11029748 (B.P.A.I. Aug. 30, 2010)

Ex Parte Colthurst

Board of Patent Appeals and InterferencesAug 30, 2010

11029748 (B.P.A.I. Aug. 30, 2010)

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. 11/029,748 12/29/2004 James Richard Colthurst 4033.3013 US 3460 38473 7590 08/30/2010 ELMORE PATENT LAW GROUP, PC 515 Groton Road Unit 1R Westford, MA 01886 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 08/30/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES RICHARD COLTHURST ____________ Appeal 2009-013331 Application 11/029,748 Technology Center 3700 ____________ Before LINDA E. HORNER, WILLIAM F. PATE III, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013331 Application 11/029,748 2 James Richard Colthurst (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 21-23, 25, and 28-30. Claims 2-5, 7, 11-13, and 26 are allowed, and claims 1, 6, 8-10, 14- 20, 24, and 27 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s claimed invention is a razor head which imparts a cutting and rotary action on to the hair/stubble being shaved. Spec. 2, para. [0004]. This rotary action is achieved by providing a razor head that features blades intersecting at a point to form a cross. Spec. 2, para. [0011]. Appellant seeks review of the following rejections: 1. The Examiner rejected claims 21-23 and 28-30 under 35 U.S.C. § 102(b) as being anticipated by Romanoff (U.S. Des. 358,969; issued June 6, 1995). 2. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Romanoff and Streeter (U.S. 534,728; issued February 26, 1895). The sole issue presented by this appeal is whether Romanoff’s pizza cutter is inherently capable of use as a razor head for shaving. Independent claims 21 and 28 are drawn to razor heads for shaving having a housing and two hair cutting blades having cutting edges that define a shaving surface. Romanoff shows a device with a housing that can be used to cut a pizza. The Examiner took the position that Romanoff’s Appeal 2009-013331 Application 11/029,748 3 pizza cutter is structurally the same as the claimed razor head and is inherently capable of being used for shaving. Ans. 3.2 Appellant submitted argument and declaration evidence to rebut the Examiner’s finding that Romanoff’s pizza cutter is capable of use as a razor head for shaving. App. Br. 4-8; Reply Br. 1-5; and Declaration Under 37 C.F.R. 1.132 of Carolyn Elmore. We find that Appellant has adequately rebutted the Examiner’s finding. In particular, we agree with Appellant that Romanoff’s pizza cutter is not capable of being used to shave hair because Romanoff’s pizza cutter, which is the size of at least one pizza, is too large and unwieldy to be suitable for use for shaving (App. Br. 7-8), and because the “blade” of a pizza cutter is typically much duller than a razor blade and thus is not inherently capable of being used for shaving (App. Br. 5). The declaration evidence further establishes that pizza cutters do not inherently possess the capability of being used for cutting hairs during shaving. See Elmore Decl. (in which Ms. Elmore declared that she was unable to remove hair by shaving her leg or her dog using an ordinary, household, rotary pizza cutter). As such, we will not sustain the Examiner’s rejection of claims 21- 23 and 28-30 under 35 U.S.C. § 102(b) as being anticipated by Romanoff. 2 The Examiner also states that he conducted an experiment using a rotary pizza cutter and an elongated pizza cutter to remove a few hairs from a block of pork with skin on. Ans. 4-5. We find the probative value of this statement is limited because the Examiner has not sworn to its accuracy and because the statement lacks sufficient details to ascertain the method used to remove the hair. As such, this statement fails to provide an adequate basis for a finding that a pizza cutter is capable of use for shaving. Appeal 2009-013331 Application 11/029,748 4 The Examiner relies on the same inherency finding as to Romanoff’s pizza cutter in the rejection of claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Romanoff and Streeter. The Examiner relies on Streeter to disclose only a mechanism for removably connecting a cutting head to a handle. Ans. 4. We will not sustain the rejection of claim 25 for the same reasons discussed supra in our analysis of the anticipation rejection. The decision of the Examiner to reject claims 21-23, 25, and 28-30 is reversed. REVERSED nlk ELMORE PATENT LAW GROUP, PC 515 Groton Road Unit 1R Westford, MA 01886