Ex Parte Zickerman et al

Patent Trial and Appeal Board

Feb 8, 2019

14940813 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/940,813 11/13/2015 Terry Zickerman
27572 7590 02/12/2019
Harness Dickey (Troy)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
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.
17526-000001-US-COA 5916
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
troymailroom@hdp.com
sto-ptomail@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY ZICKERMAN and STEPHEN LIACI
Appeal 2018-002054
Application 14/940, 813 1
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 15, and 17-
33 (see Office Act. 2 1). Examiner entered rejections under 35 U.S.C.
§ 103(a) and obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Terry Zickerman and Stephen Liaci" as the real party
in interest (see Appellants' July 24, 2017 Appeal Brief (App. Br.) 3).
2 Examiner's March 20, 2017 Non-Final Office Action.
Appeal2018-002054
Application 14/940, 813
STATEMENT OF THE CASE
Appellants disclose "a cosmetic or dermatological sheet which
includes a water-insoluble sheet and a sunscreen fluid cosmetic composition
impregnated into the sheet" (Spec. 5: 19-21 ). Appellants' claims 1, 24, and
29 are representative and reproduced below:
1. A dermatological sheet for use in the application of a
sunscreen composition comprising:
a water-insoluble non-woven sheet having a length to
width ratio of greater than about 1.6 to 1, the water-insoluble
non-woven sheet having an untreated tensile strength of at least
15.5 lbs perpendicular to a grain of said water-insoluble non-
woven sheet, and
a sunscreen composition,
wherein said water-insoluble non-woven sheet is
impregnated with at least 20,054 milligrams (mg) of said
sunscreen composition, wherein said water-insoluble non-
woven sheet is sized sufficiently to facilitate a user to apply an
even application of said sunscreen composition to a one or
more body portions of said user, said tensile strength sufficient
to prevent tearing of said water-insoluble non-woven sheet
during application of said sunscreen composition.
(App. Br. 33 ( emphasis added).)
24. A dermatological sheet for use in the application of a
sunscreen composition comprising:
a water-insoluble non-woven sheet having a length to
width ratio of greater than about 1.6 to 1, the water-insoluble
non-woven sheet having a tensile strength of 15.5 lbs
perpendicular to a grain of the water-insoluble non-woven
sheet;
a sunscreen composition, the water-insoluble non-woven
sheet impregnated with at least 32,510 milligrams (mg) of the
sunscreen composition over an area greater than about 80
square inches;
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Application 14/940, 813
wherein the water-insoluble non-woven sheet has a
surface area to retain the sunscreen composition sufficient to
facilitate an even application of the sunscreen composition by a
user to one or more body portions of the user, the tensile
strength sufficient to prevent tearing of the water-insoluble non-
woven sheet during application of the sunscreen composition.
(Id. at 34--35 (emphasis added).)
29. A dermatological sheet for use in the application of a
sunscreen composition comprising:
a water-insoluble non-woven sheet having a surface area
greater than about 80 square inches on said water-insoluble
non-woven sheet and said water-insoluble non-woven sheet
having a length to width ratio greater than 1.6 to 1, said water-
insoluble non-woven sheet having a basis weight of at least 1.7
ounces per square yard and a thickness of at least 11 mils, said
water-insoluble non-woven sheet having a tensile strength of at
least 15.5 lbs perpendicular to a grain of said water-insoluble
non-woven sheet, and
a sunscreen composition,
wherein said water-insoluble non-woven sheet is
impregnated with at least 32,510 milligrams (mg) of said
sunscreen composition, and wherein said water-insoluble non-
woven sheet is sized sufficiently to facilitate a user to apply an
even application of said sunscreen composition to cover all or
part of a body of said user, said tensile strength sufficient to
prevent tearing of said water-insoluble non-woven sheet during
application of the sunscreen composition.
(Id. at 36 ( emphasis added).)
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Appeal2018-002054
Application 14/940, 813
Grounds of rejection before this Panel for review:
I. Claims 1, 15, and 17-33 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
the claims of Zickerman '5463 in view of Castanedo-Cazares and Kelly.
II. Claims 1, 15, and 17-33 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
the claims of Zickerman '8 84. 4,5
III. Claims 1, 15, 17-21, 23, 24, 26-29, and 31-33 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over the combination of Niedbala, 6
Smith '975, 7 Hauser, 8 Smith '928, 9 Shacklette, 1° Kelly, 11 and Castanedo-
Cazares.12
IV. Claims 22, 25, and 30 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, Castanedo-Cazares, Gott, 13 and Godbey. 14
3 Zickerman et al., US 9,192,546 B2, issued Nov. 24, 2015.
4 Zickerman et al., US 9,980,884 B2, issued May 29, 2018.
5 Because Application 14/940,903 issued as Zickerman '884 this rejection is
no longer provisional (cf Office Act. 24; Ans. 18-19).
6 Niedbala, US 5,017,365, issued May 21, 1991.
7 Smith, III et al., US 6,267,975 Bl, issued July 31, 2001.
8 Hauser et al., US 2005/0048856 Al, published Mar. 3, 2005.
9 Smith, III, US 6,491,928 Bl, issued Dec. 10, 2002.
10 Shacklett et al., US 2004/0171320 Al, published Sept. 2, 2004.
11 Kelly, US 2006/0247585 Al, published Nov. 2, 2006.
12 Juan Pablo Castanedo-Cazares MD, et al., A simple measure for applying
sunscreen while on holidays, 9 DERMATOLOGy ONLINE JOURNAL 23 (2003).
13 Gott et al., US 2003/0206940 Al, published Nov. 6, 2003.
14 Godbey et al., US 2002/0187181 Al, published Dec. 12, 2002.
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Appeal2018-002054
Application 14/940, 813
REJECTIONS ]-11:
Appellants provide no substantive argument with regard to the merits
of the outstanding obviousness-type double patenting rejections on this
record (see Office Act. 24--25; Ans. 18-19; cf App. Br. 30-31). To the
contrary, Appellants request "that the rejections on the ground of
nonstatutory double patenting be held in abeyance pending resolution of the
substantive rejections under 35 U.S.C. § 103(a) in the instant application"
and "stand[] ready to submit an appropriate terminal disclaimer at that time
to overcome any appropriate rejection on the ground of nonstatutory double
patenting" (App. Br. 30-31 ).
Because Appellants do not present arguments with regard to the
outstanding obviousness-type double patenting rejections, Rejections I-II,
they are summarily affirmed.
REJECTIONS 111-JV:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Office Act. 4--14; Ans. 3-13), and provide the following
findings for emphasis.
FF 1. Niedbala discloses a
sunscreen composition is added in any suitable manner to a
soft, pliable fibrous sheet material formed from any suitable
woven or nonwoven fiber or fiber mixture having sufficient wet
strength and absorbency to hold an effective sunscreen amount
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Application 14/940, 813
of the composition. The fibrous material includes both natural
and synthetic materials such as cotton, hemp, airlayed cellulose,
polyester, polypropylene, nylon, rayon and the like, including
blends thereof such as rayon/polypropylene, rayon/cellulose,
polyester/cellulose, polyester/rayon, and the like.
(Niedbala 7:5-15; see Office Act. 4; Ans. 3--4.)
FF 2. Examiner finds that Shacklette discloses a "fabric pad for
dermatological product [that] has a minimum tensile strength of about
30 lbs.fin." (Office Act. 7 (citing Shacklette ,r,r 4 and 19); Ans. 7).
FF 3. Smith '928 discloses dermatological pads "having a surface area of
from about 5 in2 to about 200 in2, preferably from about 6 in2 to about
120 in2, and more preferably from about 15 in2 to about 100 in2" (Smith '928
19:20-23; see Office Act. 7; Ans. 6-7).
FF 4. Kelly discloses that "[t]he targeted load for [its] Sunscreen Pad is up
to 16 grams. The pad dimension of 3.75"x4.5" will yield a core surface of
approximately 16 square inches for 16 grams of sunscreen----or effectively,
1 gram per square inch" (Kelly ,r 48; see Office Act. 7; Ans. 7)
FF 5. Examiner finds that Castanedo-Cazares discloses "sunscreen
application of 2mg/ cm2 on skin and [the] required amount [ of] for the whole
body is ... 32510mg" (Office Act. 8 (citing Castanedo-Cazares Table 1);
Ans. 7 (citing Castanedo-Cazares Table 1)).
FF 6. Examiner finds that the combination of Niedbala, Smith '975,
Hauser, Smith '928, Shacklette, Kelly, and Castanedo-Cazares fails to
"expressly teach [a] sheet with stitching and backing structure" and relies on
Gott and Godbey to make up for this deficiency in the combination of
Niedbala, Smith '975, Hauser, Smith '928, Shacklette, Kelly, and
Castanedo-Cazares (Office Act. 15-16; Ans. 14--15).
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Application 14/940, 813
ANALYSIS
REJECTION 111:
Based on the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares, Examiner concludes that, at
the time Appellants' invention was made, it would have been prima facie
obvious to, inter alia, have a fabric sheet with: (a) a tensile strength of at
least 15.5 lbs. perpendicular to a grain of a water-insoluble non-woven sheet
and (b) from 6-120 grams of sunscreen lotion on the sheet, which
encompasses both at least 20,054 mg and at least 32,510 mg (Office Act. 9
and 11; Ans. 8 and 11; see FF 1--4 ). Because Shacklette discloses a "fabric
pad for [a] dermatological product [that] has a minimum tensile strength of
about 30 lbs.fin," Examiner reasons that the combination of Niedbala, Smith
'975, Hauser, Smith '928, Shacklette, Kelly, and Castanedo-Cazares makes
obvious a dermatological sheet comprising a tensile strength of at least 15.5
lbs. perpendicular to a grain of a water-insoluble non-woven sheet (see
Office Act. 9; Ans. 8; FF 1-2). In addition, Examiner reasons that because
Smith '928 discloses a dermatological sheet/pad size of from 6-120 square
inches and Kelly discloses a dermatological sheet comprising sunscreen at a
concentration of 1 gram/square inch, the combination of Niedbala, Smith
'975, Hauser, Smith '928, Shacklette, Kelly, and Castanedo-Cazares
suggests a dermatological sheet comprising 6-120 grams of sunscreen
lotion, which encompasses both of at least 20,054 mg and at least 32,510 mg
(see Office Act. 11; Ans. 11; FF 3--4).
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Appeal2018-002054
Application 14/940, 813
Claim 1:
Appellants' claim 1 is reproduced above.
As discussed above, Kelly discloses a dermatological sheet
comprising sunscreen at a concentration of 1 gram/in2 (FF 4). Smith '928
discloses a dermatological sheet/pad that is preferably from about 6-120 in2
(FF 3). Therefore, the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares suggests, inter alia, a
dermatological sheet comprising sunscreen at a concentration of about 6-
120 grams/in2, which encompasses a dermatological sheet comprising at
least 20,054 mg of sunscreen (FF 3--4). Therefore, we are not persuaded by
Appellants' contention that Examiner's conclusion of obviousness "is a mere
conclusory statement without any additional evidence in the record to
support a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements set forth in the claimed invention"
(App. Br. 19 (disputing Examiner's findings regarding Smith '928, Kelly,
and Castanedo-Cazares); see also Reply Br. 5 ("[ n Jone of these references,
even when allegedly combined with the teachings of the other four ( 4)
references, disclose or otherwise suggest 'wherein said water-insoluble non-
woven sheet is impregnated with at least 20,054 milligrams (mg) of said
sunscreen composition' as recited in claim 1"); cf FF 3-5). For the
foregoing reasons, we are not persuaded by Appellants' contention regarding
Examiner's application of"' common sense' to supplement the Examiner's
positions" (Reply Br. 6).
In addition, Appellants' claim 1 requires, inter alia, the
dermatological sheet to have "an untreated tensile strength of at least 15.5
lbs perpendicular to a grain of said water-insoluble non-woven sheet" (see
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Application 14/940, 813
App. Br. 33). The combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares suggests such a
dermatological sheet having a tensile strength of 30 lbs.fin. (see generally FF
1-2). Appellants failed to establish an evidentiary basis on this record to
support a conclusion that the tensile strength of the dermatological sheet
suggested by the combination of with Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares is not at least 15.5 lbs
perpendicular to a grain of said water-insoluble non-woven sheet as required
by Appellants' claim 1. Thus, we are not persuaded by Appellants'
contention that the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares fails to disclose "the
claimed water-insoluble non-woven sheet having an untreated tensile
strength anything less than 30 lbs.Jin. to prevent[] the non-woven sheet
being tom apart during an actual application" (App. Br. 20 ( emphasis
added)).
Claim 24:
Appellants' claim 24 is reproduced above. The dermatological sheet
of Appellants' claim 24 comprises, inter alia, a "water-insoluble non-woven
sheet having a tensile strength of 15.5 lbs perpendicular to a grain of the
water-insoluble non-woven sheet" that is "impregnated with at least 32,510
milligrams (mg) of the sunscreen composition over an area greater than
about 80 square inches" (App. Br. 34--35).
Similar to Appellants' contentions with respect to Appellants' claim 1,
Appellants contend that the combination of Niedbala, Smith '975, Hauser,
Smith '928, Shacklette, Kelly, and Castanedo-Cazares fails to suggest a
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Application 14/940, 813
dermatological sheet comprising at least 32,510 mg of a sunscreen
composition over an area greater than about 80 square inches or an untreated
tensile strength that is "anything less than 30 lbs.in." (see App. Br. 22-25;
see generally Reply Br. 6).
For the reasons set forth above, we are not persuaded.
Claim 29:
Appellants' claim 29 is reproduced above. The dermatological sheet
of Appellants' claim 29 comprises, inter alia, "a water-insoluble non-woven
sheet having a surface area greater than about 80 square inches," wherein the
"water-insoluble non-woven sheet [has] a tensile strength of at least 15.5 lbs
perpendicular to a grain of said water-insoluble non-woven sheet," and
"wherein said water-insoluble non-woven sheet is impregnated with at least
32,510 milligrams (mg) of[] sunscreen composition" (App. Br. 36).
Similar to Appellants' contentions with respect to Appellants' claims
1 and 24, Appellants contend that the combination of Niedbala, Smith '975,
Hauser, Smith '928, Shacklette, Kelly, and Castanedo-Cazares fails to
suggest a dermatological sheet comprising at least 32,510 mg of a sunscreen
composition over an area greater than about 80 square inches or an untreated
tensile strength that is "anything less than 30 lbs.in." (see App. Br. 28-30;
see generally Reply Br. 6).
For the reasons set forth above, we are not persuaded.
REJECTION JV:
Based on the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, Castanedo-Cazares, Gott, and Godbey, Examiner
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Application 14/940, 813
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to modify the dermatological sheet suggested by
the combination of Niedbala, Smith '975, Hauser, Smith '928, Shacklette,
Kelly, and Castanedo-Cazares to include stitching and backing structure
suggested by the combination of Gott and Godbey (see Office Act. 16-17;
Ans. 15-16).
For the reasons discussed above, having found no deficiency in the
combination of Niedbala, Smith '975, Hauser, Smith '928, Shacklette, Kelly,
and Castanedo-Cazares, we are not persuaded by Appellants' contention that
Gott and Godbey fail to cure Appellants' asserted deficiencies in the
combination of Niedbala, Smith '975, Hauser, Smith '928, Shacklette, Kelly,
and Castanedo-Cazares (see App. Br. 30; see also Reply Br. 7).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 1, 24, and 29 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, and Castanedo-Cazares is affirmed. Claims 15 and
17-21 and 23 are not separately argued and fall with claim 1. Claims 26-28
are not separately argued and fall with claim 24. Claims 31-33 are not
separately argued and fall with claim 29.
The rejection of claims 22, 25, and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Niedbala, Smith '975, Hauser, Smith
'928, Shacklette, Kelly, Castanedo-Cazares, Gott, and Godbey is affirmed.
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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
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