Ex Parte Barone

Board of Patent Appeals and Interferences

Sep 25, 2007

10132904 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRIS A. BARONE
____________

Appeal 2007-1666
Application 10/132,904
Technology Center 3700
____________

Decided: September 25, 2007
____________

Before JENNIFER D. BAHR, LINDA E. HORNER and JOSEPH A. FISCHETTI,
Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant Chris A. Barone seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1-35. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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This appeal arises from the Examiner’s Final Rejection, mailed November
21, 2005. The Appellant filed an Appeal Brief in support of the appeal on May 12,
2006. An Examiner’s Answer to the Appeal Brief was mailed on July 3, 2006. On
September 8, 2006, Appellant filed a Reply Brief.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a razor head having a razor with a guard which is said to
provide a razor that is readily manufacturable, and one that provides desirable
comfort and performance (Specification 1:¶0001 and 2:¶0004).
Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A razor cartridge, comprising:

a frame;

one or more razor blades attached to the frame;

a guard attached to the frame forward of the one or more razor
blades, the guard comprising a water-insoluble compliant component
and a water-soluble lubricious component integrally formed therewith
and substantially uniformly mixed therewith, thereby enabling the
guard to be compliant and lubricious when exposed to water; and

wherein the integrally formed and substantially uniform
mixture is the initial skin-contacting surface of the guard.
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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:

Yin US 5,711,076 Jan. 27, 1998

The following rejections are before us for review.
Claims 1-35 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Yin.
ISSUE
The anticipation issues before us rest on whether the Appellant has shown
that the Examiner erred in rejecting claims 1-35 under 35 U.S.C. § 102(b) as
anticipated by Yin.
The first anticipation issue turns on whether Yin expressly or inherently
discloses a guard comprised of a water-insoluble compliant component and a
water-soluble lubricious component integrally formed therewith and substantially
uniformly mixed therewith.
The second anticipation issue turns on whether Yin expressly or inherently
discloses that the integrally formed and substantially uniform mixture of the guard
is capable of being positioned relative to a skin surface so as to be the initial skin-
contacting surface.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:

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1. Yin discloses four embodiments of a guard structure 4, and each has a
composite material component associated with it as identified in
Figs. 2, 3, 4, and 5 as elements 24, 36, 46, and 52, respectively. We read the
composite material component 24, 36, 46, and 52 in the guard structure 4 of
Yin as the guard. The guard composite material in each of the four
embodiments of Yin is disclosed as comprised of a matrix of a water-
insoluble polymer and, dispersed within the matrix, a skin lubricating water-
soluble polymer, thereby making it a substantially uniform mixture and
integrally formed via the polymer matrix (Yin, col. 4, ll. 14-20).
2. The guards 24 and 36 in Yin, as illustrated in two embodiments, are attached
to the frame by adhesive (Yin, col. 3, ll. 18, 29; Figs. 2 and 3).
3. Yin discloses a frame or housing 10 to which one or more blades 2, 3 are
attached (Yin, col. 2, ll. 55-60).
4. We find that the cartridge 10 in Yin is capable of functioning as claimed
because a user can tilt the cartridge so that the integrally formed and
substantially uniform mixture, and not the flexible fins 26, 38, 48, 58,
engage the user’s skin first.
5. Yin discloses that the “flexible fins 26, 38, 48, 58 engage the user’s skin
first” (Yin, col. 5, ll. 8-9).
6. Yin discloses that the fins function only to: 1. stretch the skin to “pull on the
shaving stubble” (Yin, col. 5, ll., 9, 10), 2. act as a squeegee (Yin. col. 5, l.
13), and 3. provide a pleasant tactile sensation (Yin col. 5, ll. 14, 15).

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7. Yin discloses that the backstop 28 defines a fixed reference for the desirable
exposure of the front blade 2 (Yin, col. 3 ll. 10-13), and not the fins.
8. Yin refers to the multi-component element mounted on the rigid base 22 as
the “guard structure 4” (Yin, col. 2, l. 65; col. 3, ll.4-8), rather than in the
singular, “a guard”, as claimed.

PRINCIPLES OF LAW
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
The Board may find in the prior art a feature which is capable of
performing a function recited in the claims. See In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971) (“where the Patent Office has reason to
believe that a functional limitation asserted to be critical for establishing novelty in
the claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied on.”)
“The Board's finding that the scaled-up version of figure 5 of Harz would be
capable of performing all of the functions recited in Schreiber's claim 1 is a factual
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finding, which …[otherwise] …must be shown to be clearly erroneous…” In re
Schreiber, 128 F.3d 1473, 1479, 44 USPQ2d 1429, 1434 (Fed. Cir. 1997).

ANALYSIS
We affirm the rejection of claims 1-35 under 35 U.S.C. § 102(b) as being
anticipated by Yin. Because the Appellant’s arguments as to independent claim 19
are limited to the same arguments presented for claim 1, we affirm the rejection of
claim 19 for the same reasons set forth infra with respect to claim 1.
The Appellant does not provide a substantive argument as to the separate
patentability of claims 2-18 that depend from claim 1, which is the sole
independent claim among those claims. Therefore, claims 2-18 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2006). Likewise, the Appellant does not provide a
substantive argument as to the separate patentability of claims 20-35 that depend
from claim 19, which is the sole independent claim among those claims.
Therefore, claims 20-35 fall with claim 19.
Appellant argues two points in its Briefs.
First, the Appellant argues that:
Yin fails to disclose, teach, or suggest a razor cartridge
having a guard attached to a frame forward of one or
more razor blades, the guard comprising a water-
insoluble compliant component and a water-soluble
lubricious component integrally formed therewith and
substantially uniformly mixed therewith, as recited in
claim 1.
(Appeal Br. 5, emphasis in original)
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Second, the Appellant argues that the water-insoluble compliant and water-
soluble lubricious components in Yin (24, 36, 46, and 52) do not constitute the
initial skin-contacting surface of the guard, as required by claim 1. Rather, the
Appellant contends that the initial skin-contacting surface of the guard in Yin is
defined by the fins 26, 38, 48, and 58 that are leading, and hence would first
engage the user's skin (Appeal Br. 6, 7).
Addressing the Appellant’s first argument, the crux of this argument rests on
determining what “therewith” refers to in claims 1 and 19. We read the term
“therewith”, first and second occurrences, to refer to the claim element which
immediately precedes the “water soluble lubricious component”, namely, the
“water insoluble compliant component.” Thus, we interpret claims 1 and 19 to
require only that the “water soluble lubricious component” and the “water
insoluble compliant component” be substantially uniformly mixed and integrally
formed with one another.
As found supra (FF 2), the guard in Yin is comprised of a matrix of a water-
insoluble polymer and, dispersed within the matrix, a skin lubricating water-
soluble polymer. Thus, Yin’s composite material is comprised of a water-insoluble
compliant component and a water-soluble lubricious component, which by virtue
of the matrix, are integrally formed and substantially uniformly mixed with each
other, as required by independent claims 1 and 19.
The Appellant further argues Yin discloses a guard structure comprised of
three distinct components, whereas the Appellant’s guard is an integrally formed
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mixture (Appeal Br. 5). Again, underlying this argument is how the guard is
defined relative to the remaining structure of the cartridge 10 in Yin. We note that
Yin refers to the multi-component element mounted on the rigid base 22 as the
“guard structure 4” (FF 8), rather than in the singular, “a guard”, as claimed. This
thus leads to our interpretation that the composite material or guard (24, 36, 46,
and 52) in Yin is one component of the collective guard structure 4.
Claims 1 and 19 require that the guard is attached to the frame. As found
supra (FF 3), in at least two embodiments, the composite material or guards 24 and
36 in Yin are attached to the frame or base structure 22 by adhesive.
Appellant attempts to further distinguish Yin by the claim limitation of “the
integrally formed and substantially uniform mixture is the initial skin-contacting
surface of the guard” (Appeal Br. 6-7). We reject this argument.
Preliminarily, we agree with the Appellant that the integrally formed and
substantially uniform mixture (24, 36, 46, 52) of Yin is not the initial skin-
contacting surface of the guard because Yin discloses that the “flexible fins 26, 38,
48, 58 engage the user’s skin first” (FF 5). However, this disclosure states that the
fins function only to: 1. stretch the skin to “pull on the shaving stubble” (FF 6), 2.
act as a squeegee (FF 6), and 3. provide a pleasant tactile sensation (FF 6). We
find that while these functions are desirable, they are not critical to cutting stubble
by the blades 3, 3 in Yin because it is the backstop 28 which defines a fixed
reference for the desirable exposure of the front blade 2 (FF 7), and not the fins.
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We thus find that Yin is still capable of cutting stubble without having the fins first
engage the skin surface.
Furthermore, we interpret the phrase in claim 1, “wherein the integrally
formed and substantially uniform mixture is the initial skin-contacting surface of
the guard” to be functional language, because it describes how the claimed
cartridge functions when in use by a user. The cartridge 10 in Yin is capable of
functioning as claimed because a user can tilt the cartridge so that the integrally
formed and substantially uniform mixture, and not the flexible fins 26, 38, 48, 58,
engage the user’s skin first (FF 4). This is particularly true in the embodiment of
Fig. 5 where the height of the fins 58 is about equal to that of the guard 52, thereby
allowing the guard 52 to be exposed over the fins 58 when tilted to the necessary
skin contacting angle.

CONCLUSIONS OF LAW
We sustain the Examiner’s rejection of claims 1-35 under 35 U.S.C.
§ 102(b) as anticipated by Yin.
Appellant is not entitled to a patent containing the claims on appeal.

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DECISION
The decision of the Examiner to reject claims 1-35 is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

vsh

RICHARD R. MICHAUD
THE MICHAUD-DUFFY GROUP, LLP
306 INDUSTRIAL PARK ROAD, SUITE 206
MIDDLETOWN CT 06457