Ex Parte Walters et al

Board of Patent Appeals and Interferences

Jun 3, 2010

10774968 (B.P.A.I. Jun. 3, 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.
10/774,968 02/09/2004 Nina L. Walters Walters 1 8770
7590 06/04/2010
Michael D. Wiggins
950 Harmon
Birmingham, MI 48009
EXAMINER
MERCIER, MELISSA S
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
06/04/2010 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 NINA L. WALTERS and VICKI ANNE WEST
__________

Appeal 2009-014794
Application 10/774,968
Technology Center 1600
__________

Decided: June 4, 2010
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a lotion
applicator. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Application 10/774,968

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STATEMENT OF THE CASE
Claims 1-17 are on appeal. Claims 1 and 6 are representative and read
as follows:
1. A lotion applicator for applying lotion to a body of a person,
comprising:
an applicator body;
a handle that extends from said applicator body;
a sheet that is impregnated with lotion; and
a fastener that is associated with at least one selected from a group
consisting of said lotion-impregnated sheet and said applicator body and that
removably attaches said lotion-impregnated sheet to said applicator body.

6. The lotion applicator of Claim 1 wherein said applicator body
includes a top surface having an arcuate cross section and a bottom surface
having a planar surface.

Issue
The Examiner has rejected claims 1-13 under 35 U.S.C. § 103(a) as
being obvious in view of Steinberg1 and Brower.2 The claims have been
argued in two groups: claims 2-5 and 7-10 stand or fall with claim 1; claims
11-13 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Steinberg discloses “a device for providing
self-assisting hygienic activity to individuals of limited dexterity, the device
including an elongated body” having a handle at one end and a hygienic
related accessory at the other end (Ans. 3); the accessory can include an
attached sheet (id. at 4). The Examiner finds that Brower discloses a lotion-
impregnated sheet for applying lotion to a user’s skin (id.). The Examiner
concludes that it would have been obvious to a person of ordinary skill in the

1 Steinberg, US 6,981,293 B2, Jan. 3, 2006
2 Brower et al., US 6,250,829 B1, June 26, 2001
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Application 10/774,968

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art to combine Brower’s lotion-impregnated sheet with Steinberg’s device
“since Steinberg discloses the objective of the apparatus is to provide self-
assisting hygienic activity to individuals of limited dexterity” (id.).
Appellants contend that it would not have been obvious to combine
the references because Steinberg discloses that the device with a sheet
attached is used for cleaning, not applying lotion (Appeal Br. 8-10), and
Brower’s product is intended to be worn on a user’s hand, not attached to a
handle or body (Appeal Br. 11).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that it would have been obvious to
one of ordinary skill in the art to combine Brower’s lotion-impregnated sheet
with Steinberg’s device?
Findings of Fact
1. Steinberg discloses “a personal hygiene accessory … in the form
of an ergonomically configured, extensible and positionable device capable
of supporting a number of different accessories for assisting persons of
limited mobility and dexterity” (Steinberg, col. 2, ll. 3-7).
2. Steinberg discloses that the accessories include a “non-porous
rubber based lotion dispensing attachment, and disposable sheet attachment”
(id. at col. 2, ll. 44-48).
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3. Figure 8 of Steinberg is shown below:

The figure shows an embodiment “in which a disposable sheet is releasably
secured to a selected face of a planar attachment portion through the
provision of an edge configured gripping location” (id. at col. 3, ll. 18-22).
4. Brower discloses “a storage and applicator article for the
convenient and controlled application of a lotion, preferably a sunscreen or
insect repellent” (Brower, col. 2, ll. 43-47).
5. Brower discloses that the “applicator comprises a flexible thin
sheet impregnated with the lotion and formed into a cavity … into which at
least a portion of the user's hand may be inserted for manipulation of the
flexible thin sheet” (id. at col. 2, ll. 47-56.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
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“[I]n general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).
Analysis
Claim 1 is directed to a lotion applicator comprising a body, a handle,
a sheet that is impregnated with lotion, and a fastener that attaches the sheet
to the body.
Steinberg discloses a device for assisting with personal hygiene that
comprises a handle and a body with a disposable sheet attached to it.
Brower discloses a lotion applicator that comprises a sheet impregnated with
lotion, such as sunscreen or insect repellent, and formed into a pocket shape
so that a user’s hand can be inserted to apply the lotion. The Examiner
concludes that Steinberg’s self-assist hygiene device “is analogous to the
hand taught by Brown [sic, Brower]. Thus, one using Steinberg’s device
rather than a hand to reach body parts due to limited dexterity, would use
Brown’s [sic] impregnated sheet on the device rather than the hand” (Ans.
6). We agree with the Examiner’s reasoning.
Appellants argue that Steinberg uses a “disposable sheet … for
cleaning and removal of debris – not applying lotion” (Appeal Br. 8) and
discloses that lotion is applied with a roller ball applicator (id. at 9).
Appellants argue that “[by] expressly teaching the use of the refillable roller
applicator for lotion application, Steinberg et al. expressly teach away from
using disposable sheets impregnated with lotion” (id. at 10). Appellants also
argue that Brower teaches away from the claimed invention because its
lotion applicator “is intended to be worn on a user’s hand” (id. at 11).
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Appellants’ arguments are not persuasive. In accord with In re
Gurley, a reference teaches away when it would lead a person of ordinary
skill to expect that the claimed invention would not work. Appellants have
pointed to nothing in Steinberg or Brower that would lead a skilled worker
to expect that Steinberg’s device would not work to apply lotion using
Brower’s lotion-impregnated sheet. Appellants’ arguments address the
references separately, rather than addressing what their combined teachings
would have suggested to a person of ordinary skill in the art.
Claim 6 depends from claim 1 and further requires that the “applicator
body includes a top surface having an arcuate cross section.” The Examiner
finds that the references do not disclose this shape for the top surface,
“barring a showing to criticality of the claimed design, … it would have
been obvious to a person of ordinary skill in the art to design the applicator
body in any manner suitable to meet the needs of the intended function”
(Ans. 4).
Appellants argue that “Steinberg et al. fail to show, teach or suggest
[that] the applicator body includes a top surface having an arcuate cross
section and a bottom surface having a substantially planar surface,” and that
the shape of the body in Steinberg’s device is required for its use in cleaning
body orifices and surrounding areas (Appeal Br. 14-15).
Appellants’ arguments are not persuasive. The references suggest a
device, like that shown in Steinberg’s Figure 8 (FF 3), with an attached,
lotion-impregnated sheet for applying sunscreen or insect repellent. A
person of ordinary skill in the art would reasonably expect that the device
suggested by the prior art would function with either two planar surfaces as
shown by Steinberg or one planar and one arcuate surface. The modification
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required by claim 6 is therefore within the scope of creative steps that a
person of ordinary skill in the art would employ.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art to combine
Brower’s lotion-impregnated sheet with Steinberg’s device.
SUMMARY
We affirm the rejection of claims 1-13 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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

lp

MICHAEL D. WIGGINS
950 HARMON
BIRMINGHAM MI 48009