Ex Parte Azar et al

Board of Patent Appeals and Interferences

Feb 25, 2010

10535536 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ZION AZAR and PINCHAS SHALEV
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Appeal 2009-008826
Application 10/535,536
Technology Center 3700
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Decided: February 26, 2010
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Before JENNIFER D. BAHR, JOHN C. KERINS
and STEVEN D.A. McCARTHY, Administrative Patent Judges.

Opinion of the Board filed by BAHR, Administrative Patent Judge.
Dissenting Opinion filed by McCARTHY, Administrative Patent Judge.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008826
Application 10/535,536

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The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 7, 9-11, 13-16 and 18-36. We have 2
jurisdiction under 35 U.S.C. § 6(b). We do not sustain the final rejections of 3
claims 7, 10, 11, 13 and 15 under 35 U.S.C. § 102(b) as being anticipated by 4
Kelman (WO 92/16338, publ. Oct. 1, 1992); of claims 9 and 14 under 35 5
U.S.C. § 103(a) as being unpatentable over Kelman and Iderosa (US 6
5,065,515, issued Nov. 19, 1991); and of claims 16 and 18-36 under 7
§ 103(a) as being unpatentable over Kelman and Bermingham (US 8
3,045,345, issued Jul. 24, 1962). We summarily affirm the provisional 9
rejection of claims 7 and 11 under the judicially created doctrine of 10
obviousness-type double patenting as being unpatentable over claim 1 of 11
Application 11/571,753 (published on August 27, 2009 as US 2009-0211101 12
A1). 13
Claims 7 and 11 are independent: 14
15
7. A hair cutting apparatus comprising a 16
structure adapted for contacting an area of skin 17
having hair, the apparatus comprising: 18
a) a heated elongate element heated to 19
a temperature sufficient to cut hair, mounted on the 20
structure; and 21
b) an electrostatically charged 22
element adapted for collecting hair. 23
24
11. A method of collecting cut hair, 25
comprising: 26
27
a) cutting hair with a heated elongate 28
element; and 29
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b) collecting the hair cuttings from the 1
skin of the user with an electrostatically charged 2
element. 3
4
The Obviousness-type Double Patenting Rejection 5
The Appellants have not addressed, or even acknowledged, the double 6
patenting rejection of claims 7 and 11 in either the Appeal Brief or the Reply 7
Brief. The Appellants failed to address this rejection even though the 8
Examiner pointed out in the Answer that the rejection remains at issue in the 9
appeal. (See Ans. 3). The Examiner has not withdrawn the obviousness-10
type double patenting rejection. That rejection is part of the “decision of the 11
primary examiner” which the Board shall review on appeal. See 12
35 U.S.C. §§ 6 (b) and 134(a). Since the Appellants provide no reason why 13
claims 7 and 11 might be patentable over claim 1 of Application 11/571,753, 14
the rejection is affirmed. 15
The Examiner’s attention is drawn to section 804 I.B.1. of the 16
MANUAL OF PATENT EXAMINING PROCEDURE (8th ed., rev. 7, July 2008) in 17
connection with further proceedings in the present application.1 18
19
The Rejections under 35 U.S.C. §§ 102 and 103 20
Kelman discloses a hair cutting apparatus including a laser source 14 21
and laser beam transfer optics 16. The laser beam transfer optics 16 direct a 22
laser beam generated by the laser source 14 onto hairs 19 to be cut by the 23
shaver. (Kelman 5, ll. 2-9). Kelman’s drawing figures depict the laser beam 24

1 Our decision to summarily affirm this rejection does not preclude the
Examiner from withdrawing the rejection pursuant to United States Patent
and Trademark Office policy, in the event that the Examiner determines that
the claims in the present application are otherwise allowable.
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as performing either a hair cutting function in which the beam approaches 1
the skin surface at a relatively sharp angle or a shaving function in which the 2
beam approaches the skin surface at a relatively shallow angle. (Compare 3
Kelman, fig. 4 with id., figs. 2A-3B). Kelman discloses combining the laser 4
source 14 and the laser transfer optics 16 with an electrostatic apparatus for 5
collecting loose hair. (Kelman 6, l. 24 – 7, l. 3). 6
The Examiner finds that either Kelman’s laser beam or the air in the 7
path of Kelman’s laser beam is a “heated elongate element heated to a 8
temperature sufficient to cut hair” as recited in claim 7 and a “heated 9
elongate element” used for cutting hair as recited in claim 11. (Ans. 4-5 and 10
10). The Examiner premises this finding either on Kelman’s disclosure that 11
the laser beam is sufficiently energized to vaporize or carbonize the hair to 12
be cut (see Kelman, 5, ll. 18-24) or on the understanding that the laser beam 13
significantly heats the air along or near the path of the beam. (Ans. 10-11). 14
The Appellants dispute the premises underlying the Examiner’s findings. 15
(Reply Br. 2-4). 16
The Examiner erred in finding that either Kelman’s laser beam or the 17
air in the path of Kelman’s laser beam is a “heated elongate element heated 18
to a temperature sufficient to cut hair” as recited in claim 7 and a “heated 19
elongate element” used for cutting hair as recited in claim 11. The 20
Appellants do not dispute that Kelman’s laser beam is sufficiently energized 21
to vaporize or carbonize hair. The Examiner fails to provide a sound basis 22
for belief that the laser beam is necessarily a heated element, however. As 23
the Appellants point out, a laser beam might transfer energy to an object in 24
the form of electromagnetic waves. The hair or skin irradiated by the laser 25
beam may absorb the electromagnetic waves to convert the energy into the 26
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form of heat. (Reply Br. 3). Since the laser beam itself need not transfer 1
energy in the form of heat, the beam is not inherently a heated elongate 2
element, much less a heated elongate element heated to a temperature 3
sufficient to cut hair. 4
Neither has the Examiner provided a sound basis for belief that the 5
laser beam necessarily either heats the air in the path of the beam to a 6
temperature sufficient to cut hairs recited in claim 7 or that the air in the path 7
of the beam cuts hair as recited in claim 11. As the Appellants point out, it 8
would be undesirable for a laser beam to dissipate energy in the form of heat 9
to the air in which the beam travels. Such energy dissipation would quickly 10
attenuate the laser beam itself. (Reply Br. 3). The Examiner provides no 11
evidence that the air in the path of a laser beam would be heated to a 12
temperature sufficient to cut hair. Neither does the Examiner provide 13
technical reasoning sufficient to show that such a degree of heating of the 14
surrounding air would be susceptible of instant and unquestionable 15
demonstration as being well-known. 16
Therefore, we do not sustain the Examiner’s finding that Kelman 17
anticipates either independent claim 7, independent claim 11 or dependent 18
claims 10, 13 and 15. The Examiner erred in rejecting claims 7, 10, 11, 13 19
and 15 under § 102(b) as being anticipated by Kelman. 20
Iderosa discloses a shaving device 10 including a cutting blade 12 and 21
either a laser device 14 or a heating element 15 having a rounded or beveled 22
heating edge 32 for heating the hair to be cut to facilitate cutting by the 23
cutting blade 12. (Iderosa, col. 2, ll. 63-67 and col. 3, l. 52 – col. 4, l. 9). 24
Iderosa discloses neither the use of the laser device 14 or the heating element 25
15 to cut hair nor that the heating element 15 is heated to a temperature 26
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sufficient to cut hair. The Examiner fails to provide reasoning explaining 1
how the teachings of Iderosa might remedy the deficiency of Kelman in 2
failing to disclose a “heated elongate element heated to a temperature 3
sufficient to cut hair,” as incorporated by reference into claim 9 from claim 4
7, or a “heated elongate element” used for cutting hair, as incorporated by 5
reference into claim 14 from claim 11. The Examiner erred in rejecting 6
claims 9 and 14 under § 103(a) as being unpatentable over Kelman and 7
Iderosa. 8
Bermingham discloses an electronic shaving head including a tubular 9
cutter member 20 and a U-shaped shear plate 14 including openings 16 for 10
allowing hair outside the shear plate 14 to contact the cutting member 20 11
inside the shear plate 14. (Bermingham, col. 1, ll. 49-64). Bermingham 12
does not disclose any element heated to a temperature sufficient to cut hair. 13
The Examiner fails to provide reasoning explaining how the teachings of 14
Bermingham might remedy the deficiency of Kelman in failing to disclose a 15
“heated elongate element heated to a temperature sufficient to cut hair,” as 16
incorporated by reference into claims 18-23 from claim 7, or a “heated 17
elongate element” used for cutting hair, as incorporated by reference into 18
claims 16 and 24-36 from claim 11. The Examiner erred in rejecting claims 19
16 and 18-36 under § 103(a) as being unpatentable over Kelman and 20
Bermingham. 21
22
DECISION 23
We REVERSE the Examiner’s decision as to claims 9, 10, 13-16 and 24
18-36. We AFFIRM the Examiner’s decision as to claims 7 and 11. 25
AFFIRMED-IN-PART 26
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McCARTHY, Administrative Patent Judge, dissenting, 1
I join in the majority opinion with respect to the rejections under 35 2
U.S.C. §§ 102 and 103. 3
I disagree with the summary affirmance of the provisional rejection 4
of claims 7 and 11 under the judicially created doctrine of obviousness-type 5
double patenting. We are reversing all of the final rejections entered in the 6
present application. Furthermore, the present application has an earlier 7
filing date than Application 11/571,753. When the only rejection remaining 8
in an application is a provisional obviousness-type double patenting 9
rejection over a claim of a later-filed application, Patent and Trademark 10
Office policy favors withdrawal of the rejection. See MANUAL OF PATENT 11
EXAMINING PROCEDURE § 804 I.B.1. (8th ed., rev. 7, July 2008). The Board 12
does not have the authority to withdraw a rejection. 13
The decision whether to enter additional rejections against the claims 14
of the application or to withdraw the provisional double-patenting rejection 15
lies with the Examiner. As the record now stands, withdrawal may be 16
appropriate. If the Examiner chooses to withdraw the provisional rejection, 17
the propriety of the rejection will become moot. Under these circumstances, 18
we have the authority to decline to address the rejection. 19
Our decision to summarily affirm the provisional rejection of claims 7 20
and 11 will become part of the prosecution history of any patent which 21
might issue from this application, even if the provisional rejection is 22
subsequently withdrawn. What effect this summary affirmance might have 23
(or should have) on any such patent, if any, cannot be predicted with 24
certainty. I would not judge the propriety of the provisional double 25
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patenting rejection, even by default, before providing the Examiner an 1
opportunity to determine whether the rejection should be withdrawn. 2
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PRTSI 13
P.O. Box 16446 14
ARLINGTON, VA 22215 15