Ex Parte Carolan et al

Patent Trial and Appeal Board

Jan 25, 2019

14163693 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/163,693 01/24/2014
23529 7590
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MB R2GIP9
CANADA
01/29/2019
FIRST NAMED INVENTOR
Sean Carolan
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.
87059-1 US / ADB 3058
EXAMINER
STEVENS, MARK V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
uspto@adeco.com
djones@adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN CAROLAN and TIANNA JAISAARD
Appeal2017-008975
Application 14/163,693
Technology Center 1600
Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
RYAN H. FLAX, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal2 under 35 U.S.C. § 134(a) involving
claims directed to a method of applying hair treatment. Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as Sean Carolan and Tianna
J aissard. Appeal Br. 1.
2 This opinion considers the Final Office Action mailed June 2, 1016 ("Final
Act."), the Appeal Brief submitted December 19, 2016 ("Appeal Br."), the
revised Claims Appendix submitted January 25, 2017 ("Claims Appendix"),
the Examiner's Answer mailed April 6, 2017 ("Ans."), and the Reply Brief
submitted June 5, 2017 ("Reply Br.").
Appeal2017-008975
Application 14/163,693
STATEMENT OF THE CASE
In beauty regimes "[h ]eat is widely considered synonymous with
absorption or penetration, with an[] example being massage oils, which are
typically heated before application to the skin and body." Spec. 1:10-12.
Examples of other heat treatments include: hot oil hair treatment, hot wax
treatment for hair removal, or moisturizing treatment. Id. at 7:20-22.
Claims 23-31 are on appeal, and can be found in the Claims
Appendix. Claim 23 is representative of the claims on appeal, and reads as
follows:
23. A method for application of a treatment material to head
hair of a user comprising:
supplying the treatment material in a closed package
containing the treatment material;
wherein the package is formed of a flexible plastics
material which is impermeable and is impermeably closed or
sealed around all edges to form a fully sealed pouch;
wherein the package includes reverse-printing of
instructions information inside of the plastics material;
the package being formed of a laminate of plastic
materials:
which is foil free;
which has an oxygen transfer rate (OTR) for it to be
heated correctly and consistently in a microwave oven or
in a hot water bath without bursting and without escape of
the treatment material while the package remains sealed;
while the package remains sealed with the treatment
material contained therein,
warming the material in a microwave oven;
forming an opening in the package;
removing the warmed treatment material from the
package;
and applying the removed warmed treatment material
directly onto the head hair of the user.
Claims Appendix 2 ( emphasis added).
2
Appeal2017-008975
Application 14/163,693
The claims stand rejected as follows:
I. Claims 23, 24, 27, 29, and 31 under 35 U.S.C. § I03(a) as
unpatentable over Boratyn, 3 Huffer, 4 and Utley. 5
II. Claims 26, 28, and 30 under 35 U.S.C. § I03(a) as unpatentable over
Boratyn, Huffer, Utley, and Pineda. 6
III. Claim 25 under 35 U.S.C. § I03(a) as unpatentable over Boratyn,
Huffer, Utley, and Lin. 7
Obviousness over Boratyn, Huffer, and Utley
Appellants contend that the combination of references does not teach
or suggest a bag made of flexible plastic material that "is impermeable and is
impermeably closed or sealed around its edges to form a [fully] sealed
pouch." Appeal Br. 6; see Reply Br. 2. Appellants contend that "[a] vented
package is of course NOT sealed." Appeal Br. 6.
The dispositive issue on appeal is whether the preponderance of
evidence of record supports Examiner's conclusion that the combination of
references renders obvious a package made of a flexible plastic material that
is closed or sealed around all edges to form a fully sealed pouch that
contains treatment material.
3 Diane C. Boratyn, US 6,136,329, issued October 24, 2000 ("Boratyn").
4 Scott Huffer, US 2003/0152296 Al, published August 14, 2003 ("Huffer").
5 Wayne S. Utley, US 5,410,857, issued May 2, 1995 ("Utley").
6 Edwin H. Pineda, US 2003/0211177 Al, published November 13, 2003
("Pineda").
7 Irene H. Lin, US 2004/0069157 Al, published April 15, 2004 ("Lin").
3
Appeal2017-008975
Application 14/163,693
Findings of Fact
FF 1. Boratyn teaches the use of an intra-lamellar gel, produced from
marine algae, to enhance the condition of skin and hair. Boratyn
Abstract. In addition to the intra-lamellar gel the composition can also
contain milt. Id. "The isolated milt, typically 4--5 ml, can [be] placed
in any suitable container, such as [] small plastic bags, and is
preferably flooded with oxygen and sealed." Id. at 8: 12-14. To avoid
deterioration the milt can be frozen and thawed by microwaving. Id. at
8:23-26.
FF2. Huffer teaches a plastic bag with a seal and vent. Figure 1, reproduced
below, shows such a bag.
Figure 1, shows container 10 that includes two rectangular panels (12,
14) that are secured to gather to form bag 16. Huffer ,r 19. The panels
have an upper edge that allows access to the bags interior. Id. The
materials that make up panels 12 and 14 need to be sufficiently
flexible and capable of withstanding conditions imposed by
microwave cooking of the contained substance. Id. ,r 20. Valve
4
Appeal2017-008975
Application 14/163,693
assembly 46 includes vent member 48. Id. ,r 27. The vent member
includes an
internal passage 54 of the venting member 48 provides an exit
flow path for discharge of a pressurized fluid from the interior
of the bag 16 to an exterior location .... The vent member 48 of
valve assembly 46 therefore prevents bursting of the bag 16 by
providing for venting of pressurized fluid from the bag interior.
Id. ,I 28.
Principle of Law
A prima facie case for obviousness "requires a suggestion of all
limitations in a claim," CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Examiner finds that Boratyn teaches treating hair with a material that
may be placed in a plastic bag. Ans. 5. Examiner acknowledges that
"Boratyn does not teach limitations to the plastic bag such as the oxygen
transfer rate or reverse printing ( a way to label the bag with instructions)."
Id. Examiner looks to the teachings of Huffer to disclose a bag that remains
sealed while being heated. Id., see also id. at 6 ("Huffer provides for a way
of venting the sealed bag so that microwave heating can be accomplished
without having pressure build up in the bag (which would cause it to
explode).").
Appellants contend that "[a] vented package is of course NOT
sealed." Appeal Br. 6.
5
Appeal2017-008975
Application 14/163,693
We find Appellants' argument persuasive. A bag that has a valve
which allows for the escape of pressurized air or fluids in order to prevent
the bag from exploding, reasonably suggests that the bag itself is not fully
sealed because fluid can exit from inside the bag. See FF2.
Examiner takes the position that "[t]he instant claim does not indicate
that a valve or another structure cannot be present for the release of
pressurized fluids while allowing the bag to remain sealed during heating. It
is noted that the bag of Huffer will not burst during heating." Ans. 11. Here,
the reason that Huffer' s bag will not burst during microwave heating is that
it contains a vent member. FF2. The vent member includes an internal
passage and provides an exit flow path for discharge of pressurized air or
pressurized fluid from the interior of the bag to an exterior location and
thereby prevents the bag from bursting. FF2. Although we agree with
Examiner's position that Huffer' s bag is designed to prevent bursting if the
bag is heated in a microwave, this advantage comes with the required design
of having a vent which is an opening between the interior and exterior of the
bag.
The claim, however, recites a package that "is impermeably closed or
sealed around all edges to form a fully sealed pouch." The Specification
does not provide a definition for "impermeable," but the ordinary and
customary meaning of impermeable 8 is "not permitting passage ( as of a
fluid) through its substance." Therefore, a reasonable interpretation of
something that is impermeably closed would suggest that it does not allow
8 Definition of "impermeable," https://www.merriam-
webster.com/dictionary/impermeable, last visited January 16, 2019.
6
Appeal2017-008975
Application 14/163,693
fluid to pass. Huffer's bag does not meet this impermeable limitation
because fluid can escape through the vent. FF2.
Even if we were to interpret that the claim limitation of "sealed
around all edges to form a fully sealed pouch" could encompass a bag that
includes a vent as suggest by Examiner, the bag disclosed in Huffer still
would not meet the claim limitation "which has an oxygen transfer rate
(OTR) for it to be heated correctly and consistently in a microwave oven or
in a hot water bath without bursting and without escape of the treatment
material while the package remains sealed" as claimed. Here, Huffer's vent
clearly is taught to release fluid in the event pressure inside the bad gets too
high. FF2. However, the claim does not allow for the escape of treatment
material while the package remains sealed, and Huffer' s bag does not meet
this limitation. FF2.
The preponderance of the evidence of record does not support
Examiner's conclusion that the combination of Boratyn, Huffer, and Utley
discloses a method having all limitations of independent claim 23 and
dependent claims thereto. We thus reverse the rejections under 35 U.S.C.
§ I03(a) that rely on the teachings ofBoratyn, Huffer, and Utley.
SUMMARY
We reverse the rejection of all claims.
REVERSED
7