Ex Parte DiNardo et al

Patent Trial and Appeal Board

Mar 16, 2017

13420670 (P.T.A.B. Mar. 16, 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.
13/420,670 03/15/2012 Joseph C. DiNardo 812674 2472
95683 7590 03/20/2017
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
PERREIRA, MELISSA JEAN
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. DiNARDO and JOSEPH A. LEWIS II1
Appeal 2015-003155
Application 13/420,670
Technology Center 1600
Before JOHN G. NEW, JOHN E. SCHNEIDER and TIMOTHY G.
MAJORS, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 1—15 which stand rejected as
1 Appellants state the real party-in-interest is PCR Technology Holdings,
LC. App. Br. 1.
Appeal 2015-003155
Application 13/420,670
unpatentable under 35U.S.C. §101 as being directed to unpatentable
subject matter.
Claims 1—15 also stand rejected as unpatentable under 35 U.S.C.
§ 102(b) as being anticipated by Siddiqui et al. (US 6,015,548, January 18,
2000) (“Siddiqui”).
Claims 1—15 also stand rejected as unpatentable under 35 U.S.C.
§ 102(b) as being anticipated by Neudecker et al. (US 6,756,045 Bl, June
29, 2004) (“Neudecker”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to method for informing a purchaser
of a topical skin care preparation of an oxidative stress protective capacity,
relative to human skin, of a first antioxidative substance included in the
topical skin care preparation. Abstract.
GROUPING OF CLAIMS
Claim 1 is representative and recites:
Claim 1: A method for informing a purchaser of a
topical skin care preparation of an oxidative stress protective
capacity, relative to human skin, of a first antioxidative substance
included in the topical skin care preparation, the method
comprising:
providing the topical skin care preparation to the
purchaser, the topical skin care preparation including the first
antioxidative substance; and
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providing information to the purchaser including a total
score indicative of an oxidative stress protective capacity,
relative to human skin, of the first antioxidative substance, the
total score being based on a combination of a first score
representative of a performance of the first antioxidative
substance in a first antioxidative efficacy test and a second score
representative of a performance of the first antioxidative
substance in a second antioxidative efficacy test.
App. Br. 10.
ISSUE AND ANALYSIS
We do not agree with the Examiner’s reasoning and conclusion that
the claims are both directed to nonstatutory subject matter. However, we
agree with, and adopt, the Examiner’s reasoning and conclusion that the
claims are anticipated by the cited prior art references. We address
Appellants’ arguments below.
A. Rejection of the claims as being directed to nonstatutory subject matter
Issue
Appellants argue the Examiner erred in finding the claims on appeal
are directed to an abstract idea, and are therefore directed to nonstatutory
subject matter. App. Br. 4.
Analysis
Appellants argue that the claims are not directed to an abstract idea at
all, but rather are limited to a particular practical application and are
therefore eligible for patent protection even if the claims could be
interpreted to include some unidentified abstract idea. App Br. 4.
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Application 13/420,670
Appellants contend that the claims on appeal are directed to
providing a particular product, i.e., a topical skin care preparation, to a
consumer and providing specific, practical, real-world information
concerning that topical skin care preparation to the consumer, viz., the
performance of either the preparation, or an antioxidative substance within
the preparation, in particular tests. Id. at 4—5. According to Appellants, the
information is further specific in that it is a total score based on a
combination of scores from different tests. Id. at 5. Appellants contend
that the claims therefore do not preclude or preempt all possible ways of
providing a topical skin care preparation to a consumer, nor do they
preclude or preempt all possible ways of providing information about or
characterizing the preparation or an antioxidative substance contained
therein. Id.
The Examiner responds that, taken as a whole, the claims on appeal
are directed to an abstract idea. Ans. 4. The Examiner finds the claims do
not have a practical application but are instead directed only to instructing a
person or conveying an idea or information and having the preparation
available to the purchaser. Id. at 5. The Examiner finds the topical skin
care preparation comprises only a first antioxidative substance, however,
the claimed method does not provide any described steps for preparing a
topical skin care preparation; nor does it determine the oxidative stress
capacity by any antioxidative efficacy tests nor does it disclose the
administration of a topical skin care preparation to the purchaser. Id.
Rather, the Examiner finds, the method teaches only that the topical skin
care preparation and information is available to a purchaser. Id.
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Application 13/420,670
We are not persuaded by the Examiner’s findings. In conducting our
analysis of patentability under 35 U.S.C. § 101, we consider the claims
according to the framework set forth by the Supreme Court in Alice and
Mayo,2 and the two-part test set forth by the Director in the 2014 Interim
Guidance on Patent Subject Matter Eligibility (79(241) Fed Reg. 74618—33
(December 16, 2014)) (the “Interim Guidance) for claims involving abstract
ideas. See Interim Guidance 74620—24. First, we determine whether the
claims on appeal are directed to a statutory category. In this instance, we
conclude that they are: the claims are directed to a method or process.
Next, we determine whether the claims are directed to a judicially-
created exception, in this instance, an abstract idea. We are not persuaded
that they are. Claim 1 recites the method step of “providing the topical skin
care preparation to the purchaser, the topical skin care preparation including
the first antioxidative substance” which is not, in itself, an abstract idea.
Abstract ideas have been identified by the courts as including, by way of
example, fundamental economic practices, certain methods of organizing
human activities, an “idea of itself,” and mathematical relationships or
formulae. See Interim Guidance 74622 (citing Alice Corp. Pty. Ltd. v. CIS
Bank Int’l, 134 S. Ct. 2347, 2355—56 (2014). Examples of such abstract
ideas have included mitigating settlement risk, hedging, creating a
contractual relationship, using advertising as an exchange or currency,
processing information through a clearinghouse, comparing new and stored
information and using rules to identify options, using categories to
2 Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014);
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012).
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organize, store and transmit information, organizing information through
mathematical correlations, managing a game of bingo, the Arrhenius
equation for calculating the cure time of rubber, a formula for updating
alarm limits, a mathematical formula relating to standing wave phenomena,
and a mathematical procedure for converting one form of numerical
representation to another. See Interim Guidance 74622 (citing cases).
We find that the step of “providing the topical skin care preparation
to the purchaser, the topical skin care preparation including the first
antioxidative substance”3 is not analogous to any of these examples, but
rather represents a concrete procedural step, employing a tangible
preparation and ingredient. The limitation further describes a concrete
method step of providing (or selling) the skin care preparation to a
purchaser. The Examiner has not persuasively explained why, when this
step is considered, the claim is drawn to an abstract idea. We therefore
reverse the Examiner’s rejection of the claims.
B. Rejection of the claims as being anticipated by Siddiqui
Issue
Appellants argue that the Examiner erred in finding that Siddiqui
discloses providing information to a purchaser including a total score that is
based on a combination of a first score that is representative of a
performance of a substance or preparation in a first antioxidative efficacy
test and a second score that is representative of a performance of the
3 This limitation appears in both the independent claims on appeal (claims 1
and 8).
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substance or preparation in a second antioxidative efficacy test, as required
by claim 1. App. Br. 6.
Analysis
Appellants argue Siddiqui discloses only combinations of
antioxidative substances and sunscreen agents that have a synergistic effect.
App. Br. 6 (citing Siddiqui Abstr.). According to Appellants, Siddiqui is
silent with respect to combining the scores from different tests to provide a
total score indicative of antioxidative stress protective capacity, a fact
Appellants allege is admitted by the Examiner. Id.
The Examiner responds that the claims on appeal do not disclose any
methods steps of preparing a topical skin care preparation, do not determine
the oxidative stress protective capacity and do not disclose combining the
scores from different tests to provide a total score indicative of
antioxidative stress protective capacity. Ans. 6. Rather, the Examiner
finds, the claims are drawn to a topical skin care preparation comprising
antioxidative substances and information. Id. The Examiner finds the
disputed limitation concerning the content of the information cannot be
accorded any patentable weight, because there are no steps to perform the
antioxidative efficacy tests, determine how the score is obtained or
represented (e.g., in units). Id. at 7.
The Examiner further finds Siddiqui discloses an available skin
preparation that comprises a synergistic combination of one or more
antioxidants and sunscreen agents to provide superior protection of the skin
against harmful effects of ultraviolet radiation. Ans. 7. The Examiner finds
the one or more antioxidants of Siddiqui anticipate the first antioxidative
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substance of the instant claims. Id. The Examiner also finds Siddiqui
discloses information, such as that the skin preparation provides superior
protection of the skin against harm fill effects of ultraviolet radiation. Id.
Appellants reply that the limitations should be accorded patentable
weight because they require that the recited total score be: (1) indicative of
an oxidative stress protective capacity, relative to human skin; and (2)
based on a combination of a first score representative of a performance of
the first antioxidative substance in a first antioxidative efficacy test and a
second score representative of a performance of the first antioxidative
substance in a second antioxidative efficacy test. Reply Br. 5. Appellants
argue that these limitations must be considered in the Examiner’s Section
102 analysis.
We are not persuaded by Appellants’ arguments. The “providing
information” limitation of claim 1 relates to providing information to a
purchaser of the product, a topical skin care preparation, concerning the
oxidative stress protective capacity of that product. We find that such
information, regardless of how communicated to the purchaser, constitutes
nonfunctional descriptive material, and is accorded no patentable weight.
Our reviewing court, and our own precedent, have held that when
descriptive material:
is not functionally related to the substrate, the [descriptive
material] will not distinguish the invention from the prior art in
terms of patentability. Although the [descriptive material] must
be considered, in that situation it may not be entitled to
patentable weight .... The critical question is whether there
exists any new and unobvious functional relationship between
the printed matter and the substrate.
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In re Nehls, 88 U.S.P.Q.2d 1883, Appeal 2007-1823, 2008 WL 258370, at
*7 (B.P.A.I., 2008) (precedential) (quoting In re Gulack, 703 F.2d 1381,
1385—86 (Fed. Cir. 1983)) (emphasis added).
In the appeal at bar, we find there is no such new or nonobvious
functional relationship. Rather, the descriptive material merely describes to
the purchaser certain properties that are already present in the topical skin
care preparation, i.e., the oxidative stress capacity, as defined by a
combination of two scores based on unspecified performance measures.
We do not find that this information is necessary to the function of the
claimed method of providing the topical skin care product, including a first
antioxidative substance, to the purchaser. Rather, it merely provides
information about the product.
By contrast, in Gulack, the Federal Circuit held that:
The looped structure of the substrate and the particular digits
printed on it interrelated to give the claimed product a property
it would not have had if either the structure or the digits were
changed. Therefore, the content of the printed matter was held
to produce a nonobvious difference between the claimed product
and the prior art.
Nehls, 2008 WL 258370, at *7 (citing Gulack, 703 F.2d at 1386) (emphasis
added). In this instance, providing information about antioxidative stress
protection, does not change or alter the functional properties of the topical
skin care preparation: it merely describes the properties already inherent in
the composition. As such, we find that this limitation constitutes
nonfunctional descriptive material, and we accord it no patentable weight.
Appellants do not dispute the Examiner’s finding that Siddiqui
discloses providing a topical skin care treatment with oxidative stress
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protective capacity, relative to human skin. Because we find that the
remaining limitations of the claims have no patentable weight, we
consequently affirm the Examiner’s rejection of the claims.
C. Rejection of the claims as being anticipated by Neudecker
Appellants advance an essentially identical argument with respect to
Neudecker as presented for Siddiqui. App. Br. 7—8. Appellants do not
dispute that Neudecker discloses providing a topical skin care treatment
with oxidative stress protective capacity, but argue that the subsequent
limitation of “providing information to the purchaser including a total score
indicative of an oxidative stress protective capacity” distinguishes the
claims from Neudecker. For the reasons related above, we find that claim
language that allegedly distinguishes over Neudecker comprises
nonfunctional descriptive matter and we accord that limitation no patentable
weight. We consequently affirm the Examiner’s rejection on this ground.
DECISION
The Examiner’s rejection of claims 1—15 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 1—15 under 35 U.S.C. § 102(b) 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)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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