 58-67 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Voticky and Orpaz.
2. Claims 23, 24, 56, and 57 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Voticky, Orpaz, and APA.

ISSUES
The first issue is whether claims 36-55 and 58-67 are unpatentable
under 35 U.S.C. §103(a) over Voticky and Orpaz. Specifically, the major
issue is whether the combination of Voticky and Orpaz teaches a system that
identifies a recommended beauty product based on a selected product and
simulates the recommended beauty product on a facial image. The second
issue is whether the Examiner has established a prima facie showing of
obviousness in rejecting claims 23, 24, 56, and 57 under 35 U.S.C. §103(a)
as being unpatentable over Voticky, Orpaz, and APA.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
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ANALYSIS
The rejection of claims 36-55 and 58-67under §103(a) as being
unpatentable over Voticky and Orpaz
Claim 36
We are not persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 36 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz.
First, claim 36 recites “an identifier that recommends a beauty product
based on the at least one selected product.” The Appellants argue that the
recommendations in Voticky are not based on the product selected by a user.
Br. 12. We disagree. Voticky describes providing product
recommendations based on a selected product. Voticky states: “In addition
to the displayed after picture, the finished makeover screen 230 preferably
includes suggestions (e.g., product recommendations) . . . corresponding to
the user’s selections.” Col. 11, ll. 32-37. Further, we note that Orpaz also
teaches a system that uses “consumer’s buying and ‘trying’ habits” to target
personalized product marketing to the consumer. Col. 12, ll. 12-15.
Second, claim 36 recites “a simulator that causes on the facial image a
visual simulation of the at least one selected beauty product and the at least
one recommended beauty product.” The Appellants argue that Voticky does
not describe this limitation, because Voticky does not describe displaying a
recommended beauty product. Br. 15-16. See also Br. 12-14. We find that
the combination of Voticky and Orpaz teaches this limitation. Initially, we
note that claim 36 (unlike its dependent claim 37) does not require the
selected product and the recommended product to be simulated
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simultaneously. As discussed above, Voticky describes the system
displaying an after picture of the customer that includes a listing of product
recommendations. Col. 12, ll. 26-37 and Fig. 12. Orpaz teaches a system
that can display both a facial image showing customer-selected products (for
example, see col. 3, ll. 27-31) and a facial image displaying recommended
products (for example, see col. 10, l. 62 – col. 11, l. 19). When Voticky and
Orpaz combine, the combination teaches a system that allows both
customer-selected products and recommended products to be displayed on a
facial image.
Accordingly, the rejection of claim 36 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is affirmed.

Claim 37
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 37 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 37 states: “the simulator causes the visual
simulation of the recommended beauty product on the facial image while the
simulation of the at least one selected product appears on the facial image.”
We see nothing in Voticky’s column 11, lines 26-37, cited by the Examiner
(Ans. 20; see also Ans. 18), that teaches this limitation. We note that the
Examiner does not rely upon Orpaz to teach this limitation and does not
respond to this argument in the Answer. The Examiner has failed to
establish a prima facie showing of obviousness.
Accordingly, the rejection of claim 37 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is reversed.

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Claims 41-43
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 41 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 41 states: “further including an interface
providing the user with an option to affirmatively seek a recommendation,
and wherein the simulation of the recommended product appears on the
facial image after the user affirmatively seeks the recommendation.” We see
nothing in Voticky’s column 11, lines 26-37, cited by the Examiner (Ans.
19-20), that teaches this limitation. We note that the Examiner does not rely
upon Orpaz to teach this limitation and does not respond to this argument in
the Answer. The Examiner has failed to establish a prima facie showing of
obviousness.
Accordingly, the rejection of claim 41, and claims 42-43, dependent
thereon, under 35 U.S.C. § 103(a) as being unpatentable over Voticky and
Orpaz is reversed.

Claims 44-46
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 44 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 44 states: “wherein the simulator causes
alternative simulated recommendations to sequentially appear on the facial
image.” We see nothing in Voticky’s column 9, lines 16-29, cited by the
Examiner (Ans. 19-20), that teaches this limitation. We note that the
Examiner does not rely upon Orpaz to teach this limitation and does not
respond to this argument in the Answer. The Examiner has failed to
establish a prima facie showing of obviousness.
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Accordingly, the rejection of claim 44, and claims 45-46, dependent
thereon, under 35 U.S.C. § 103(a) as being unpatentable over Voticky and
Orpaz is reversed.

Claim 49
We are not persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 49 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 49 recites: “an interface for eliciting
personal information from the user, and where the recommendation is a
function of both the at least one selected product and the personal
information.” Like for the rejection of claim 36 above, the Appellants argue
that Voticky does not teach that the recommendation is a function of the at
least one selected product. Br. 25 and 30. For the same reasons as discussed
above with respect to claim 36, we find the Appellants’ argument
unpersuasive.
Accordingly, the rejection of claim 49 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is affirmed.

Claims 52-54
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 52 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 52 states: “wherein the display presents two
facial images, and wherein differing recommended products are displayed
on each image.” We see nothing in Voticky’s column 8, lines 4-23, cited by
the Examiner (Ans. 21), that teaches this limitation. We note that the
Examiner does not rely upon Orpaz to teach this limitation and does not
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respond to this argument in the Answer. The Examiner has failed to
establish a prima facie showing of obviousness.
Accordingly, the rejection of claims 52 and claims 53-54, dependent
thereon, under 35 U.S.C. § 103(a) as being unpatentable over Voticky and
Orpaz is reversed.

Claims 38-40, 47, 48, 50 and 51
The Appellants do not make separate arguments for claims 38-40, 47,
48, 50 and 51. Therefore, these claims will stand or fall with parent claims
36 and 49. 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, the rejection of claims 38-40, 47, 48, 50 and 51 under 35
U.S.C. § 103(a) as being unpatentable over Voticky and Orpaz is affirmed.

Claim 55
We are not persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 55 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. To traverse the rejection of claim 55, the
Appellants rely upon the same arguments made with respect to claim 36.
See Br. 15-17. For the reasons discussed above with respect to the rejection
of claim 36 (supra 5-6), we find the Appellants’ arguments unpersuasive.
Accordingly, the rejection of claim 55 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is affirmed.

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Claim 59
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 59 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. See Br. 32; see also Br. 22-24. Claim 59 states:
“wherein the simulator simulates the selected beauty product and the
complementary beauty product simultaneously on the facial image.” The
Examiner admits that Voticky does not describe this limitation, but instead
relies upon Orpaz’s Figure 4 and column 4, lines 37-50. Ans. 21. See also
Ans. 19. We see nothing in the cited portions that teaches this limitation and
note that the Examiner does not respond to this argument in the Answer.
The Examiner has failed to establish a prima facie showing of obviousness.
Accordingly, the rejection of claim 59 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is reversed.

Claim 60
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 60 under 35 U.S.C. § 103(a) as being unpatentable
over Voticky and Orpaz. Claim 60 recites “wherein the simulator performs .
. . sequentiallysimulating the selected beauty product and the complementary
beauty product.” We see nothing in Voticky’s column 9, lines 16-29, cited
by the Examiner (Ans. 21; see also Ans. 19-20), that teaches this limitation.
We note that the Examiner does not rely upon Orpaz to teach this limitation
and does not respond to this argument in the Answer. The Examiner has
failed to establish a prima facie showing of obviousness.
Accordingly, the rejection of claim 60 under 35 U.S.C. § 103(a) as
being unpatentable over Voticky and Orpaz is reversed.
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Claims 58 and 61-67
The Appellants do not make separate arguments for claims 58 and 61-
67. Therefore, these claims will stand or fall with parent claim 55.
37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, the rejection of claims 58 and 61-67 under 35 U.S.C.
§ 103(a) as being unpatentable over Voticky and Orpaz is affirmed.

The rejection of claims 23, 24, 56, and 57 under §103(a) as being
unpatentable over Voticky, Orpaz, and APA
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claims 23, 24, 56, and 57. In rejecting these claims the
Examiner admits that Voticky and Orpaz do not teach the limitations and
merely concludes that “[i]t would have been obvious to one of ordinary skill
at the time the invention was made to combine Votciky, Orpaz and
knowledge of one of ordinary skill to disclose” the recited limitations. Ans.
21. “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner fails to provide
some articulated reasoning with rational underpinning to support the
conclusion of obviousness. APA does not cure the deficiency above.
Therefore, the Examiner has not established a prima facie showing of
obviousness. Accordingly, the rejection of claims 23, 24, 56, and 57 under
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35 U.S.C. § 103(a) as being unpatentable over Voticky, Orpaz, and APA is
reversed.

DECISION
The decision of the Examiner to reject claims 36, 38-40, 47-51, 55,
58, and 61-67 is affirmed and to reject claims 23, 24, 37, 41-46, 52-54, 56,
57, 59, and 60 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

EWH/rvb