Ex Parte Samain

Patent Trial and Appeal Board

Jan 27, 2017

13119065 (P.T.A.B. Jan. 27, 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.
13/119,065 06/23/2011 Henri S amain 148910 8607
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
WORSHAM, JESSICA N
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRI SAMAIN
Appeal 2014-009632
Application 13/119,065
Technology Center 1600
Before ULRIKE W. JENKS, KIMBERLY McGRAW, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21—25 and 27—31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2014-009632
Application 13/119,065
STATEMENT OF THE CASE
According to the Specification, the invention relates to a system for
dispensing cosmetic or dermatologic products. Spec. 1:7—9.
Claim 21 is the only independent claim on appeal and is reproduced
below:
21. A cosmetic or dermatological system comprising:
a receiver of data related to current and/or future
surrounding conditions, said data being received from a data
transmitter external to the system and comprising information
related to at least one of an intensity of UV radiation, a
temperature, a humidity, wind precipitation, pollution, and a
pressure;
a packaging and dispenser device containing one or more
compositions from which a preparation is delivered by the
device;
an adjustment system that is coupled to or configured for
coupling to the packaging and dispenser device, and that enables
at least one characteristic of the preparation delivered by the
device to be modified; and
a processor configured to automatically control the
adjustment system as a function of the received data or for
informing a user, as a function of the received data, about an
action to be exerted on the adjustment system.
App. Br. A-l.
REJECTIONS
Claims 21—25 and 27—31 stand rejected under 35 U.S.C. § 103(a) over
Stewart (WO 98/30189, pub. July 16, 1998) and Duranton (US Pub
2005/0005678 Al, pub. Jan. 13, 2005). Final Act. 3.
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Application 13/119,065
ANALYSIS
We have reviewed the rejection of claims 21—25 and 27—31 in light of
Appellant’s arguments that the Examiner erred. In doing so, we have
evaluated only the arguments that Appellant actually makes in the Appeal
Brief. Arguments that Appellant could have made but declined to make are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Arguments raised for the first time in the Reply Brief are also
considered waived in the absence of a showing of good cause explaining
why the argument could not have been presented in the Appeal Brief. See
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the
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”).
Appellant argues the Examiner erred in rejecting independent claim
21 because the combination of Duranton and Stewart
fails to disclose or suggest at least the claim 21 limitations of “a
processor configured to automatically control the adjustment
system as a function of the received data or for informing a user,
as a function of the received data, about an action to be exerted
on the adjustment system” wherein said data comprises
“information related to at least one of an intensity of UV
radiation, a temperature, a humidity, wind precipitation,
pollution, and a pressure.”
App. Br. 4.
In particular, Appellant contends that the “sensors disclosed in
Stewart provide information regarding a person’s skin, not data related to
current and/or future surroundings as recited in claim 21.” Id. at 6.
This argument is not persuasive as it only addresses the teachings of
Stewart and does not address the full scope of the Examiner’s rejection. See
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Application 13/119,065
App. Br. 4—6 (only addressing the teachings of Stewart). Where a rejection
rests on a combination of references, appellant cannot establish
nonobviousness by attacking the references individually. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the rejection is based
on the combination of the teachings of Duranton and Stewart. Appellant
does not address what the Duranton-Stewart combination “taken as a whole
would suggest to one of ordinary skill in the art” and, therefore, has not
established Examiner error. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.”)
Appellant also argues that it would not have been obvious to combine
the cosmetic formulating apparatus of Stewart with the ambient humidity
indicator of Duranton. App. Br. 6—8. Specifically, Appellant contends the
teachings of Stewart and Duranton are not compatible with each other
because “Stewart is intended for formulating a customized point-of-sale
cosmetic composition” while “Duranton teaches taking into account the
changes of a surrounding environment for the selection or application of a
cosmetic product.” Id. at 7. Appellant further asserts that even though “both
Duranton and Stewart disclose determining the composition by measuring a
person’s skin,” Stewart “teaches away from measuring the surrounding
conditions because the apparatus of Stewart is particularly dedicated to use
at the point-of-sale.” Id. at 8.
This argument is also unavailing as Appellant has not persuasively
shown that Duranton and Stewart teach away from or are incompatible with
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Application 13/119,065
each other. To teach away, a reference must “criticize, discredit, or
otherwise discourage” the subject matter claimed. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). An assessment of whether devices are
incompatible so as to not be combinable “must not ignore the modifications
that one skilled in the art would make to a device borrowed from the prior
art.” See ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir.
2007).
Here, nothing in the prior art implies that Duranton’s sensors for
collecting data regarding humidity levels should not or could not be
combined with the cosmetic system of Stewart. Appellant identifies no
portions of Stewart that criticizes, discredits, or otherwise discourages taking
into account humidity levels when formulating a cosmetic. Nor does
Appellant articulate a reason why the humidity sensors of Duranton are
incompatible with the device of Stewart. See Ans. 5 (noting the similarities
of the sensors used in the Duranton and Stewart devices).
“[Wjhether there is a reason to combine prior art references is a
question of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1367 (Fed. Cir. 2012). The Examiner found that Stewart teaches a
cosmetic system for preparing customized cosmetic based on skin type. The
Examiner found that Duranton teaches a need to select a cosmetic based not
only on the user’s characteristics (e.g., skin type), but also on characteristics
of the environment, such as humidity. Final Act. 5; Duranton 17; see also
Ans. 3^4. The Examiner found that both Stewart and Duranton teach the use
of sensors to determine skin characteristics and that Duranton also teaches
sensors that determine humidity of ambient air. The Examiner concluded
that it would have been obvious to combine the teachings of Stewart and
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Duranton to test surrounding conditions, such as humidity, to formulate a
more effective composition, given that Duranton teaches a need to select a
cosmetic based not only on the skin type but also on environmental
characteristics, such as humidity. Final Act. 5; Duranton 17; see also Ans.
3^4. A preponderance of the evidence supports the Examiner’s finding that
an ordinarily-skilled artisan would have been motivated to combine Stewart
and Duranton.
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 21 for obviousness
based on Duranton and Stewart and we, therefore, sustain the rejection.
Appellant does not present separate arguments in their opening brief
directed to claims 22—25 and 27—31, which depend directly or indirectly
upon claim 21.1 As such, we also sustain the rejection of dependent claims
22-25 and 27-31. See 37 C.F.R. § 41.37(c)( 1 )(iv)(2014).
1 The Reply Brief presents separate arguments of patentability directed to
claims 24 and 31. Reply. Br. 4—5. However, Appellant has not provided
good cause for why these argument were not provided in the Appeal Brief
and, therefore, have not been considered. See Ex parte Nakashima, 93
USPQ2d 1834 (BPAI 2010) (explaining that arguments and evidence not
timely presented in the principal Brief, will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief).
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Application 13/119,065
DECISION
The Examiner’s rejection of claims 21—25 and 27—31 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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