Ex Parte Studin

Patent Trial and Appeal Board

Apr 27, 2016

12273258 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/273,258 11/18/2008
111716 7590 04/29/2016
Fishman & Associates, LLC.
3975 University Drive, Suite 400
Fairfax, VA 22030
FIRST NAMED INVENTOR
Joel R. Studin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SDF 08-6 7969
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
request@fishmanllc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL R. STUDIN
Appeal2013-001230
Application 12/273,258
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and
CHRISTOPHER G. P AULRAJ, Administrative Patent Judges.
PAULRAJ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an anti-
aging product. The Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Background
According to the Specification, "the present invention is directed to a
multi-chamber packet, which contains an anti-aging skin care composition,
and to an anti-aging kits [which allow for safe application of an anti-aging
1Appellant identifies the Real Party in Interest as SCARGUARD LABS,
LLC (see Br. 1 ).
Appeal2013-001230
Application 12/273,258
composition for] for use in the treatment or prevention of age-related skin
symptoms." Spec. 1, 11. 5-8. The invention described in the Specification
seeks to address the problem where "the different active ingredients used to
treat the various different causes of aging can react together causing these
active ingredients to degrade and/or lose their efficacy over time," while
avoiding the "cumbersome and inconvenient" use of separate bottles for
each of the different active ingredients. Id. at 2:2-8.
The Claims
Claims 1 and 3-13 are under appeal, and are reproduced in the Claims
Appendix of the Appeal Brief. Independent claim 1 is representative and
reads as follows:
1. An anti-aging product comprising, at least two active agents for
reducing age-related skin symptoms, wherein said at least two active
agents are packaged into separate compartments of a single use multi-
chamber packet wherein said at least two active agents are different
from each other and interact together, causing one or both to be
degraded and/or lose efficacy over time.
(Appeal Br. 11 ).
The Rejection
The Examiner has rejected the claims under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Scott2 and Kim. 3
2 Scott et al. (US 6,585,984 B 1, issued July 1, 2003) ("Scott").
3 Kim et al. (KR 10-0478424, published Mar. 14, 2005) ("Kim").
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Appeal2013-001230
Application 12/273,258
ANALYSIS
The Examiner relies upon Scott's disclosure of "an anti-aging
cosmetic product packaged in a dual-compartment dispenser with separate
first and second storage areas" wherein "[t]he first storage area contains a
first anti-aging dermal active agent, preferably selected from keratolytic
agent, particularly alpha- and betahydroxy carboxylic acids" and "[t]he
second storage area contains a second anti-aging dermal agent incompatible
with the first composition, which can be selected from retinoids, vitamins,
enzymes and anti-oxidants." Ans. 3, citing Scott, 1:27--42, 3:41-7:35.
The Examiner acknowledges that the dispenser taught by Scott is not
a "single use" device as required by the claims, but finds that "Kim teaches a
multi-chamber packet ... useful to store and dispense sample cosmetic
compositions," and asserts that it would have been obvious to the skilled
artisan "to modify the teachings of Scott and use the multi-chamber packets
of Kim to separately store the first and second active agents." Id. at 4. The
Examiner asserts that "[t]he skilled artisan would have been motivated to do
so, as Scott emphasizes the importance of controlling concentration of the
active agents, and Kim teaches the package is useful to dispense sample
products as well as to store original products, and save the production unit
cost," and further asserts based on the combination that "the skilled artisan
would have had a reasonable expectation of successfully producing an anti-
aging product that contains at least two active agents in separate
compartments of a single use multi-chamber packet, which can be used for
sample products or everyday use, with a reduced production cost." Id. at 4--
5.
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Appeal2013-001230
Application 12/273,258
Claims 1 and 12
We determine that the Examiner has made a prima facie showing of
obviousness for independent claims 1 and 12.
Appellant argues that "Kim is merely concerned with providing a
packet on which designs can be printed for cosmetic names and
logos to enhance aesthetic appeal," and "does not suggest that the multi-
chamber packet can contain materials which must be separated to maintain
efficacy." Br. 7. Appellant further argues that "Scott is not concerned with
single use or the convenience that a single use package could provide." Id.
at 9. Appellant asserts that the Examiner improperly used the disclosure of
the instant application to gain motivation of combining Scott and Kim. Id. at
8.
We are unpersuaded by these arguments as they do not address
adequately the teachings and suggestions found in each of the references.
Scott teaches the need for simultaneous application of incompatible dermal
active materials, albeit it does not suggest a "single use" packet to dispense
both materials. See, e.g., Scott, 3:4--6, 7: 10-14. Kim, however, teaches
multi-chamber single use packets useful for cosmetic product samples that
can lower production costs. See, e.g., Kim, 4 ("Additionally, the production
unit cost will be same as the conventional cost or somewhat less to lower the
financial burden and thereby has the effect of offering an advantage to
businesses in competition with other similar businesses."). The Examiner
has identified a sufficient motivation to combine the teachings of Scott and
Kim in that "the skilled artisan would have had a reasonable expectation of
successfully producing an anti-aging product that contains at least two active
agents in separate compartments of a single use multi-chamber packet,
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Appeal2013-001230
Application 12/273,258
which can be used for sample products or everyday use, with a reduced
production cost." (Ans. 5). This motivation does not depend upon
Appellant's disclosure. Rather, it is "the mere application of a known
technique to a piece of prior art ready for the improvement." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We accordingly affirm the Examiner's rejection of claims 1 and 12.
Claim 11
Dependent claim 11 requires that "said multi-chamber packet contains
a removable strip which runs through each of said at least two chambers,
wherein said packet has a tear line which allows said strip to be tom away
thereby providing access to the interior of chambers." For this claim, the
Examiner asserts that "the multi-chamber packet disclosed by Kim has a
perforated line which is to be tom by the user so the content materials come
out." Ans. 5.
Appellant argues that "Kim does not teach such a package, as each of
the chambers has a separate tear-away portion, and there is not a single-tear
away strip which runs through at least two of the chambers of the package."
(Br. 10). We agree with Appellant as to claim 11. In particular, although
Kim teaches a multi-chambered packet structure with individual perforated
lines (15) allowing each of the chambers to be opened separately, the
Examiner has not explained how this suggests the requirement of a
removable strip which runs through each of said at least two chambers.
We accordingly reverse the Examiner's rejection of claim 11.
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Appeal2013-001230
Application 12/273,258
Claims 2-10, and 13
Appellant has not presented any separate arguments for dependent
claims 2-10, and 13. These claims therefore fall with their respective
independent claims. 37 C.F.R. § 41.37(c)(iv).
SUMMARY
We affirm the rejection of claims 1and12 under 35 U.S.C. § 103(a)
as being unpatentable over Scott and Kim. Claims 2-10 fall with claim 1,
and claim 13 falls with claim 12. We reverse the rejection of claim 11 under
35 U.S.C. § 103(a) as being unpatentable over Scott and Kim.
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
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