Ex Parte Duff et al

Patent Trial and Appeal Board

Dec 8, 2017

13561904 (P.T.A.B. Dec. 8, 2017)

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.
13/561,904 07/30/2012 Ronald Richard Duff JR. Z-8604M 1614
27752 7590 12/12/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD RICHARD DUFF JR., JEFFREY STUART PARKER,
YONGQING JU, and XIANDONG WANG
Appeal 2017-002859
Application 13/561,904
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ronald Richard Duff Jr. et al. (Appellants)1 seek our review under 35
U.S.C. § 134(a) of the Examiner’s rejections2 under 35 U.S.C. § 103(a) of
claims 1, 3, 6—8, and 16 as unpatentable over Yamada (EP 1 287 953 Al,
pub. Mar. 5, 2003), and either Huang (CN 101786883 A, pub. July 28, 2010)
or Molian (WO 03/068503 Al, pub. Aug. 21, 2003).3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Gillette Company.
Br. 1.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated May 4, 2015 (“Final Act.”).
3 Claims 2, 4, 5, 9—15 and 17—19 are withdrawn. Final Act. 1.
Appeal 2017-002859
Application 13/561,904
CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent claims. Claim 1 is reproduced
below and illustrates the claimed subject matter.
1. A razor blade apparatus comprising:
a sharpened substrate having at least one layer of BAM
material disposed thereon.
ANALYSIS
Obviousness of Claims 1, 3, 6—8, and 16 over Yamada and either
Huang or Molian
Appellants argue claims 1,3, 6—8, and 16 together in contesting the
rejection of these claims as obvious over Yamada and either Huang or
Molian. See Br. 2—9. We select claim 1 as the representative claim for this
group, and the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Regarding claim 1, the Examiner determines that Yamada discloses “a
sharpened substrate/a component having at least one layer of coating [] using
a boride of either or both A1 & Mg, since [Yamada] teaches the alternatives
including a boride of [] A1 & Mg,” but “fails to expressly teach BAM
(AlMgBw).” Final Act. 2 (citing Yamada, 136). However, the Examiner
finds that “[Huang] teaches the use of at least one layer of BAM material on
a ceramic knife tool (e.g., Abstract),” and that “[Molian] teaches a cutting
tool with at least one layer of BAM material.” Id. Based on the foregoing,
the Examiner reasons that it would have been obvious “to provide at least
one layer of BAM material as taught by [Huang] or [Molian] on the device
of [Yamada] in order to increase wear-resistance.” Id.
In taking issue with the Examiner’s findings and conclusions,
Appellants first contend that “[Yamada] does not suggest or motivate BAM
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Application 13/561,904
materials in any form, let alone as a coating upon a sharpened substrate on a
razor blade.” Br. 5. However Appellants are simply attacking Yamada in
isolation for lacking support for the teachings for which it was not cited.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the
Examiner explains, Huang and Molian “specifically teach AlMgBw being
used as a hard coating to provide friction and wear-resistance surface.” Ans.
4. Appellants have not disputed these findings.
Appellants also contend that neither Huang nor Molian contains “a
disclosure or suggestion of a razor blade,” alleging that such a teaching “is
colored with hindsight and only comes from Appellants’] invention itself,”
and that “there is no incentive for one of ordinary skill in the art to further
modify [Yamada] as suggested by the Office.” Br. 6—7. However, we are
not persuaded that the combination of Yamada with either Huang or Molian
impermissibly uses the disclosure of the present patent application as a
guide. As the Examiner explains, Huang and Molian “clearly teach the use
of BAM material with [cutting] tools,” so that “it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the applicant’s disclosure.” Ans. 4.
Furthermore, Appellants have not identified any knowledge that the
Examiner relied upon that was not otherwise within the level of ordinary
skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d 1689,
1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves some
hindsight.”).
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Appeal 2017-002859
Application 13/561,904
Appellants also contend that “a razor blade of course is not analogous
to an industrial cutting tool in size or structure,” and for that reason, Huang
and Molian are “non-analogous art that would not be considered by one of
ordinary skill in the art of shaving razors [of Yamada].” Br. 8. In particular,
Appellants reason that “[i]n order for prior art to be analogous (and available
for use in an obviousness rejection), it must either be from the field of the
invention or reasonably pertinent to the problem addressed by the
invention.” Id.
One determines whether a prior art reference is within the same field
of endeavor as the subject matter of a claim by comparing the structure and
function of the subject matter recited in the claim to that of the subject
matter disclosed in the reference. In re Bigio, 381 F.3d 1320, 1326 (Fed.
Cir. 2004). Furthermore, the Supreme Court’s decision in KSR International
Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of
analogous art broadly, stating that “familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
Id. at 402.
As the Examiner also explains, Molian “is related to workplace tools
such as a cutting tool with friction and wear-resistant coatings which relates
to the particular problem with which the applicant was concerned,” while
both Huang and Molian “clearly teach the use of BAM material with tools.”
Ans. 4. Thus, we find that Huang and Molian are in the field of Appellants’
endeavor (coatings on a cutting tool) and agree with the Examiner that
Yamada teaches “the possibility of using a boride of the alloyed metal,
where the alloyed metal encompasses a mixture of A1 & Mg,” while Huang
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Application 13/561,904
and Molian “specifically teach AlMgB^ being used as a hard coating to
provide friction and [a] wear-resistance surface [on a cutting surface].” Id.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1,3, 6—8, and 16 over Yamada and either Huang or Molian.
DECISION
We AFFIRM the Examiner’s rejection.
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)(l)(iv).
AFFIRMED
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