Ex Parte SamainDownload PDFPatent Trial and Appeal BoardJan 27, 201713119065 (P.T.A.B. Jan. 27, 2017) Copy Citation 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. 2 Appeal 2014-009632 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 3 Appeal 2014-009632 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 4 Appeal 2014-009632 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 5 Appeal 2014-009632 Application 13/119,065 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). 6 Appeal 2014-009632 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 7 Copy with citationCopy as parenthetical citation