Voesh Corporation

Patent Trials and Appeals Board

Apr 14, 2020

15099315 - (D) (P.T.A.B. Apr. 14, 2020)

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.
15/099,315 04/14/2016 Seunghee Oh 803-3 7156
24336 7590 04/14/2020
TUTUNJIAN & BITETTO, P.C.
401 Broadhollow Road, Suite 402
Melville, NY 11747
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEUNGHEE OH and JOSEPH CHOI

Appeal 2019-005414
Application 15/099,315
Technology Center 3700
____________

Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 44–51 and 53–58. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Voesch
Corporation. Appeal Br. 4.
Appeal 2019-005414
Application 15/099,315

2
BACKGROUND
“The present disclosure relates generally to a beauty product and more
specifically to a method, apparatus, and system for beauty or skin-care
services and products.” Spec. ¶ 2.
CLAIMS
Claims 44 and 53 are the independent claims on appeal. Claim 44 is
illustrative of the appealed claims and recites:
44. A system for performing a specific beauty or skin-care
treatment having a plurality of discrete steps, comprising:
a plurality of skin-care products;
each of said plurality of skin-care products are
individually packaged in separate inner packages;
each of the inner packages includes one of said skin-care
products in a specific, predetermined quantity that is required for
performance of a single discrete step of the beauty or skin-care
treatment utilizing the skin-care product;
each of the inner packages for the plurality of skin-care
products includes indicia indicating the discrete step that the
skin-care product is configured to be used therefor;
said inner packages are disposed collectively in an outer
package; and
said outer package includes indicia representative of the
specific beauty or skin-care treatment.
Appeal Br. 19.
Appeal 2019-005414
Application 15/099,315

3
REJECTIONS
1. The Examiner rejects claims 44–47, 49, 51, 53, 55, 56, and 58 under
35 U.S.C. § 102(a)(1) as anticipated by Lori.2
2. The Examiner rejects claims 44–47, 49, 51, 53, 55, 56, and 58 under
35 U.S.C. § 103 as unpatentable over Lori.
3. The Examiner rejects claims 48 and 57 under 35 U.S.C. § 1033 as
unpatentable over Lori in view of Laske.4
4. The Examiner rejects claims 50 and 54 under 35 U.S.C. § 103 as
unpatentable over Lori in view of Luber.5
DISCUSSION
Anticipation by Lori
Each of the independent claims on appeal requires a system with inner
packages that include a skin-care product “in a specific, predetermined
quantity that is required for performance of a single discrete step of” a
beauty or skin-care treatment. Appellant asserts that this limitation requires
an amount “such that the skin-care product in the inner package is utilized in
its entirety for each performance of each discrete step of the specific
treatment.” Appeal Br. 10. The Examiner finds that this language is
subjective because different users may desire different quantities for a single
step, and the predetermined quantity only requires that the amount of

2 Lori, “Make Your Own Spa Gift Baskets,”
www.spafromscratch.com/creating-the-perfect-spa-gift-baskets/, pub. Sept.
24, 2010.
3 We understand the Examiner’s alternative indication that this may be an
anticipation rejection to be a harmless typographical error.
4 Laske, US 2012/0308166 A1, pub. Dec. 6, 2012.
5 Luber et al., US 2009/0181133 A1, pub. July 16, 2009.
Appeal 2019-005414
Application 15/099,315

4
product has been determined before it is placed in the inner packages of the
system. Final Act. 8–9. Further, the Examiner finds that the claim uses the
open-ended language “comprising” such that the claim requires at least an
amount that can be used in a single step, but may contain more. Id. at 9.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). When read in light of the Specification, we determine that the
claimed “specific, predetermined quantity that is required for performance of
a single discrete step of” a beauty treatment requires an amount that is
sufficient to perform one step of a beauty treatment one time, with the intent
that all or most of the contents of each inner package will be used up upon
the performance of that step.
In reaching this determination, we are guided by both the
Specification and the plain meaning of the claim language. First, we agree
with Appellant that one would consider the claim language to require an
amount that is enough to only provide for the application of a single step of a
single treatment. The claim requires not only a predetermined quantity, but
a “specific, predetermined quantity” and later requires that the quantity
required is for “a single discrete step” of a treatment. Thus, the claim
requires something more limited than only a “predetermined quantity.”
Rather, it requires a specific quantity for a single discrete step of a treatment.
By using the word “specific” and the phrase “single discrete step,” one of
ordinary skill in the art would understand that the quantity provided must be
Appeal 2019-005414
Application 15/099,315

5
specific to a single application of a single step in the treatment. As
discussed below, this understanding of the claim is consistent with every
description of the quantities provided that we have found in the
Specification.
In every instance that a specific amount is described in the
Specification, the Specification indicates that the inner packages are “single-
serve” packages. See Spec. passim. Further, the Specification discloses that
the single-serve inner packages are each designed to “comprise a step in a
beauty or skin-care treatment” and are for “a single use.” Id. at ¶¶ 10, 16;
see also id. at ¶ 49. The Specification further describes that the packages
“may6 be filled with measured amounts of beauty or skin-care products
sufficient for a single application.” Id. at ¶ 49. The Specification also
describes the advantages obtained by including single-serve packages,
including the prevention of contamination by limited exposure to the
environment; the standardization of treatment regimens; and easier inventory
accounting. Id. at ¶¶ 13, 53. Thus, when reading the Specification one of
ordinary skill in the art would understand that the invention described
provides only quantities of product suitable for only a single application in a
single step of a treatment.
Based on the foregoing, we interpret the claim language to require
inner packages with a quantity of product that is sufficient only to provide

6 Although the Specification often uses the open-ended language “may” in
describing the quantity of package contents, the Specification does not
disclose any particular embodiments in which other quantities are used. We
understand the use of this language to only provide for variations in the
quantity used without departing from the intent to provide “single-serve”
portions.
Appeal 2019-005414
Application 15/099,315

6
one application of one step of a treatment. The Examiner has not established
that Lori discloses providing inner packages with the quantity required by
the claim, as interpreted. Accordingly, we do not sustain the anticipation
rejection of the independent claims 44 and 53. We also do not sustain the
anticipation rejection of dependent claims 45–47, 49, 51, 55, 56, and 58.
Obviousness over Lori
The Examiner alternatively determines that the independent claims
would have been obvious over Lori alone. Final Act. 5–6. However, the
obviousness rejection is only directed to the indicia provided on the outer
packaging in Lori and does not address the claim language discussed above.
Thus, for the reasons provided above, we do not sustain the obviousness
rejection of claims 44–47, 49, 51, 53, 55, 56, and 58.
Obviousness of Claims 48, 50, 54, and 57
With respect to the obviousness rejections of claims 48, 50, 54, and
57, the Examiner does not provide additional findings or reasoning that
cures the deficiency in the rejections of the independent claims, as discussed
above. Accordingly, we also do not sustain the rejection of claims 48, 50,
54, and 57.

CONCLUSION
We REVERSE the rejections of claims 44–51 and 53–58.

In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
44–47, 49,
51, 53, 55,
56, 58
102(a)(1) Lori 44–47,
49, 51,
Appeal 2019-005414
Application 15/099,315

7
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
53, 55,
56, 58
44–47, 49,
51, 53, 55,
56, 58
103 Lori 44–47,
49, 51,
53, 55,
56, 58
48, 57 103 Lori, Laske 48, 57
50, 54 103 Lori, Luber 50, 54
Overall
Outcome
44–51,
53–58

REVERSED