Ex Parte Sutorius

Patent Trial and Appeal Board

Jun 29, 2017

13116992 (P.T.A.B. Jun. 29, 2017)

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.
13/116,992 05/26/2011 Anne M. Sutorius 087252.000003 6664
29747 7590 07/03/2017
GREENBERG TRAURIG (LV)
77 West Wacker Drive, Suite 3100
Intellectual Property Department
Chicago, IL 60601
EXAMINER
SASS, SARA A
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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):
gtipmail @ gtlaw. com
clairt@gtlaw.com
rupickd@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE M. SUTORIUS
Appeal 2015-007788
Application 13/116,992
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anne M. Sutorius (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejections2 under 35 U.S.C. § 102(b) of claim 1 as
anticipated by Kim (JP 2009/153987 A, pub. July 16, 2009) and of claims 3—
5 as anticipated by Peaceful Mind Massage Rocks; and under 35 U.S.C.
§ 103(a) of claim 1 as obvious over Kim and of claims 2 and 6 as obvious
over Kim and Lee (US 2011/0172621 Al, pub. July 14, 2011).3 We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellant self-identifies as the real party in interest. Appeal Br. 4.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated July 1, 2014 (“Final Act.”).
3 In the Examiner’s Answer, pursuant to 37 C.F.R. § 41.39(a)(2) the
Examiner entered a New Ground of Rejection under 35 U.S.C. § 103(a) of
claims 2 and 6 as unpatentable over Kim and Mayrhofer, “Cleanliness with
Appeal 2015-007788
Application 13/116,992
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1,3, and 6 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A method of treating skin comprising:
cleaning and sterilizing a river rock* * * 4 to remove dirt and
bacteria; and
placing said river rock on oily skin for a pre-established
time period sufficient for the river rock to absorb excess oil on
the skin.
ANALYSIS
Claim 1: Anticipation/Obviousness over Kim
In rejecting claim 1, the Examiner relies on Kim for teaching a
method of treating skin by first cleaning and sterilizing river rock made of
volcanic stone to remove dirt and bacteria, and then placing the river rock
“on oily skin for a pre-established time period sufficient for the river rock to
absorb excess oil on the skin.” Final Act. 5—6 (citing Kim || 1, 14, and 16).
Massage Stones,” Massage Magazine 2010. See Ans. 7—9. Appellant,
elected to file a Reply Brief under 37 C.F.R. §§ 41.39(b)(2) and 41.41 in
rebuttal to the new grounds designated in the Answer. See Reply Br. 3^4.
4 The Examiner objects to an amendment filed December 11, 2012 “because
it introduces new matter into the disclosure.” Final Act. 3; Ans. 2—3.
However Appellant is correct that the “objected to” language appeared
verbatim in the original specification at 116. Appeal Br. 8; Reply Br. 3. It
appears the Examiner is raising an issue as to the clarity of the definition of
“river areas, or weather conditions,” so as to define the claim term “river
rock.” Final Act 3. This relates to an issue considered under 35 U.S.C. §
112, second paragraph, as opposed to 37 C.F.R. § 1.121. See MPEP §
608.04. A rejection under 35 U.S.C. § 112, second paragraph, is not before
us for review.
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Appeal 2015-007788
Application 13/116,992
The sole contested issue regarding this rejection is that although “Kim
discloses the use of volcanic stone in a pulverized form to apply to one’s
skin,” “[tjhere is no mention of using river rocks in their original form (i.e.,
not pulverized).” Appeal Br. 8. Appellant’s contention is unavailing as it is
not commensurate with the scope of claim 1, which does not recite “river
rocks in their original form.” See Appeal Br. 12, Claims App. As we are
instructed by our reviewing court, “limitations are not to be read into the
claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)); see
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
For the foregoing reasons, we discern no error in the Examiner’s
findings and sustain the Examiner’s unpatentability rejection of claim 1 over
Kim.
Obviousness of Claims 2 and 6 over Kim and Lee
Other than observing that “Lee fails to disclose the use of river rocks
to absorb oil from one’s skin,” (Appeal Br. 10), we understand Appellant’s
appeal of the rejection of claims 2 and 6 over Kim and Lee to rest on the
same argument—that Kim does not teach using river rock in its original
form—presented against the rejection of claim 1 over Kim, which we found
not demonstrative of error. See generally Appeal Br. Therefore, we sustain
the Examiner’s unpatentability rejection of claims 2 and 6 over Kim and
Lee.
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Appeal 2015-007788
Application 13/116,992
Obviousness of Claims 2 and 6 over Kim and Mayrhofer
While finding that Kim teaches all the method steps of claims 2 and 6,
except that “Kim fails to teach washing the rock with soap after use,” the
Examiner looks to Mayrhofer for teaching “washing stones with
antibacterial dish detergent,” and reasons that it would have been obvious
“to combine the rock skin treating method taught by Kim with the soap
washing of stones taught by [Mayrhofer] for keeping the stones free of
bacteria.” Ans. 7—9 (citing Mayrhofer, 1. 1).
In response to the Examiner’s rejection, Appellant first observes that
“[w]hile Mayrhofer discloses some cleaning process, like Kim, nothing in
Mayrhofer suggests using river rocks in their original form (i.e., not
pulverized) to absorb oils from skin.” Reply Br. 3. After reciting the steps
of claims 2 and 6, verbatim, Appellant also contends that Mayrhofer, like
Kim, fails to disclose those steps. Id. 3^4. However, Appellant is simply
attacking Mayrhofer in isolation for lacking support for findings not relied
upon by the Examiner, rather than addressing the Examiner’s combination of
Kim and Mayrhofer. Nonobviousness cannot be established by attacking
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). As explained supra, the Examiner only looks to Mayrhofer
for teaching “washing stones with antibacterial dish detergent.” Ans. 8.
Furthermore, with respect to Kim, Appellant’s contention consists of
only “a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.” See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011). Arguments of this nature do not
satisfy the requirements of 37 C.F.R. § 41.37(c)(l)(iv). In re Lovin, 652
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Appeal 2015-007788
Application 13/116,992
F.3d at 1357. The Examiner’s rejections were set forth in sufficiently
articulate and informative manner so as to meet the notice requirement of 35
U.S.C. § 132. See, e.g., In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011).
In particular, the Examiner applied Kim in addressing each limitation of the
rejected claims. Ans. 7—9. Appellant has not addressed any of the
Examiner’s specific findings in this regard, nor apprised us of any flaws in
the Examiner’s reasoning or legal conclusions.
Anticipation of Claims 3—5 over Peaceful Mind Massage Rocks
The Examiner finds that Peaceful Mind Massage Rocks anticipates
claims 3—5 by teaching all the method steps recited by claims 3—5. Final
Act. 6—7.
Claim 3
In responding, Appellant appears to be addressing a reference cited in
a previous office action as opposed to the Final Action from which this
appeal was taken: “Arnold fails to disclose collecting river rocks and sorting
by size, color and quality, said river rocks, [that] Arnold cannot anticipate
claim 3 of the present application.”5 Appeal Br. 9; see Ans. 11. Thus we
summarily affirm the rejection of claim 3 as anticipated by Peaceful Mind
Massage Rocks. 37 C.F.R. § 41.37(c)(l)(iv)(“The arguments shall explain
5 In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990). In a
previous Final Rejection mailed January 7, 2013, claim 3 had been rejected
as anticipated by Arnold (US 2008/0160254 Al, pub. Apr. 2008). The
Examiner did not repeat that rejection in the Final Act. See generally Final
Act.
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Appeal 2015-007788
Application 13/116,992
why the examiner erred as to each ground of rejection contested by
appellant”).
Claims 4 and 5
In responding, Appellant again misstates the Final Action from which
this appeal was taken, contending that claims 4 and 5 cannot be unpatentable
over Arnold and Peaceful Mind Massage Rocks for the reason that “the
combination of Arnold and Peaceful Mind Massage Rocks fails to disclose
collecting river rocks and sorting by size, color and quality, said river
rocks.” Appeal Br. 10.
However, the Examiner responds by explaining that “Peaceful Mind
teaches a method comprising collecting river rocks (‘Stone Massage
Therapy’) and sorting by size, color and quality as mixing and adding darker
and lighter colored stones, large to small (‘Cold Stone Massage Kit’) as
recited in the most [recent] rejection.” Ans. 12. Appellant has not disputed
these findings.
For the foregoing reasons, we discern no error in the Examiner’s
findings and sustain the Examiner’s unpatentability rejection of claims 3—5
as anticipated by Peaceful Mind Massage Rocks.
DECISION
We AFFIRM the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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