Ex Parte Shy

Board of Patent Appeals and Interferences

May 14, 2010

11123360 (B.P.A.I. May. 14, 2010)

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.
11/123,360 05/06/2005 Kerry Shy 802033-0005 8015
27910 7590 05/17/2010
STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2800
KANSAS CITY, MO 64106-2150
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
05/17/2010 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 KERRY SHY
__________

Appeal 2010-001844
Application 11/123,360
Technology Center 1600
__________

Decided: May 17, 2010
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, 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 a
tanning system and method. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b.) We affirm-in-part.
Appeal 2010-001844
Application 11/123,360

2
STATEMENT OF THE CASE
The invention concerns a tanning system comprising a substrate that
“has a predetermined pattern which is substantially impermeable to
ultraviolet light so that when the subject’s skin is exposed to …[an]
ultraviolet light source, the subject’s skin is tanned with a pattern
corresponding to the predetermined pattern of the substrate.” (Spec. [0008].)
The Specification also states that “the tanning system includes one or more
alignment regions to help the subject align the tanning system on the body”
to ensure that the predetermined pattern is positioned in the desired location
on the subject’s body. (Id.)
Claims 1-23, which are all the pending claims, are on appeal. Claims
1, 2, 3, 9, 10, 11, 14 and 23 are illustrative and read as follows:
1. A tanning system comprising:
a first substrate which is permeable to ultraviolet light;
a first predetermined pattern on said substrate, said first
predetermined pattern is at least about 50% impermeable to ultraviolet light;
and
at least one alignment region.

2. The tanning system of claim 1 further comprising an adhesive
coated on at least a portion of said substrate, said adhesive being permeable
to ultraviolet light.

3. The tanning system of claim 1 further comprising a backing
sheet covering at least a portion of said substrate.

9. The tanning system of claim 1 comprising multiple alignment
regions.

10. The tanning system of claim 9 where said multiple alignment
regions comprise a plurality of perforated openings in the substrate.

Appeal 2010-001844
Application 11/123,360

3
11. The tanning system of claim 1 further comprising a second
substrate having a second predetermined pattern which is impermeable to
ultraviolet light to a degree that is different than said first determined pattern
on said first substrate.

14. A method for tanning the skin of a subject comprising:
providing tanning system comprising
a first substrate which is permeable to ultraviolet light,
a first predetermined pattern on said substrate, said first
predetermined pattern is at least about 50% impermeable to ultraviolet light,
and an alignment region;
aligning said alignment region with a landmark structure on said
subject's body; and
exposing the subject to a source of ultraviolet light.

23. A tanning system comprising:
a first substrate which is permeable to ultraviolet light, a first
predetermined pattern on said first substrate, said first predetermined pattern
is at least about 50% impermeable to ultraviolet light; and
a second substrate which is permeable to ultraviolet light, a second
predetermined pattern on said second substrate, said second predetermined
pattern having a degree of impermeability to ultraviolet light that is different
than said first predetermined pattern or having a shape that is different than
said first predetermined pattern or having both a degree of impermeability to
ultraviolet light and a shape that is different than said first predetermined
pattern.

The Examiner rejected claims 1-23 under 35 U.S.C. § 103(a) as
unpatentable over Harden.1
OBVIOUSNESS
The Issue
The Examiner’s position is that Harden disclosed tanning systems
comprising a film, i.e., a substrate, which is permeable to ultraviolet light

1 US Patent No. 5,948,502 issued to Harden, Sep. 7, 1999.
Appeal 2010-001844
Application 11/123,360

4
and adapted to be placed upon a part of the human body. (Ans. 4) The
Examiner also found that portions of Harden’s tanning system film are
covered with a material which is 100% impermeable to ultraviolet light.
(Id.) Additionally, the Examiner found that Harden disclosed that the film
may be provided with fastening tapes or other fastening means. (Id.)
The Examiner also found that Harden did not explicitly teach (a) an
alignment region with at least one marking or opening, (b) a fastening means
or adhesive that is permeable to light, (c) a backing sheet covering at least a
portion of the substrate, and (d) a second substrate with a different pattern
impermeable to ultraviolet light. (Id. at 5.) Regarding method claims 14-22,
the Examiner found that Harden did not explicitly teach aligning an
alignment region with a landmark structure on the subject’s body, or placing
a second substrate over or under the first substrate. (Id.) According to the
Examiner, it would have been obvious to a person of ordinary skill in the art
at the time of the invention to apply Harden’s teachings, thus including the
claimed elements and practicing the claimed steps, for the several reasons
set forth in the Answer. (See Ans. 7-9.)
Appellant contends that “the limitations missing from the reference
would not have been obvious to one of ordinary skill in the art.” (App. Br.
7.) According to Appellant, the Examiner’s reasoning is inconsistent with
Harden’s teachings and is based only upon improper hindsight. (Id. at 7-8.)
The issue with respect to this rejection is whether the claimed
limitations not recited by Harden would have been obvious to a person of
ordinary skill in the art at the time of the invention based upon the teachings
of Harden.

Appeal 2010-001844
Application 11/123,360

5
Findings of Fact
1. Harden disclosed tanning systems comprising “the use of a film
material which is permeable to ultra-violet light and which is adapted to be
laid on part of a human body, for example the torso.” (Harden, Abstract.)
2. Harden Figure 1 is reproduced below:

{Figure 1 shows an embodiment of a film according to
Harden’s invention. (Id. at col. 1, ll. 35-36.)}

3. Harden disclosed that film 1 is covered in certain desired regions 2
with a material which is impermeable to ultra-violet light, and regions 2 are
surrounded by areas 3 that are only partially permeable to UV light. (Id. at
Abstract, col. 2, ll. 2-5.)
4. Harden Figure 2 is reproduced below:

Appeal 2010-001844
Application 11/123,360

6
{Figure 2 shows an embodiment of Harden’s film
applied to a human torso in a sunbed. (Id. at col. 1, ll. 37-38.)}

5. Harden Figures 3 and 4 are reproduced below:

{Figures 3 and 4 show the same person before and after tanning with
Harden’s film applied to the torso. (Id. at col. 1, ll. 41-44.)}

6. Harden disclosed that when a person wearing the film is subjected to
tanning by either natural sunlight or other means of ultra-violet light (see
Fig. 2), the result is an improved, e.g., more slimmer and/or muscular,
appearance of the torso (compare Figs. 3, 4). (Id. at col. 2, ll. 6-14.)
7. Harden disclosed that the film may be provided with fastening tapes
or other suitable fastening means for fitting the film to a subject. (Id. at col.
1, ll. 23-25.)
8. Harden disclosed a film for use by females wherein the impermeable
regions are altered to give the female torso a flattering appearance after
tanning. (Id. at col. 2, ll., 15-18.)
9. Harden taught that the film could be used on other parts of the body,
such as the limbs or the face. (Id. at col. 2, ll. 18-21.)

Appeal 2010-001844
Application 11/123,360

7
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 International Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007.)
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley 27 F.3d 551, 553
(Fed. Cir. 1994.)
“[C]laims in an application are to be given their broadest reasonable
interpretation consistent with the specification and that claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983.)

Analysis
A. Alignment Region
Appellant first argues claims 1-22 together. (App. Br. 2.) Appellant
argues that the Examiner improperly relied on hindsight as the basis for
finding that a skilled artisan would have been motivated to include “at lease
one alignment region” in Harden’s tanning system and to “align[] said
alignment region with a landmark structure” on the subject’s body. (Id. at 8-
Appeal 2010-001844
Application 11/123,360

8
9.) According to Appellant, Harden did not teach or suggest this or any
reasoning for including an alignment region. (Id.) We disagree.
The Examiner found that a skilled artisan would have been motivated
to include an alignment region and a method of aligning the region to a
landmark structure on the body because Harden’s tanning system as a whole
was aligned with the muscles of the abdomen to provide a tan based upon
the symmetry of the torso. (Ans. 7.) The evidence supports that finding. In
particular, Figure 1 illustrated Harden’s film with coverings positioned
according to the location of the muscles of the human torso. (FF 1-3.)
Harden stated that the film is “adapted to be fitted to a human torso and the
impermeable regions [i.e., coverings] are so arranged to improve the
appearance of the body which is subjected to tanning….” (Harden at col. 1,
ll. 20-22.) Additionally, Harden’s Figure 2 illustrated the placement of the
film on a human torso with the coverings arranged with respect to the
muscles of the abdominals. (FF 4.) Further, Harden’s Figure 4 illustrated a
symmetrical abdominal tan that resulted from tanning with Harden’s film.
(FF 5.) A skilled artisan would have understood that Harden’s film was
intended to be aligned to the muscles of the torso. Therefore, including a
reference or region for aligning the film with a landmark structure on the
subject, such as the umbilicus, would have been an obvious means and step
to achieve Harden’s teaching to align the film symmetrically on the torso.
See KSR International Co., 550 U.S. at 406.
Appellant additionally contends that Harden taught away from using
an alignment region by disclosing a film that is functional without such a
structure. (Id. 10.) This argument is also unpersuasive as Harden did not
discourage or discredit the inclusion and use of at least one alignment region
Appeal 2010-001844
Application 11/123,360

9
in the disclosed tanning system. See Gurley, 27 F.3d at 553; see also, Para-
Ordnance Manufacturing v. SGS Importers International Inc., 73 F.3d 1085,
1090 (Fed Cir. 1995) (a warning against use of an element, rather than
omission of mention of the element, is required to find teaching away).

B. Adhesive Being Permeable to Ultraviolet Light
Appellant groups claims 2 and 15 together and contends that the
Examiner relied upon hindsight reasoning to reject the claims (App. Br. 11-
12). Specifically, Appellant asserts that Harden does not contain any
disclosure that would render the use of an adhesive permeable to ultraviolet
light obvious. (Id. at 12.) According to Appellant, while using an adhesive
that is permeable to ultraviolet light would have been logical to avoid an
uneven tan, “this logic employs the benefit of hindsight.” (Id.)
The Examiner’s reasoning was based upon Harden’s disclosure to use
a “suitable fastening means” (FF 7) and also upon findings that (a) an
adhesive was a well known fastening means, and (b) that an adhesive
provided to a film having regions permeable to UV light must also be
permeable to UV light so that the adhesive does not interfere with the
tanning process. (Ans. 10.) Appellant does not dispute the correctness of
those findings, and characterizing them as hindsight does not persuade us of
Examiner error.
C. Backing Sheet Covering At Least A Portion of the Substrate
Appellant groups claims 3 and 16 together and asserts that the
Examiner relied upon hindsight when reasoning that “having a backing
sheet, for the adhesive, which is removed before application would have
been obvious to one of ordinary skill so the adhesive would not be
Appeal 2010-001844
Application 11/123,360

10
compromised before [use]” (App. Br. 13). According to Appellant, claims 3
and 16 do not require an adhesive or suggest that the backing sheet is
provided to protect an adhesive. (Id.) Further, Appellant asserts that the
Examiner did not explain why a backing sheet would have been obvious
when there is no adhesive present. (Id.)
We are not persuaded by Appellant’s arguments. Although claims 3
and 16 do not recite an adhesive, the open language of the claims, i.e., the
use of the term “comprising,” does not exclude the presence of an adhesive.
Harden suggested using a fastening means and the Examiner reasoned that
when an adhesive is selected as the fastening means, it would have been
obvious to protect the adhesive prior to use with backing sheet, as was well
known in the art. This reasoning is, therefore, based upon Harden’s
disclosure and the ordinary skill in the art, rather than solely upon the
Appellant’s disclosure.
D. Multiple Alignment Regions
Appellant groups claims 9, 10, 18, and 19 together and asserts that
Harden does not teach or suggest a tanning system comprising multiple
alignment regions (App. Br. 14-15.) Appellant contends that the Examiner
provided no explanation as to why one skilled in the art would be motivated
to include multiple alignment regions, particularly regions comprising a
plurality of perforated openings in the substrate, as recited in claim 10.
This argument is also unpersuasive for the reasons addressed during
the discussion of the claim limitation “at least one alignment region.”
Further, the Examiner found that Harden taught that its film may be used on
the face to highlight cheekbones and give the face a slimmer look. (Ans. 7.)
Based upon this disclosure, the Examiner reasoned that when adapting such
Appeal 2010-001844
Application 11/123,360

11
a film for placement over the entire face a skilled artisan would have found
it obvious to provide the film with a plurality of perforated openings in the
location of the eyes, nostrils, and/or mouth to ensure the subject would be
comfortable and able to breath. (Id.) We agree and do not find that the
Appellant has established otherwise with persuasive evidence.
E. Second Substrate Having a Second Predetermined Pattern
Appellant groups claims 11-13 and 20-23 together and asserts that the
claims are not obvious because Harden does not teach or suggest
“overlapping substrates, with either different degrees of impermeability
(claims 11, 13, 20, and 23) and/or different patterns thereon (claims 12, 22,
and 23)” (App Br. 16-17, emphasis added).
Although Appellant has grouped claims 11-13 and 20-23 together, we
note that only claims 20-22 include the limitation of “placing said second
substrate over or under said first substrate.” With regard to claims 20-22, we
agree with Appellant that Harden does not disclose placing a second
substrate over or under a first substrate and that the Examiner has not
provided sufficient reasoning as to why this step would have been obvious to
a skilled artisan at the time of the invention. Consequently, we reverse the
Examiner’s rejection of claims 20-22.
While claims 11-13 and 23 require a second substrate having a second
predetermined pattern, and/or different degrees of permeability, these claims
do not include a limitation that the second substrate must be placed over or
under the first substrate. Nor does the Specification define the second
substrate as such. Therefore, we construe the claim phrase “second
substrate” broadly to include a substrate that is placed on a location of the
subject’s body that is different than the location of a first substrate. See In re
Appeal 2010-001844
Application 11/123,360

12
Sneed, 710 F.2d at 1548. Giving the claim term “second substrate” its
broadest interpretation, it is reasonable to interpret the claimed system to
include Harden’s disclosure wherein a first film is adapted to be fitted to a
human torso and a second film, i.e., second substrate, is adapted for use on
another part of the body, e.g., the limbs or the face. (See FF 1 and 9.)
Harden’s film for the face or limbs would necessarily have a second
predetermined pattern which is impermeable to UV light to a degree and
different in shape than that of the first substrate. Therefore, we are not
persuaded claims 11-13 and 23 are patentable over Harden’s system.

CONCLUSIONS OF LAW
The evidence supports the Examiner’s conclusion that the tanning
systems and methods of claims 1-19 and 23 would have been obvious over
Harden to a person of ordinary skill in the art at the time the invention was
made.
However, Appellant has established that the tanning methods of
claims 20-22 would not have been obvious over Harden to a person of
ordinary skill in the art at the time the invention was made.

SUMMARY
We affirm the rejection of claims 1-19 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Harden; and
we reverse the rejection of claims 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Harden.

Appeal 2010-001844
Application 11/123,360

13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a.)

AFFIRMED-IN-PART

lp

STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2800
KANSAS CITY MO 64106-2150