Ex Parte Lee et al

Board of Patent Appeals and Interferences

Jul 19, 2011

11724095 (B.P.A.I. Jul. 19, 2011)

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.
11/724,095 03/14/2007 Gregory Lee LEE-101 1818
7590 07/19/2011
Kevin D. Erickson
Pauley Petersen & Erickson
Suite 365
2800 West Higgins Road
Hoffman Estates, IL 60169
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
07/19/2011 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 GREGORY LEE and TAWANA G. LEE
__________

Appeal 2011-003797
Application 11/724,095
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
underarm hygiene product and a method for its production. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

Appeal 2011-003797
Application 11/724,095

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STATEMENT OF THE CASE
Claims 1-7, 9-14 and 16-20 are on appeal. Claims 1 and 16 are
representative and read as follows:
1. An underarm hygiene product comprising:
a deodorant patch consisting of a single deodorant formulation formed
in a single layer with a first side and an opposite side having a thickness and
size suitable for placement under an arm, wherein the deodorant formulation
melts or softens following skin contact with minimal residue for a user; and
a top carrier sheet positioned on the first side of the deodorant patch
and a bottom carrier sheet positioned on the opposite side of the deodorant
patch, wherein at least one of the top carrier sheet and the bottom carrier
sheet includes a release agent to facilitate application and release of the
deodorant patch from the top carrier sheet and onto the underarm.

16. An underarm hygiene product comprising:
a deodorant patch consisting of a single deodorant formulation formed
in a single layer;
the single deodorant formulation comprising aluminum zirconium
tetrachlorohydrex GLY, cyclomethicone, stearyl alcohol, octyl isonanoate,
talc, hydrogenated vegetable oil, glyceryl stearate, fragrance, BHT, T -butyl
hydroquinone, starch, polyol, and PEG-100 stearate, wherein the deodorant
formulation that melts or softens in about 3 seconds to about 5 seconds at
temperature between about 33.3degrees C and about 37.8 degrees C with
minimal residue; and
a top carrier sheet and a bottom carrier sheet sandwiching the
deodorant patch of deodorant therein, wherein at least one of the top carrier
sheet and the bottom carrier sheet includes a release agent to facilitate
application and release of the deodorant patch from at least one of the top
carrier sheet and the bottom carrier sheet onto the underarm.

The Examiner rejected claims 1-7, 9-14 and 16-20 under 35 U.S.C.
§ 103(a) as unpatentable over Roreger1 and Kamiya.2

1 Patent Application Publication No. WO 2004/024113 A1 by Michael
Roreger et al., published Mar. 25, 2004.
2 US Patent No. 5,780,047 issued to Tetsuro Kamiya et al., Jul. 14, 1998.
Appeal 2011-003797
Application 11/724,095

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OBVIOUSNESS
The Issue
The Examiner’s position is Roreger taught a deodorant patch
comprising a first layer containing deodorant and a second layer containing a
binding agent having adhesive qualities in contact with dry skin. (Ans. 3.)
The Examiner found that Roreger’s second layer was a “layer of an adhesive
on the carrier.” (Id. at 5.) The Examiner found that Roreger taught that the
patch decomposes without leaving residues. (Id. at 3.) The Examiner found
that Roreger differed from the claimed invention by not teaching a top
carrier sheet. (Id.) However, the Examiner found that Kamiya taught
enclosing a skin patch in an airtight foil bag or package for convenient
handling and preservation of ingredients. (Id. at 4.)
According to the Examiner, it would have been prima facie obvious to
a person of ordinary skill in the art at the time the invention was made to
modify Roreger’s patch by adding an airtight foil bag or package to prevent
ingredients from escaping the patch and to provide a product that is
convenient to handle. (Id. at 4.)
Appellants contend that “[n]either of the cited prior art discloses or
suggest the Appellants’ claimed invention.” (App. Br. 8.) Specifically,
Appellants assert that contrary to the inventions of independent claims 1, 14,
and 16 wherein the deodorant patch consists of a single deodorant
formulation formed in a single layer, Roreger “requires that the deodorant
patch has at least two layers.” (Id.)

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Application 11/724,095

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Additionally, Appellants assert that Roreger taught that “the
deodorant patch is removed from a carrier (3) prior to application” (id.) and
therefore the carrier “cannot be used to facilitate application and release of
the deodorant patch from the carrier sheet and onto the underarm as required
by Appellants[’] invention.” (Id. at 8-9.) Further, Appellants assert that
Kamiya taught that its patch “was taken out” of its foil bag/carrier prior to
applying the patch and did not suggest using the bag to facilitate such
application. (Id.)
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made the top
carrier sheet on the first side of the deodorant patch obvious.

Findings of Fact
1. Roreger taught a deodorant product comprising a first layer consisting
of a single deodorant formulation formed in a single layer with a first side
and an opposite side. (See Roreger Fig. 1, Roreger Transl. 5.)
2. Roreger taught that its deodorant product comprised a second layer
containing a binding agent having adhesive qualities in contact with dry
skin. (Id.)
3. Roreger disclosed that its product also comprised a carrier with a
section providing “taking off assistance … to facilitate a removing of the
plaster [i.e. first and second layers] before the application.” (Id. at 9, 13.)
4. The Examiner characterized Roreger’s product as “a layer of
deodorant and a second layer of an adhesive on the carrier.” (Ans. 5.)
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Application 11/724,095

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5. Roreger disclosed that its product is applied on the skin of the user so
that the adhesive second layer comes into contact with the skin. (Roreger
12.)
6. The Examiner found that Roreger did not disclose a top carrier sheet.
7. Kamiya taught enclosing a skin patch in an airtight foil bag or
package for convenient handling and preservation of ingredients. (Kamiya
col. 5, ll. 24-28.)

Principles of Law
A conclusion that the claimed subject matter is prima facie obvious
must be supported by evidence, as shown by some objective teaching in the
prior art or by knowledge generally available to one of ordinary skill in the
art that would have led that individual to combine the relevant teachings of
the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988).

Analysis
We agree with Appellants (App. Br. 10) that the Examiner has not
established that the combined references suggested the claimed invention.
What is missing from the Examiner’s rejection (see Ans. 4) is an explanation
of how enclosing Roreger’s deodorant product in an airtight foil bag or
package, as taught by Kamiya, would have provided a top carrier sheet.
Independent claims 1 and 14 recite “a top carrier sheet positioned on the first
side of the deodorant patch….” (App. Br. 12 and 15, Claims App’x.)
Independent claim 16 recites “a top carrier sheet and a bottom carrier sheet
sandwiching the deodorant patch….” (Id. at 16.) For such “sandwiching” to
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Application 11/724,095

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result, we interpret this claim limitation as also requiring the top carrier sheet
to be positioned on the first side of the deodorant layer. In combining the
prior art teachings, the Examiner has not explained how a skilled artisan who
enclosed Roreger’s product in a bag or package would have arrived at a
product comprising a top carrier sheet positioned on the first side of that
product. See Fine, 837 F.2d at 1074.

CONCLUSION OF LAW
The record does not support the Examiner’s conclusion that the cited
references would have made the top carrier sheet positioned on the first side
of the deodorant patch obvious.

SUMMARY
We reverse the rejection of claims1-7, 9-14 and 16-20 under
35 U.S.C. § 103(a) as unpatentable over Roreger and Kamiya.

REVERSED

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