Ex Parte Azar et alDownload PDFBoard of Patent Appeals and InterferencesFeb 25, 201010535536 (B.P.A.I. Feb. 25, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ZION AZAR and PINCHAS SHALEV ____________________ Appeal 2009-008826 Application 10/535,536 Technology Center 3700 ____________________ Decided: February 26, 2010 ____________________ 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 2 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 Appeal 2009-008826 Application 10/535,536 3 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. Appeal 2009-008826 Application 10/535,536 4 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 Appeal 2009-008826 Application 10/535,536 5 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 Appeal 2009-008826 Application 10/535,536 6 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 Appeal 2009-008826 Application 10/535,536 7 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 Appeal 2009-008826 Application 10/535,536 8 patenting rejection, even by default, before providing the Examiner an 1 opportunity to determine whether the rejection should be withdrawn. 2 3 4 5 6 Vsh 7 8 9 10 11 12 PRTSI 13 P.O. Box 16446 14 ARLINGTON, VA 22215 15 Copy with citationCopy as parenthetical citation