Ex Parte Farchione

Board of Patent Appeals and Interferences

Jan 25, 2010

09910520 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAMUEL FARCHIONE
____________

Appeal 2009-004108
Application 09/910,520
Technology Center 3700
____________

Decided: January 25, 2010
____________

Before LINDA E. HORNER, MICHAEL W. O'NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Samuel Farchione (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-7, 11-14, 16-23, and 27-
40. Claims 8-10, 15, 24-26, and 41-43 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is a method for determining appropriate
colors of makeup and clothing for use by an individual. Spec. 1:9-10.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method for selecting fashion information for an
individual comprising the steps of:
providing a style database including complimentary
fashion information having cosmetic data and physical
characteristic data;
providing a personal characteristic database adapted to
receive physical characteristic data for an individual;
providing an input device operable to capture an image of
the individual, the image comprising data of at least two
physical characteristics about the individual;
capturing with the input device an image of the
individual comprising data for at least two physical
characteristics of the individual;
receiving in the personal characteristic database physical
characteristic data for at least two physical characteristics for
the individual;
comparing said physical characteristic data for the
individual with the style database to identify complimentary
fashion selections that are appropriate for the individual based
upon the physical characteristic data received in the personal
characteristic database; and
generating a hard copy of a data set that includes
complimentary fashion selections that are appropriate for the
individual based upon the physical characteristic data received
in the personal characteristic database.

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THE EVIDENCE
The Examiner relies upon the following evidence:
Nakamura
Thies
MacFarlane
Gourtou
US 4,987,552
US 5,206,804
US 5,311,293
US 5,478,238
Jan. 22, 1991
Apr. 27, 1993
May 10, 1994
Dec. 26, 1995

THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 1-7, 14, 16, 17, 20, 22, 23, 27, 32-34, 37, 39, and
40 under 35 U.S.C. § 103(a) as unpatentable over Gourtou and
Nakamura.
2. Rejection of claims 12, 13, 18, 19, 28-30, 35, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Gourtou, Nakamura, and MacFarlane.
3. Rejection of claims 11, 21, 31, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Gourtou, Nakamura, MacFarlane, and Thies.1

ISSUES
The Examiner found Gourtou discloses providing an input device (a
video camera) operable to capture to an image of an individual reflective of
one physical characteristic (skin tone) and capturing with that input device
an image of the individual reflective of that physical characteristic. Ans. 5.
The Examiner also found that Nakamura discloses that photographs may
include multiple physical characteristics of an individual. Ans. 5-6. The

1 The heading to this rejection in the Grounds of Rejection section of the
Examiner’s Answer alternatively lists a rejection under 35 U.S.C. § 103(a)
as unpatentable over Gourtou and Nakamura; however, the rejection does
not explain a rejection based on this combination of references alone.
Ans. 4. Therefore, we analyze only the rejection under 35 U.S.C. § 103(a)
as unpatentable over Gourtou, Nakamura, MacFarlane, and Thies.
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Examiner concluded that it would have been obvious to use the camera of
Gourtou to capture an image including at least two physical characteristics,
as taught by Nakamura, “to allow for the viewing/storage of an image
including additional characteristics of the user.” Ans. 6.
Appellant argues claims 1-7, 14, 16, 17, 20, 22, and 23 as a first group
and claims 27, 32-34, 37, 39, and 40 as a second group. App. Br. 5-8. We
select claim 1 as the representative claim for the first group, and claims 2-7,
14, 16, 17, 20, 22, and 23 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009). We select claim 27 as the representative claim for
the second group, and claims 32-34, 37, 39, and 40 stand or fall with claim
27. Id.
Appellant argues that the proposed combination would require the
extra step of manual data entry, and for that reason, the proposed
combination would output information based on predefined definitions of
physical characteristics rather than based on an individual’s actual
characteristics. App. Br. 7. Appellant also contends that neither Gourtou
nor Nakamura discloses use of an input device operable to capture an image
of the individual that includes at least two physical characteristics about the
individual. App. Br. 7-8.
With regards to claim 27, Appellant reiterates the arguments made for
patentability of claim 1 and further argues that the proposed combination
does not disclose “receiving in the style database a requested result for the
individual.” App. Br. 8.
The issues before us include:
Has Appellant shown the Examiner erred in concluding that the
combined teachings of Gourtou and Nakamura would have led one having
ordinary skill in the art to the method of claim 1, because the proposed
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combination would output information based on predefined definitions of
physical characteristics rather than based on an individual’s actual
characteristics?
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Gourtou and Nakamura would have led one having
ordinary skill in the art to the method of claim 1, including the steps of
providing an input device operable to capture an image including at least
two individual physical characteristics, and capturing an image of an
individual including at least two individual physical characteristics?
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Gourtou and Nakamura would have led one having
ordinary skill in the art to the method of claim 27, including the step of
“receiving in the style database a requested result for the individual?”
The Examiner found that MacFarlane teaches use of a physical
characteristic (skin tone) for selecting clothing. Ans. 4. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to modify the method of Gourtou, as modified by Nakamura, to also select
clothing based on physical characteristics as taught by MacFarlane. Ans. 4.
Appellant argues claims 12, 13, 18, 19, 28-30, 35, and 36 as a group.
App. Br. 8-9. We select claim 12 as the representative claim, and claims 13,
18, 19, 28-30, 35, and 36 stand or fall with claim 12. 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant also argues claims 11, 21, 31, and 38 as a
group. App. Br. 8-9. We select claim 11 as the representative claim, and
claims 21, 31, and 38 stand or fall with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant contends that because MacFarlane teaches use
of skin color as the exclusive factor in determining color compatibility for
clothing selections for an individual, that MacFarlane would lead a person of
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ordinary skill in the art in a direction divergent from the path chosen by
Appellant. App. Br. 8-9.
The issues before us include:
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Gourtou, Nakamura, and MacFarlane would have led
one of ordinary skill in the art to the subject matter of claim 12?
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Gourtou, Nakamura, MacFarlane, and Thies would
have led one of ordinary skill in the art to the subject matter of claim 11?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Gourtou discloses a method and an apparatus for determining the
foundation makeup color that substantially reproduces a person’s
natural skin color. Gourtou, col. 1, ll. 7-10. Gourtou discloses an
alternative embodiment that also considers the hair and eye color
of the individual in determining foundation makeup color.
Gourtou, col. 4, ll. 45-57.
2. Gourtou discloses apparatus 10 includes means 12 for measuring
skin color, comprising in one embodiment a video camera 14 and
lighting means 16 for illuminating the skin of the subject.
Gourtou, col. 6, ll. 54-59; fig. 1.
3. Appellant admits that Gourtou discloses capture and input of a
color image of a user’s arm through use of a video camera as an
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input device and that such an image includes a physical
characteristic of the user. App. Br. 6.
4. Nakamura discloses a method and apparatus to produce
instructional makeup videos containing proper makeup methods
personalized to the needs of individual users by consideration of
the individual’s facial characteristics, such as: shape of face,
hairstyle, color of skin, eyes, eyebrows, nose, mouth, etc.
Nakamura, col. 1, ll. 9-13, 47-49. Input concerning characteristics
of individual users can be input via user input data generator 7 into
central processing unit 6 from sources of information such as an
interview, questionnaire, or photographs. Nakamura, col. 2, ll. 47-
56; fig. 1.
5. Nakamura discloses the system includes a memory medium
holding unit connected to a computer containing a plurality of pre-
recorded memory media corresponding to categories of facial
features. Nakamura, col. 1, l. 65 to col. 2, l. 2. The system selects
segments of pre-recorded memory media corresponding to the
input data regarding the facial features of the user, and combines
the segments of pre-recorded memory media to produce an
instructional personal makeup video. Nakamura, col. 2, ll. 2-15.
6. Nakamura discloses that information obtained from the user
includes the wishes and demands of the user for consideration in
producing the instructional video. Nakamura, col. 3, ll. 11-22.
7. Appellant’s Specification does not provide a lexicographic
definition of the phrase “requested result,” or the terms comprising
that phrase, as used in claim 27. Spec. passim.
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8. The word “request” is commonly understood to mean “a want.”
Webster’s New Universal Unabridged Dictionary (Deluxe 2d ed.
1983) (“request,” noun).
9. MacFarlane discloses a method and an instrument for identifying
categories of skin coloration for compatibility with colors of
clothing, makeup, etc. MacFarlane, col. 1, ll. 18-20.
10. MacFarlane describes that the prior art took into account the color
of the person’s complexion, but incorrectly emphasized redness
and “wrongly relied upon eye color, color of hair, and even racial
background to assign color categories to the person.” MacFarlane,
col. 1, ll. 28-34.
11. MacFarlane’s personal color assessment method uses skin color as
the exclusive, determinative factor to arrive at personal color
categorization. MacFarlane, col. 2, ll. 29-38.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
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questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Claim Construction
The preface of claim 1 uses the transitional phrase “comprising” to
refer to the steps of the method, thus claim 1 is open-ended and does not
exclude additional, unrecited elements. See Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art
used in claim language which means that the named elements are essential,
but other elements may be added and still form a construct within the scope
of the claim.).
Claim 1 includes the steps of: (1) providing an input device operable
to capture an image including at least two individual physical characteristics,
(2) capturing an image of an individual including at least two individual
physical characteristics, and (3) receiving in the personal characteristic
database physical characteristic data for at least two individual physical
characteristics. Notably, the physical characteristics that must be received in
the personal characteristic database are not required by the claim to be the
same physical characteristics in the captured image.2
Claim 1 is directed to a method of selecting fashion information for an
individual based upon physical characteristics of the individual. Appellant’s
Specification describes physical characteristic data as: skin color, skin tone,
hair color, eye color, body shape, shape of the face, body proportions. Spec.

2 The step of “receiving in the personal characteristic database” as called for
in claim 1 does not refer to an antecedent basis for the phrase “at least two
physical characteristics for the individual” since the step is not preceded by
the word “the” or “said.”
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2:19-21. Appellant’s Specification describes that physical characteristic data
may be input into the personal characteristic database by an input device
such as a digital camera, or may also be input via a personal computer.
Spec. 3:6-10. More specifically, Appellant’s Specification describes that as
an alternative to the input device 16, a sales agent may manually input
individual physical characteristics into the personal characteristic database
14. Spec. 7:18-20. Neither the claim nor Appellant’s Specification recites a
distinction between predefined physical characteristics and actual physical
characteristics. Spec. passim.
Giving claim 1 the broadest reasonable interpretation consistent with
the Specification, the claimed “physical characteristics” received in the
personal characteristics database may be either actual characteristics or
predefined physical characteristics. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (During examination of a patent
application, pending claims are given “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.
Because claim 1 does not prohibit additional unrecited steps, and
because physical characteristics may be either actual or predetermined, a
person of ordinary skill in the art would interpret claim 1 to permit manual
data entry of predefined physical characteristics. Thus, Appellant’s
argument that the proposed combination does not meet claim 1 because it
requires the extra step of manual data entry of predefined physical
characteristics is not commensurate with the scope of the claim. See App.
Br. 7-8.

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Rejection of claims 1-7, 14, 16, 17, 20, 22, 23, 27, 32-34, 37, 39, and 40
under 35 U.S.C. § 103(a) as unpatentable over Gourtou and Nakamura
We are unpersuaded by Appellant’s assertion that neither reference
discloses use of an input device operable to capture an image of the
individual that includes at least two physical characteristics of the individual.
See App. Br. 5-8. First, the Examiner did not find that either of the
references standing alone discloses this limitation; rather, the Examiner
found that the proposed combination of the references meets this claim
limitation. See Ans. 3-4. Appellant cannot demonstrate nonobviousness by
this individual attack on the references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Second, Appellant’s argument does not demonstrate error in the
Examiner’s conclusion of obviousness. The Examiner found, and we agree,
that Gourtou discloses a method of using multiple physical characteristics
(skin tone, hair color, and eye color) for use in determining foundation
makeup color for that individual, to include providing an input device (a
video camera) which captures an image of an individual reflective of at least
one physical characteristic (skin tone) (Facts 1, 2). Ans. 3-4, 5-6. By
admitting that Gourtou discloses capture and input of a color image of a
user’s arm through use of a video camera as an input device and that such an
image includes a physical characteristic of the user, Appellant has largely
admitted this finding (Fact 3). The Examiner also found, and we agree, that
Nakamura teaches that photographs may provide information regarding
multiple physical characteristics of an individual for use in determining
proper makeup methods for that individual (Facts 4, 5). Ans. 3-4, 5-6. A
person of ordinary skill in the art would have recognized that application of
Nakamura’s technique of obtaining multiple physical characteristics from a
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photograph of a person for use in determining appropriate makeup methods
for that individual to the method of Gourtou would improve Gourtou’s
similar method of using physical characteristic of an individual for
determining appropriate makeup color for that individual. In particular, a
person of ordinary skill in the art would have recognized that Gourtou’s
input device could also be used to capture an image of the individual to
obtain physical characteristics of the individual other than only skin tone.
See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)(“if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
Appellant has failed to demonstrate error in the rejection of claim 1.
Claims 2-7, 14, 16, 17, 20, 22, and 23 fall with claim 1.
Claims 27, 32-34, 37, and 39-40
Independent claim 27 recites the step of “receiving in the style
database a requested result for the individual.” Appellant’s Specification
does not provide a lexicographical definition of “requested result” (Fact 7),
but describes examples of requested results as “highlight eyes, full lips,
highlight cheekbones.” Spec. 5:15-16. “Request” is commonly understood
to mean “a want” (Fact 8). In the context of the claim, the request for the
result is from the individual (user). A person of ordinary skill in the art
would understand this step of claim 27 to require that the style database
receive a desired result from the user.
The Examiner found that Nakamura discloses “receiving in the style
database a requested result for the individual,” and we agree. See Ans. 6.
Nakamura discloses a method and an apparatus that selects segments of pre-
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recorded memory media corresponding to the input data regarding the facial
features and wishes of the user, and combines the segments of pre-recorded
memory media to produce an instructional personal makeup video (Facts 4-
6). By receiving the “wishes” of the user, Nakamura’s system receives the
claimed “requested result” (desired result) of the user. Appellant provided
an insufficient explanation of why Nakamura fails to meet this step, and has
failed to convince us of error by the Examiner in the rejection of claim 27.
Claims 32-34, 37, 39, and 40 fall with claim 27.

Rejection of claims 12, 13, 18, 19, 28-30, 35, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Gourtou, Nakamura, and MacFarlane
Claim 12 depends from claim 1 and adds the further limitation that the
style database further comprises clothing information.
MacFarlane discloses a method and an instrument for identifying
categories of skin coloration for compatibility with colors of clothing,
makeup, etc (Fact 9). MacFarlane discloses that the prior art “wrongly
relied” upon factors other than skin color, and discloses a personal color
assessment method using skin color as the exclusive, determinative factor to
arrive at personal color categorization (Fact 10). In other words,
MacFarlane teaches that when choosing clothing color and/or makeup color,
the determination should be based exclusively upon the physical
characteristic of the individual’s skin color.
Nakamura discloses that when selecting makeup for an individual, the
determination should be based on the facial characteristics of the user (e.g.,
shape of face, skin tone) (Fact 4).
We are not persuaded by Appellant’s teaching away argument.
MacFarlane is directed to selection of colors of makeup and colors of
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clothing (Fact 9). Nakamura is broader in that it is not directed solely to
selection of color, but rather is directed to selection of makeup methods,
which includes more than just color (e.g., where and how to apply the
makeup) (Fact 4). MacFarlane’s teaching that the physical characteristic of
skin color should be the exclusive factor in determining clothing color or
makeup color does not discourage the use of factors other than skin color to
make makeup and clothing selections other than color selections. Further,
the Examiner points out, and we agree, that MacFarlane teaches that a
physical characteristic (i.e. skin color) may be used for selection of
appropriate clothing for an individual. See Ans. 6-7. A person of ordinary
skill in the art, knowing the disclosures of MacFarlane and Nakamura,
would recognize that a physical characteristic, such as skin tone, can be used
to make clothing selections as well as makeup selections.
We fail to see, and Appellant has failed to persuasively explain, how
MacFarlane’s disclosure would have led a person of ordinary skill in the art
in a direction divergent from that chosen by Appellant. Thus, Appellant’s
teaching away argument is not persuasive of error by the Examiner in the
rejection of claim 12. See App. Br. 8-9. Claims 13, 18, 19, 28-30, 35, and
36 fall with claim 12.

Rejection of claims 11, 21, 31, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Gourtou, Nakamura, MacFarlane, and Thies
Claim 11 depends from independent claim 1, and adds the further
limitation that the style database comprises footware information.
Appellant repeats the argument that MacFarlane teaches way from the
proposed combination. App. Br. 8-9. Nothing in claim 11 warrants a
deviation from our conclusion regarding claim 12, supra, that Appellant’s
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argument fails to demonstrate error by the Examiner. Claims 21, 31, and 38
fall with claim 11.

CONCLUSIONS
Appellant has failed to show that the Examiner erred in concluding
that the combined teachings of Gourtou and Nakamura would have led one
having ordinary skill in the art to the method of claim 1, because the
proposed combination would output information based on physical
characteristics.
Appellant has failed to show that the Examiner erred in concluding
that the combined teachings of Gourtou and Nakamura would have led one
having ordinary skill in the art to the method of claim 1, including the steps
of providing an input device operable to capture an image including at least
two individual physical characteristics, and capturing an image of an
individual including at least two individual physical characteristics.
Appellant has failed to show that the Examiner erred in concluding
that the combined teachings of Gourtou and Nakamura would have led one
having ordinary skill in the art to the method of claim 27, including the step
of “receiving in the style database a requested result for the individual.
Appellant has failed to show that the Examiner erred in concluding
that the combined teachings of Gourtou, Nakamura, and MacFarlane would
have led one of ordinary skill in the art to the subject matter of claim 12.
Appellant has failed to show that the Examiner erred in concluding
that the combined teachings of Gourtou, Nakamura, MacFarlane, and Thies
would have led one of ordinary skill in the art to the subject matter of
claim 11.
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DECISION
We AFFIRM the Examiner’s decision to reject claims 1-7, 11-14, 16-
23, and 27-40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Vsh

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