Ex Parte Studin

Patent Trial and Appeal BoardApr 27, 2016

12273258 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/273,258 11/18/2008 111716 7590 04/29/2016 Fishman & Associates, LLC. 3975 University Drive, Suite 400 Fairfax, VA 22030 FIRST NAMED INVENTOR Joel R. Studin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SDF 08-6 7969 EXAMINER JUSTICE, GINA CHIEUN YU ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): request@fishmanllc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOEL R. STUDIN Appeal2013-001230 Application 12/273,258 Technology Center 1600 Before DONALD E. ADAMS, ULRIKE W. JENKS, and CHRISTOPHER G. P AULRAJ, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving claims to an anti- aging product. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. STATEMENT OF THE CASE Background According to the Specification, "the present invention is directed to a multi-chamber packet, which contains an anti-aging skin care composition, and to an anti-aging kits [which allow for safe application of an anti-aging 1Appellant identifies the Real Party in Interest as SCARGUARD LABS, LLC (see Br. 1 ). Appeal2013-001230 Application 12/273,258 composition for] for use in the treatment or prevention of age-related skin symptoms." Spec. 1, 11. 5-8. The invention described in the Specification seeks to address the problem where "the different active ingredients used to treat the various different causes of aging can react together causing these active ingredients to degrade and/or lose their efficacy over time," while avoiding the "cumbersome and inconvenient" use of separate bottles for each of the different active ingredients. Id. at 2:2-8. The Claims Claims 1 and 3-13 are under appeal, and are reproduced in the Claims Appendix of the Appeal Brief. Independent claim 1 is representative and reads as follows: 1. An anti-aging product comprising, at least two active agents for reducing age-related skin symptoms, wherein said at least two active agents are packaged into separate compartments of a single use multi- chamber packet wherein said at least two active agents are different from each other and interact together, causing one or both to be degraded and/or lose efficacy over time. (Appeal Br. 11 ). The Rejection The Examiner has rejected the claims under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Scott2 and Kim. 3 2 Scott et al. (US 6,585,984 B 1, issued July 1, 2003) ("Scott"). 3 Kim et al. (KR 10-0478424, published Mar. 14, 2005) ("Kim"). 2 Appeal2013-001230 Application 12/273,258 ANALYSIS The Examiner relies upon Scott's disclosure of "an anti-aging cosmetic product packaged in a dual-compartment dispenser with separate first and second storage areas" wherein "[t]he first storage area contains a first anti-aging dermal active agent, preferably selected from keratolytic agent, particularly alpha- and betahydroxy carboxylic acids" and "[t]he second storage area contains a second anti-aging dermal agent incompatible with the first composition, which can be selected from retinoids, vitamins, enzymes and anti-oxidants." Ans. 3, citing Scott, 1:27--42, 3:41-7:35. The Examiner acknowledges that the dispenser taught by Scott is not a "single use" device as required by the claims, but finds that "Kim teaches a multi-chamber packet ... useful to store and dispense sample cosmetic compositions," and asserts that it would have been obvious to the skilled artisan "to modify the teachings of Scott and use the multi-chamber packets of Kim to separately store the first and second active agents." Id. at 4. The Examiner asserts that "[t]he skilled artisan would have been motivated to do so, as Scott emphasizes the importance of controlling concentration of the active agents, and Kim teaches the package is useful to dispense sample products as well as to store original products, and save the production unit cost," and further asserts based on the combination that "the skilled artisan would have had a reasonable expectation of successfully producing an anti- aging product that contains at least two active agents in separate compartments of a single use multi-chamber packet, which can be used for sample products or everyday use, with a reduced production cost." Id. at 4-- 5. 3 Appeal2013-001230 Application 12/273,258 Claims 1 and 12 We determine that the Examiner has made a prima facie showing of obviousness for independent claims 1 and 12. Appellant argues that "Kim is merely concerned with providing a packet on which designs can be printed for cosmetic names and logos to enhance aesthetic appeal," and "does not suggest that the multi- chamber packet can contain materials which must be separated to maintain efficacy." Br. 7. Appellant further argues that "Scott is not concerned with single use or the convenience that a single use package could provide." Id. at 9. Appellant asserts that the Examiner improperly used the disclosure of the instant application to gain motivation of combining Scott and Kim. Id. at 8. We are unpersuaded by these arguments as they do not address adequately the teachings and suggestions found in each of the references. Scott teaches the need for simultaneous application of incompatible dermal active materials, albeit it does not suggest a "single use" packet to dispense both materials. See, e.g., Scott, 3:4--6, 7: 10-14. Kim, however, teaches multi-chamber single use packets useful for cosmetic product samples that can lower production costs. See, e.g., Kim, 4 ("Additionally, the production unit cost will be same as the conventional cost or somewhat less to lower the financial burden and thereby has the effect of offering an advantage to businesses in competition with other similar businesses."). The Examiner has identified a sufficient motivation to combine the teachings of Scott and Kim in that "the skilled artisan would have had a reasonable expectation of successfully producing an anti-aging product that contains at least two active agents in separate compartments of a single use multi-chamber packet, 4 Appeal2013-001230 Application 12/273,258 which can be used for sample products or everyday use, with a reduced production cost." (Ans. 5). This motivation does not depend upon Appellant's disclosure. Rather, it is "the mere application of a known technique to a piece of prior art ready for the improvement." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We accordingly affirm the Examiner's rejection of claims 1 and 12. Claim 11 Dependent claim 11 requires that "said multi-chamber packet contains a removable strip which runs through each of said at least two chambers, wherein said packet has a tear line which allows said strip to be tom away thereby providing access to the interior of chambers." For this claim, the Examiner asserts that "the multi-chamber packet disclosed by Kim has a perforated line which is to be tom by the user so the content materials come out." Ans. 5. Appellant argues that "Kim does not teach such a package, as each of the chambers has a separate tear-away portion, and there is not a single-tear away strip which runs through at least two of the chambers of the package." (Br. 10). We agree with Appellant as to claim 11. In particular, although Kim teaches a multi-chambered packet structure with individual perforated lines (15) allowing each of the chambers to be opened separately, the Examiner has not explained how this suggests the requirement of a removable strip which runs through each of said at least two chambers. We accordingly reverse the Examiner's rejection of claim 11. 5 Appeal2013-001230 Application 12/273,258 Claims 2-10, and 13 Appellant has not presented any separate arguments for dependent claims 2-10, and 13. These claims therefore fall with their respective independent claims. 37 C.F.R. Â§ 41.37(c)(iv). SUMMARY We affirm the rejection of claims 1and12 under 35 U.S.C. Â§ 103(a) as being unpatentable over Scott and Kim. Claims 2-10 fall with claim 1, and claim 13 falls with claim 12. We reverse the rejection of claim 11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Scott and Kim. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 6