Ex Parte Giacchetti et al

Board of Patent Appeals and Interferences

Apr 25, 2011

10024622 (B.P.A.I. Apr. 25, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/024,622 12/21/2001 Daniela Giacchetti 05725.0975-00 3918
22852 7590 04/26/2011
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
04/26/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIELA GIACCHETTI, FRANCIS PRUCHE, and GILLES
RUBINSTENN
____________________

Appeal 2009-012511
Application 10/024,622
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-25 and 27-61. Claim 26 is canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

THE CLAIMED INVENTION
Appellants claim methods for providing information reflecting the
user of beauty products (Specification 2:4-7). Claim 1 is illustrative of the
claimed subject matter:
1. A method, comprising:
obtaining first information representative of an external
body condition of a subject;
obtaining second information representative of the
external body condition of the subject after the subject uses a
beauty product;
facilitating storage of information reflecting the subject's
usage of the beauty product; and
enabling the subject to view the first information, the
second information, and at least part of the stored information.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hawkins US 2002/0054714 A1 May 9, 2002
Marapane. WO 01/87245 A2 Nov. 22, 2001
Maloney WO 01/18674 A2 Mar. 15, 2001

AS/400 Redbook Softcopy Library, an image of a CD (Document).

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REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1-25 and 27-61 under 35 U.S.C. § 101
as claiming non-statutory subject matter.
The Examiner rejected claims 31-38, 49, 57, 60, and 61 under 35
U.S.C. § 102(e) over Hawkins.
The Examiner rejected claims 1-24, 27-30, 48, and 50-56 under 35
U.S.C. § 103(a) over Hawkins and Marapane.
The Examiner rejected claim 25 under 35 U.S.C. § 103(a) over
Hawkins, Marapane, and AS/400 Redbook Softcopy Library CD Image.
The Examiner rejected claims 39-44, 58, and 59 under 35 U.S.C.
§ 103(a) over Maloney.
The Examiner rejected claims 45-47 under 35 U.S.C. § 103(a) over
Maloney and Marapane.

ISSUES
Did the Examiner err in rejecting claims 1-25 and 27-61 under 35
U.S.C. § 101 as claiming unpatentable subject matter?
Did the Examiner err in rejecting claims 32-38 and 57 under 35
U.S.C. § 102(e) as anticipated by Hawkins for disclosing selecting a product
when Hawkins does not disclose distributing a product to a beauty facility?
Did the Examiner err in rejecting claims 1-4 and 53 under 35 U.S.C.
§ 103(a) over Hawkins and Marapane as disclosing enabling a subject to
view information stored about the subject’s usage of the beauty product,
since Marapane discloses a step at block 130 where a user is asked how
often he/she has colored their hair over the past year?
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Did the Examiner err in rejecting claim 31 under 35 U.S.C. § 102(e)
over Hawkins as disclosing establishing a subject record, since Hawkins
discloses capturing an image of a customer on a computer display?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes that “a ‘beauty facility’ includes one or more
of a retail establishment (e.g. department store), beauty salon, hair salon,
spa, or any other establishment providing beauty products and/or
services.” (Specification 10:1-3).
2. The Specification describes by example that a beauty facility “may offer
products for sale, directly, via catalogs, the Internet or company store.”
(Specification 10:6-7).
3. The Specification does not define or describe the term technology.
4. The ordinary and customary definition of the term technology, as
defined by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “the
practical application of knowledge especially in a particular area.”
5. The Specification uses the term data structure in association with a
computer memory, stating the method “may involve maintaining a
database or storing the images and information in a data structure
contained in a computer’s memory.” (Specification 11:19-20).
6. The Specification does not define or describe the term subject record.
7. The ordinary and customary definition of the term record, as defined by
Merriam Webster’s Collegiate Dictionary (10th ed.), is: “the state or
fact of being recorded.”
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8. Hawkins discloses capturing of an image of a consumer’s body part and
displaying the image on a computer monitor (¶ [0014-0015]).
9. We understand that employers provide instruction to employees when
hired and in the course of employment in the forms of training and
supervision.
10. Hawkins discloses “allowing the consumer to compare results between
the captured and later time captured images” (¶ [0042]).
11. Marapane discloses a computerized method of analyzing hair color,
including a step to receive input from a customer on beauty product
usage at “Block 130 [which] contains a screen which asks the recipient
how often he/she has colored their hair over the past year (see Fig. 4).”
(Page 4 ll. 16-17).
12. Hawkins discloses a method for demonstrating effectiveness of a
cosmetic product on a consumer’s body parts when applied over a period
of time (¶ [0012]).
13. Marapene discloses a method of identifying a hair coloring agent based
upon starting hair conditions of a recipient, embodied in a computer
system (page 4 ll. 1-4).
14. The Examiner found a motivation to combine Hawkins and Marapane
“because it would advantageously allow [one] to estimate [a] subject’s
body (hair or skin) condition and ability to receive another coloring,
thereby provid[ing] the subject with the most suitable product” (Answer
12).
15. The Examiner found Hawkins’s disclosure of “capturing an image of a
body feature [0039] indicates a step of establishing a subject record.”
(Answer 14).
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16. The Examiner found Hawkins discloses a subject maintaining control of
the subject record, because “Hawkins’ teaching that at least one
‘capturing’ step can be conducted at the subject’s home by himself over
the Internet [0053] indicates enabling subject to maintain control of the
subject record.” (Answer 15).
17. The Examiner found Marapane discloses storing information reflecting
subject's behavior between capture of the first image and capture of the
second image by “taking initial color reading of the subject' hair;
applying a beauty product to the subject's hair (behavior step); taking a
second color reading of the subject' hear after said coloring step (page 8,
lines 8-10).” (Answer 15).
18. The Examiner found “Marapane teaches a method and system for
recommending beauty products (hair color agents), said method
including obtaining information regarding how often a subject has
colored his/her hair over the past year (Figs. 1 and 16, item 130; page 4,
lines 16-17).” (Answer 18).
19. The Examiner found Maloney discloses causing a product to be
recommended when the cosmetic usage is inconsistent with usage of
individuals with similar lifestyles, explaining:
… the classifying neural network can continuously update its
decision by incorporating consumer feedback to provide a
customized beauty product to the consumer (page 9, lines 12-
32; page 10, lines 8-14), thereby suggesting providing the
customized product when subject's cosmetic usage is
inconsistent with the cosmetic usage and lifestyles of a trend of
use of at least some of the plurality of individuals.
(Answer 19).
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20. Maloney discloses methods to provide customized products and services
to consumers (Page 1 ll. 5-8).
21. Maloney discloses embodiments for beauty care products and services
(Pages 6-7).
22. The Examiner found a motivation to combine Maloney and Marapane
“because it would advantageously allow [one] to estimate subject's body
(hair or skin) condition and ability to receive another coloring, thereby
provide the subject with most suitable product (Marapane; page 4, lines
17-18).” (Answer 18).
23. The Examiner found the AS/400 reference discloses a visual marking
identifying a distributor in the form of an image of an IBM logo on an
IBM-distributed compact disk (Answer 20).

ANALYSIS

Rejections under 35 U.S.C. § 101
We affirm the rejection of independent claims 1, 31, 32, 49, and 50,
and reverse as to claims 5, 39, 44, 45, 46, and 48. Claims 2-4, 33-38, 51-53,
57, 60 and 61 fall with their respective independent claims1. See,
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue that claims 1-25 and 27-61 “provide tangible
results.” (Appeal Br. 16). Examiner’s and Appellants’ arguments are

1 The Appellants do not provide a substantive argument as to the separate
patentability under Section 101 of claims 2-4, 53 that depend from claim 1,
claims 33-38 and 57 that depend from claim 32, claims 60 and 61 that
depend from claim 49, and claims 51 and 52 that depend from claim 50.
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directed to the “concrete, useful, and tangible test” to determine patentable
subject matter.
However, the Federal Circuit has determined the “useful, concrete and
tangible result” test is inadequate. In re Bilski, 545 F.3 943, 959-960 (Fed.
Cir. 2008) (en banc), aff'd but criticized on other grounds Bilski v. Kappos,
130 S. Ct. 3219 (2010).
Instead, the Supreme Court recently held that claims that explained
the basic concept of an activity (hedging) would allow the Appellant to pre-
empt the use of this approach in all fields, and would effectively grant a
monopoly over an abstract idea, and such abstract ideas are not patent
eligible subject matter. Bilski v. Kappos, 130 S.Ct. 3218, 3231 (June 2010).
Thus, the Court returned to an analysis centered to abstract ideas are not
patent eligible. Id. at 3225. We apply the abstract idea logic as follows.

Independent claims 1, 31, 32, 49, and 50
We find that the limitations of claim 1 are abstract, in that a human
could become aware of, and remember, information about a body condition
at two points in time as well as about the usage of a beauty product during
the interval, then remembering through the mind’s eye the three items of
information. Even if the information was written down and viewed visually,
this writing would represent insignificant extra-solution activity. Therefore,
we find claim 1 to describe abstract, non-patentable eligible subject matter.
Similarly, claim 31 recites, in pertinent part, a method of recording
beauty information comprising: capturing, through a beauty facility, at least
a first image of an external condition of a subject;… prescribing a cosmetic
product to the subject for treating the external condition ….
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The analysis of claim 31 tracks closely with that of claim 1, but claim
31 also includes the concept of a beauty facility, as well as a prescribing
step. Since a human can perform the entire process anywhere, and a beauty
facility is any provider of beauty products or services (FF 1, 2), we do not
credit the beauty facility portion of the claim impacting the analysis under
Section 101. Further, we interpret the prescribing step to represent a
human’s decision to use a product, thus the prescribing is an abstract mental
process. Therefore, we find claim 31, like claim 1, describes abstract,
unpatentable subject matter.
Claim 32 recites, in pertinent part, a method comprising: providing a
beauty facility with technology for capturing external body condition images
of a customer; distributing at least one cosmetic product to the beauty
facility; instructing the beauty facility ….
The Specification does not define or describe what technology is
required to be provided for capturing images, so we rely on the ordinary and
customary meaning as “the practical application of knowledge especially in
a particular area,” (FF 3, 4) and interpret that technology includes providing
knowledge in the form of human memory. We also find instructing to be an
abstract mental process, and find the distributing of products to be
insignificant extra-solution activity, because merely placing products into
the inventory of a distributor or retailer is a pervasive aspect of selling
products. Therefore, we find claim 32 describes abstract, unpatentable
subject matter.
Claim 49 recites a method comprising: providing information about
beauty products; providing instructions for storage …; analyzing …; and
prescribing ….
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We find that claim 49 recites an abstract mental method, because each
step may be accomplished by a person thinking or speaking. In addition, we
find the information and instructions the claim is providing are non-
functional descriptive material, because their content does not affect the
process. This is because the process does not require performing the storage
of information, but only requires providing instructions for storage.
We find that claim 50, like claim 49, recites an abstract process,
because its steps can be accomplished by a person thinking or speaking and
then making a record through memories.
Independent claims 5, 39, 44-46, and 48
We find claims 5, 39, 44-46, and 48 claim patentable subject matter,
for the following reasons. We find claims 5 and 48 are not abstract, because
they require electronic capture of a first image, and thus cannot be
performed entirely in the human mind. We find claims 39 and 44 are not
abstract because they require a transportable medium to be used for storing,
reading, and updating information. Claims 45 and 46 require a data
structure to enable recording and updating information. We interpret data
structure to require the use of a computer, because it is only described in the
Specification in association with computer memory (FF 5). Therefore, we
find claims 45 and 46 are not abstract, because they require the use of an
electronic computer.
Since claims 6-25, 27-30, and 54-56 depend from claim 5, claims 40-
43 and 58 depend from claim 39, claim 59 depends from claim 44, and claim
47 depends from claim 46, and since we cannot sustain the rejection of
claims 5, 39, 44, and 46, the rejection of claims 6-26, 27-30, 40-43, 47, 54-
56, 58, and 59 under 35 U.S.C. § 101 cannot be sustained.
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Rejections under 35 U.S.C. § 102(e)
Independent Claim 31
Independent claim 31 recites, in pertinent part, establishing a subject
record, the record including the first image, and associating the at least one
second image with the subject record.
Appellants argue that Hawkins fails to disclose the establishing
limitation, because “capturing an image of a body feature does not, by itself,
establish a subject record.” (Appeal Br. 19).
We find that the Specification does not define or describe the term
subject record (FF 6), so we rely on the ordinary and customary meaning,
which is: the state or fact of being recorded about a subject (FF 7). We find
Hawkins discloses the fact of a subject being recorded by capturing and
displaying a person’s image on a computer monitor (FF 8), because the
capture of an image on a computer is a form of recording.
Appellants further argue, “capturing a further image of the body
feature does not, by itself, associate at least one second image with a subject
record.” (Appeal Br. 19).
We are not persuaded by Appellants because Hawkins discloses that
the consumer may “compare results between the captured and later time
captured images” (FF 6), and thus the associating is accomplished by having
all the images of the same consumer displayed and compared together.
Appellants finally argue “Hawkins fails to even mention a subject
record, and thus cannot teach ‘providing [a] subject with viewing access to
[a] subject record,’ as recited in claim 31.” (Appeal Br. 19-20).
We are not persuaded by Appellants’ argument, because we find that
Hawkins discloses providing a subject with viewing access to a subject
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record because allowing a consumer to view and compare the captured
images of that consumer provides viewing access to the subject record,
which is the accumulation of the two images.
Claims 32-38 and 57
Independent claim 32 recites, in pertinent part, distributing at least
one cosmetic product to the beauty facility; instructing the beauty facility to
capture images of the external body condition before and after application
of the at least one cosmetic product; instructing the beauty facility to display
to the customer the before and after images so that the customer may be
provided with a visual indication of progress.
Appellants argue there is “no factual basis and technical reasoning to
support the allegation that use of Hawkins's method indicates instructing a
business entity to perform the claimed method.” (Appeal Br. 21).
We are not persuaded by this argument. We understand that
employees have instruction as part of employment, in the form of training
and supervision (FF 9), and therefore find that Hawkins inherently discloses
instructing.
Appellants argue, Hawkins disclosure of “‘[s]electing the cosmetic
product at the sales counter’ does not demonstrate that the recitation of
‘distributing at least one cosmetic product to the beauty facility’ is
necessarily present in Hawkins. For example, ‘[s]electing the cosmetic
product at the sales counter’ may be done without ‘distributing at least one
cosmetic product to the beauty facility.’” (Appeal Br. 21).
Here, we agree with Appellants, because we interpret that the claim
requires a seller to have received a physical product, and it is possible that a
seller can select a product without having it physically distributed to the
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seller. We therefore cannot sustain the rejection as to this limitation, since it
is not disclosed or inherent in Hawkins. Since claims 33-38 and 57 depend
from claim 32, and since we cannot sustain the rejection of claim 32, the
rejection of claims 33-38 and 57 likewise cannot be sustained.

Claims 49, 60, and 61
Independent claim 49 recites, in pertinent part, analyzing the first and
second information to determine an extent of differences that occurred in the
body condition between the first and second time frames.
Appellants argue, “Although Hawkins at paragraph [0042] mentions
allowing a consumer to compare results between images, this is not the same
as and does not constitute ‘analyzing first and second information to
determine an extent of differences that occurred in the body condition,’ as
recited in independent claim 49.”
We disagree with Appellants, because we interpret that analyzing to
determine an extent of differences broadly encompasses many techniques,
including the use of comparison, and therefore the claim language is met by
the comparison that Hawkins discloses (FF 10).
Appellants further argue:
[The] predicted effects of a cosmetic product treatment, as
disclosed by Hawkins at paragraph [053], is not the same as and
does not constitute prescribing at least one beauty product
based on the extent of determined differences that occurred in
the body condition between the first and second time frames, as
claimed.
(Appeal Br. 22).
We are not persuaded, because we find the claim does not require the
first and second time frames to both be in the past. Therefore, Hawkins’
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comparison of virtual time frames (FF 10) meets the claim language of
determining an extent of differences between the two time frames.

Rejections under 35 U.S.C. § 103(a)
Claims 1-4 and 53
Appellants argue that Hawkins and Marapane do not disclose
“‘enabling [a] subject to view ... first information, ... second information,
and at least part of the stored information’ (emphasis added).” (Appeal Br.
24).
We are not persuaded, because we find that Marapane discloses a step
at block 130 where a user is asked how often he/she has colored their hair
over the past year (FF 11). We find that one of ordinary skill in the art
would recognize this step to mean that the user’s response is displayed on
the screen and stored by the program for later use, thus meeting the claim
language.
Appellants also argue there is no motivation to combine Hawkins and
Marapane except through hindsight (Appeal Br. 24-25).
We are not persuaded of error because the prior art references applied
by the Examiner share a common field of cosmetic product determination
(FF 12, 13), and the Examiner’s reconstruction of references is based on a
reasonable explanation (FF 14).
Claims 5-24, 27-30, and 54-56
Appellants argue claims 5-24, 27-30, and 54-56 with reference to the
arguments set forth at claim 1 (Appeal Br. 26). We sustain the rejections of
these claims for the same reasons as set forth above at claim 1.
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Claim 48
Appellants argue claim 48 with reference to the arguments set forth at
claim 1 (Appeal Br. 27). We sustain the rejections of this claim for the same
reasons as set forth above at claim 1.
Claims 50-52
Independent claim 50 recites a method including, in pertinent part,
providing instructions for storage of third information relating to behavior
of a subject between first and second time frames, and establishing a subject
record, the record including the first, second and third information, wherein
the subject is enabled to maintain control of the subject record.
Appellants argue that the Examiner’s cite to Marapane “is not the
same as and does not suggest providing instructions for storage of third
information relating to behavior of a subject between first and second time
frames, and establishing a subject record, the record including the first,
second and third information, wherein the subject is enabled to maintain
control of the subject record.” (Appeal Br. 28).
Appellants’ argument does no more than challenge that the Examiner
failed to make a finding for the involved claim requirements. See, In re
Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See also In re
Wiseman, 596 F.2d 1019, 1022 (CCPA 1979)
Notwithstanding, Appellants’ argument is unpersuasive, because the
Examiner found Hawkins discloses establishing a subject record (FF 15)
and enabling a subject to maintain control (FF 16), and found Marapane
discloses providing instructions for storage of information relating to
behavior of a subject between the first and second time frames (FF 17),
which we confirm (FF 8, 10).
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Claims 45-47
Independent claim 45 recites, in pertinent part, enabling the data
structure to maintain a historical record of at least some of the recorded
cosmetic product usage information and personal information; and causing
at least one product to be recommended to the individual, wherein the at
least one product recommendation is generated using at least a portion of
the historical record.
Appellants argue the Examiner’s cite to Maloney “is not the same as
and does not suggest ‘causing at least one product to be recommended to the
individual, wherein the at least one product recommendation is generated
using at least a portion of the historical record,’ as recited in independent
claim 45.” (Appeal Br. 30). Appellants further argue, Marapane’s
disclosure “is not the same as and does not suggest ‘enabling the data
structure to maintain a historical record of at least some of the recorded
cosmetic product usage information and personal information,’ as recited in
independent claim 45.” (Appeal Br. 30).
Appellants’ arguments do no more than challenge that the Examiner
failed to make a finding for the involved claim requirements. See, id.
Notwithstanding, Appellants’ arguments are unpersuasive, because
the Examiner found Marapane discloses maintaining a historical record of
product usage and personal information and generating a product
recommendation using the historical record (FF 17, 18).
Independent claim 46 recites, in pertinent part, causing, when the
subject's cosmetic usage is inconsistent with the cosmetic usage of
individual's with lifestyles similar to the subject's lifestyle, at least one
product to be recommended to the subject.
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Appellants argue the Examiner’s cite to Maloney “is not the same as
and does not suggest ‘causing, when the subject's cosmetic usage is
inconsistent with the cosmetic usage of individual's with lifestyles similar to
the subject's lifestyle, at least one product to be recommended to the subject’
(emphasis added).” (Appeal Br. 33).
Appellants’ argument does no more than challenge that the Examiner
failed to make a finding for the involved claim requirements. See, id.
Notwithstanding, Appellants’ arguments are unpersuasive, because
the Examiner found Maloney discloses making a product recommendation
with subject’s usage of a cosmetic product is inconsistent with usage of
individuals with similar lifestyles (FF 19).
Appellants also argue a lack of motivation to combine Maloney and
Marapane (Appeal Br. 31) except through hindsight (Appeal Br. 32).
We are not persuaded of error because the prior art references applied
by the Examiner share a common field of cosmetic product determination
(FF 13, 20, 21), and the Examiner’s reconstruction of references is based on
a valid explanation (FF 22).
Claim 25
Dependent claim 25 recites, [t]he method of claim 24, wherein the
recordable media includes a visible marking identifying at least the
distributor.
Appellants argue Hawkins and Marapane fail to disclose the elements
of claim 5, from which claim 25 depends. We affirm the rejection of claim
25 based on the reasons set forth at claim 5, above.
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Appellants also argue lack of motivation to combine because the
motivation “is too broad and vague, and not explicit in the references.”
(Appeal Br. 36).
To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Appellants finally argue, “[b]ecause the problem to be solved is
technical in nature, the motivation to combine prior art references must also
be technical, and not to achieve a commercial success, as alleged by the
Examiner.” (Appeal Br. 36-37).
As stated above, we apply KSR in our analysis of obviousness, and
according to KSR we need not look to the references themselves for
motivation to combine. Id. The Examiner found Hawkins and Marapane
disclose the limitations of the claims from which claim 25 depends, and
found the AS/400 reference discloses a visual marking identifying a
manufacturer/distributor in the form of an IBM® Corporation trademark
logo on an IBM®-distributed compact disk (FF 23). We find one of
ordinary skill in the art would recognize that a compact disk distributed to a
consumer that includes a marking of its source is a well-known means to
mark a product, and combining this with the method disclosed by Hawkins
and Marapane that approach common problems in recommending products
to consumers (FF 11, 12) is rational. We therefore conclude that the
Examiner’s rationale based on commercial success is reflective of a
technologically-sound combination.
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Claims 39-44, 58, and 59
Independent claim 39 recites a method, comprising, enabling a
subject to record personal beauty information on a transportable medium;
enabling a plurality of beauty facilities to read the information on the
transportable medium, and to update the information when the subject visits
one or more of the plurality of beauty facilities; and enabling the personal
information to be updated by the subject at a location remote from a beauty
facility.
Appellants argue the Examiner’s findings on motivation to combine
“are completely conclusory and unsupported by any evidence on the record.”
(Appeal Br. 38).
To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Appellants’ arguments are also not persuasive because the Examiner
found that Maloney does not explicitly teach that computer-readable media
is transportable but found it old and well known that computer media is
transportable, and found that Maloney discloses “floppy diskettes, compact
disks, and laser discs as a computer-readable storage medium (page 13, lines
31-32).” (Answer 21). We find the Examiner’s rationale is reasonable
based on Maloney’s disclosure of using computer-readable media for storing
information and the knowledge of one of ordinary skill that such media is
transportable.
Appellants also argue, “the Examiner failed to establish that claim 39,
as a whole including ‘enabling a subject to record personal beauty
information on a transportable medium’ and ‘enabling a plurality of beauty
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facilities to read the information on the transportable medium, and to update
the information when the subject visits one or more of the plurality of beauty
facilities,’ would have been obvious” except through hindsight. (Appeal Br.
38-39).
Appellants’ arguments do no more than challenge that the Examiner
failed to make a finding for the involved claim requirements. See, id.
Notwithstanding, Appellants’ arguments are unpersuasive, because
the Examiner found Maloney discloses each of the claim elements, including
a computer-readable storage media (Answer 21), which the ordinary artisan
would recognize is transportable.

CONCLUSIONS OF LAW
The Examiner did not err in the rejections of claims 1-4, 31-38, 49-53,
57, 60, and 61 under 35 U.S.C. § 101.
The Examiner erred in the rejections of claims 5-25, 27-30, 39-48, 54-
56, 58, and 59 under 35 U.S.C. § 101.
The Examiner did not err in the rejections of claims 31, 39-43, 49, 58,
60, and 61 under 35 U.S.C. § 102(e).
The Examiner erred in the rejection of claims 32-38 and 57 under 35
U.S.C. § 102(e).
The Examiner did not err in the rejection of claims 1-24, 27-30, 48,
and 50-56 under 35 U.S.C. § 103(a) over Hawkins and Marapane.
The Examiner did not err in the rejection of claims 45-47 under 35
U.S.C. § 103(a) over Maloney and Marapane.
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The Examiner did not err in the rejection of claim 25 under 35 U.S.C.
§ 103(a) over Hawkins, Marapane, and AS/400 Redbook Softcopy Library
CD Image.
The Examiner did not err in the rejection of claims 39-44, 58, and 59
under 35 U.S.C. § 103(a) over Maloney.
We enter a new rejection of claims 32-38 and 57 under 35 U.S.C.
§ 103(a) over Hawkins.

DECISION
The Examiner’s rejection of claims 1-4, 31-38, 49-53, 57, 60, and 61
under 35 U.S.C. § 101 is AFFIRMED.
The Examiner’s rejection of claims 5-25, 27-30, 39-48, 54-56, 58, and
59 under 35 U.S.C. § 101 is REVERSED.
The Examiner’s rejection of claims 31, 39-43, 49, 58, 60, and 61
under 35 U.S.C. § 102(e) is AFFIRMED.
The Examiner’s rejection of claims 32-38 and 57 under 35 U.S.C.
§ 102(e) is REVERSED.
The Examiner’s rejection of claims 1-25, 27-30, 39-48, 50-56, 58, and
59 under 35 U.S.C. § 103(a) is AFFIRMED.
We enter a new grounds of rejection of claims 32-38 and 57 under 35
U.S.C. § 103(a) pursuant to 37 CFR § 41.50(b).

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)(iv) (2010).

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AFFIRMED

MP