Ex Parte Hessel et al

Board of Patent Appeals and Interferences

Nov 30, 2011

11195734 (B.P.A.I. Nov. 30, 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.
11/195,734 08/03/2005 Jennifer Hessel 05725.1448 7972
22852 7590 11/30/2011
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
11/30/2011 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 JENNIFER HESSEL,
WILLIAM J. SCHWINGHAMMER,
DAVID LIATTI,
and STEPHEN FEUERBORN
____________

Appeal 2010-009262
Application 11/195,734
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009262
Application 11/195,734

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-21, 36-40, and 42-53 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a light simulation
system for providing individuals with advice relating to cosmetic product
selection (Spec. [006]). Claim 1, reproduced below with the numbering in
brackets added, is representative of the subject matter on appeal.

1. A method for recommending a beauty product, comprising:
applying at least one beauty product to an individual;
simulating, via a plurality of lighting devices, various lighting
environments after the at least one beauty product is applied to the
individual;
evaluating, in a plurality of the simulated lighting
environments, the appearance of the individual with the at least one
applied beauty product; and
[1] recommending at least one beauty product based on the
evaluating in the plurality of the simulated lighting environments.

Appeal 2010-009262
Application 11/195,734

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections1:
Mueller US 2003/0133292 A1 Jul. 17, 2003
Merola US 6,922,523 B2 Jul. 26, 2005

The following rejections are before us for review:
1. Claims 1-21, 36-40 and 42-53 are rejected under 35 U.S.C. 101,
as being drawn non-statutory subject matter.
2. Claims 1-21, 36-40, and 42-53 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mueller and Merola.

THE ISSUES
With regards to the rejections made under 35 U.S.C. 101 the issue
turns on whether a complete analysis was presented to establish a prima
facie case in the rejection of record.
With regards to the rejections made under 35 U.S.C. 103(a) the issue
turns on whether it would have been obvious to combine Mueller and
Merola to meet the argued claim limitations for each respective claim.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2

1 The Examiner has indicated that the rejection of claims 36 and 39 under 35
U.S.C. 112, second paragraph has been withdrawn (Ans. 2). The
Appellants have indicated that claim 41 has been cancelled (Br. 2, Reply Br.
2).
Appeal 2010-009262
Application 11/195,734

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FF1. Mueller has disclosed a system for generating and modulating lighting
conditions which may be used in hair and beauty salons where products and
services are offered (Abstract).
FF2. Mueller discloses that a variable color lighting system may be used to
simulate outdoor and indoor lighting conditions to allow a customer to
review the highlighting effects in hair based on lighting conditions. Mueller
also discloses that the lighting system could be used at makeup counters
where makeup is sold [0203].
FF3. Mueller discloses that the lighting system can provide and allow
selection of a color temperature of a time of day from sunrise to sunset via a
joystick [0228].
FF4. Merola has disclosed a method of promoting skin care products (Title)
in which skin care products can be suggested to potential customers by
retailers or professionals based on a customers enhanced perception of their
skin (Col. 1:66-2:2).
FF5. Merola at Col. 2:4-13 discloses suggesting skin care using a standard
photograph of a person and also based upon a person’s review of an
additional photograph of the person in ultraviolet, blue fluorescence, or
polarized photograph of the person.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2010-009262
Application 11/195,734

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ANALYSIS
Rejections under 35 U.S.C. 101
The Examiner has determined that claims 1-21 and 36-53 are
unpatentable under 35 U.S.C. 101 and applied only the machine-or-
transformation test (Ans. 4-5).
Notwithstanding that this test for determining patent eligibility of a
process is unduly narrow (see Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964,
2010 WL 2555192 (U.S. June 28, 2010), it can nevertheless be instructive as
a factor in determining whether the claimed processes are patent-ineligible
abstract ideas.
We shall reverse the rejection here and this is premised on the fact
that the Examiner also did not apply a full analysis as outlined in Bilski v.
Kappos which should have resulted in a finding by the Examiner that the
claimed subject matter either was or was not an abstract idea, and hence,
respectively, that the claimed subject matter was not patent eligible or was
patent eligible in this particular instance. The Examiner has also only fully
addressed the rejection of claim 1 and not the remaining independent claims
in this rejection. For these reasons the rejection of the claims under 35
U.S.C. 101 is not sustained.

Rejections under 35 U.S.C. 103(a)
The Appellants argue that the rejection of claim 1 is improper because
Merola fails to disclose claim [1] because the recommending in Merola is
not done based on “evaluating” with “at least one applied beauty product”
(Br. 16 ). The Appellants argue that Merola teaches the comparison of skin
images “prior to” and “after” the use of a skin care product but not with the
Appeal 2010-009262
Application 11/195,734

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image of skin “with a skin care product actually applied” (Br. 16). The
Appellants have presented similar arguments in the Reply Brief at pages 11-
12.
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 6-8, 16-18).
We agree with the Examiner. Claim limitation [1] requires:
[1] recommending at least one beauty product based on the
evaluating in the plurality of the simulated lighting environments.
(Claim 1).

Here, Mueller has disclosed that a variable color lighting system may
be used to simulate outdoor and indoor lighting conditions to allow a
customer to review the highlighting effects in her hair based on lighting
conditions and that the system could be used at makeup counters where
makeup is sold (FF2). Merola has disclosed that skin care products can be
suggested to potential customers by retailers or professionals based on a
customer’s enhanced perception of their skin (FF4). Merola has also
disclosed suggesting skin care using a standard photograph of a person and
also based upon a person’s review of an additional photograph of the person
in ultraviolet, blue fluorescence, or polarized photograph of the person.
(FF5).
The modification of the system of the lighting system of Mueller used
to simulate different lighting conditions at makeup counters to include the
recommendation of a specific product based on the change as suggested by
Merola is considered an obvious, predictable combination of familiar
elements for the advantage of having a professional recommend makeup to
the customer under the different lighting conditions. In KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering
Appeal 2010-009262
Application 11/195,734

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obviousness that “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR at 418. Here, one of ordinary skill in the art
would have readily inferred that the teaching of Merola based on before and
after photographs could readily be applied to situations where the makeup
was still applied at a makeup counter for the advantage of getting a
professional product recommendation if no photographic equipment was
available. For these reasons this rejection of claim 1 is sustained. The
Appellants have provided similar arguments for claims 2-9, 11-21, 36-40,
and 42-53 and the rejection of these claims is sustained for the same reasons
given above. With specific regard to claim 39 Mueller has disclosed
observing the highlighting effects in hair based on lighting conditions (FF2).
The Appellants have specifically argued that the rejection of claim 10
is improper (Br. 22-23). Claim 10 requires the simulated lighting “is
associated with at least one of location, weather condition, and time of day”.
Mueller shows the lighting condition varied by the time of day (FF3) and the
rejection of claim is therefore sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-21, 36-40 and 42-53 under 35 U.S.C. § 101.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-21, 36-40, and 42-53 under 35 U.S.C. § 103(a) as
unpatentable over Mueller and Merola.

Appeal 2010-009262
Application 11/195,734

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DECISION
The Examiner’s rejection of claims 1-21, 36-40, and 42-53 is
sustained.

AFFIRMED

MP