Ex Parte Everett

Board of Patent Appeals and Interferences

May 9, 2011

10932523 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID W. EVERETT, JR.
____________

Appeal 2009-010409
Application 10/932,523
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David W. Everett, Jr. (Appellant) seeks our review under 35 U.S.C.
§ 134 of the rejection of claims 1, 2, 5, 6, 8-10, 12, 14, 33, 36, and 37.
Appellant cancelled claims 3, 4, 7, and 15-32. Pursuant to an Order
Returning Undocketed Appeal to Examiner mailed Dec. 24, 2008, the
Appeal 2009-010409
Application 10/932,523

2
Examiner cancelled claims 11, 13, 34, and 35. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The claims on appeal relate to a shaving head for a rotary shaver.
Claim 1, reproduced below, with emphasis added, is representative of
the subject matter on appeal.
1. A shaving head for a rotary shaver, said
shaving head comprising:
a one-piece, generally cup-shaped metal
body having an internal cavity for receiving a
rotary cutter, a comb portion comprising an outer
surface for contacting skin to be shaved and an
inner surface in part defining the internal cavity,
the comb portion having a plurality of openings
therein defined by opposed sidewalls having
respective generally arcuate surfaces, the comb
portion having a thickness in the range of about
0.0025 inches to about 0.0055 inches, the sidewalls
generally curving inward toward each other in a
concave manner as the openings extend from the
outer surface of the comb portion toward the
inner surface thereof,
the intersection of at least one sidewall of at
least one of said openings with the inner surface of
the comb portion of the body defining a cutting
edge having a positive rake angle.

The Rejection
The following Examiner’s rejection is before us for review:
Claims 1, 2, 5, 6, 8-10, 12, 14, 33, 36, and 37 are rejected under 35
U.S.C. § 103(a) as unpatentable over Sanders (U.S. Patent No. 3,279, 057,
issued Oct. 18, 1966) and Vankov (U.S. Patent No. 5,802,932, issued Sep. 8,
1998).
Appeal 2009-010409
Application 10/932,523

3
SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issues
The determinative issues in this appeal are:
(1) Whether it would have been obvious to a person of ordinary skill
in the art to modify the opposed convex sidewalls 38 of the hair entry
openings 37 of the shaver of Sanders to be concave as taught by Vankov.
(2) Whether it would have been obvious to one of ordinary skill in the
art to modify the resulting shaving head from the combination of Sanders
and Vankov to have the comb portion thickness be substantially less than the
sidewall thickness.
Analysis
Issue (1)
Appellant contends that the combination of Sanders and Vankov fails
to teach or suggest sidewalls that generally curve inward toward each other
in a concave manner as required by claim 1. App. Br. 5-6. In particular,
Appellant contends that the Examiner’s proposed modification of Sanders
fails to consider what Vankov teaches as a whole. Id. Appellant interprets
Vankov narrowly as only teaching a process of etching blade openings with
concave sidewalls into a substantially thick (e.g., 0.4 mm) hardened fine
grain steel plate. Id. Thus, Appellant argues that a person of ordinary skill
in the art would not be motivated to etch concave sidewalls into the
relatively thin shear plate of Sanders by the teachings of Vankov because to
do so would require that the shear plate thickness of Sanders be increased
Appeal 2009-010409
Application 10/932,523

4
and increasing the shear plate thickness of Sanders would result in an
undesirable, less close shave. App. Br. 7-8.
Appellant also contends that Sanders teaches away from modifying
the sidewall openings 37 so as to be curved in a concave manner. Reply Br.
1. More particularly, Appellant alleges that Sanders teaches the sidewalls of
the apertures 37 should have a frusto-conical or convex surface so that the
sidewalls contact the user’s skin and direct the hairs toward the apertures 37
in order to provide a clean, close shave. Id. As evidence that Sanders
teaches away from inwardly curving concave sidewalls, Appellant points to
Sanders’ column 6, lines 26-47, wherein Sanders discloses that if the edge or
boundary walls of the aperture are generally cylindrical in shape (i.e.,
perpendicular to the faces 11 and 13), then the user’s face may be out of
contact with the edge or boundary walls of the aperture 37 and the hair
would not be cut cleanly for a smooth, close shave. Reply Br. 1-2.
The Examiner posits that Sanders teaches the invention substantially
as claimed, except that Sanders fails to disclose the sidewalls as “generally
curving inward toward each other in a concave manner as the openings
extend from the outer surface of the comb portion toward the inner surface
thereof.” Ans. 5. The Examiner finds that Vankov teaches opposed
sidewalls 40 of a hair entry opening 9 of a dry shaver outer cutter 2 which
are curved in a concave manner from the outer surface 37 to the inner
surface 17 resulting in a positive cutting angle a for the outer cutter 2. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to modify Sanders to have sidewalls curving in a
concave manner as taught by Vankov in order for the cutting edge to have a
Appeal 2009-010409
Application 10/932,523

5
positive rake angle to thus shear hairs with less force and prolong the service
life of the outer blade. Ans. 5-6.
“A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)).
First, we are not persuaded by Appellant’s argument that the
Examiner has not considered Vankov as a whole. Appellant interprets
Vankov’s teachings too narrowly. According to Appellant, because Vankov
forms the concave sides 40 of the teeth 7, 8 by etching a prior hardened
sheet metal strip 25 of 0.4mm thickness, a person of ordinary skill in the art
would only etch concave sidewalls in the shear plate 10 of Sanders if the
shear plate 10 were increased in thickness. However, the Supreme Court has
held that “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007). Thus, we think a person of ordinary skill in the art would know how
to form concave side walls in the shear plate of Sanders without having to
increase the plate thickness in order to do so.
Second, we are also not persuaded by Appellant’s teaching away
argument. Appellant has not supported the teaching away argument with
any showing of how Sanders criticizes, discredits or discourages modifying
the sidewall openings 37 so as to be curved in a concave manner. Appellant
points to Sanders’ column 6, lines 26-47, which discloses that if the
apertures 37 had generally cylindrical shaped sidewalls (i.e., perpendicular
Appeal 2009-010409
Application 10/932,523

6
to the faces 11 and 13), then the portions 12a of the user’s face 12 would be
out of contact with the walls of the aperture and the hairs 12b would not be
cut cleanly in order to produce a smooth, close shave. However, this
disclosure only discourages modifying the sidewall openings 37 to be
cylindrical. Appellant has not provided any evidence that Sanders criticizes,
discredits or discourages modifying the sidewall openings 37 so as to be
concavely shaped.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1, 2, 5, 6, 8-10, 12, 14, 33, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Sanders and Vankov.
Issue (2)
Appellant contends that both Sanders and Vankov fail to disclose or
suggest the comb portion of the shaving head having a thickness
substantially less than the thickness of the shaving head sidewalls. App. Br.
9.
The Examiner acknowledges that Sanders is silent as to whether the
thickness of the comb portion is substantially less than the thickness of the
sidewall, but alleges that the resulting shaving head from the combination of
Sanders and Vankov is not patentably distinct because paragraph no. [0028]
of Appellant’s Specification discloses that the dimensions of the comb and
sidewall of shaving head 101 “may vary from one rotary shaver design to the
next, and one having ordinary kill in the art could optimize these parts to suit
any particular rotary shaver design.” Ans. 6. In addition, the Examiner
alleges it is well known that the thinner the comb portion of the shaving
head is, the closer the shave. Ans. 7. Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art “to select a
Appeal 2009-010409
Application 10/932,523

7
suitable thickness for Sanders’s comb portion that provides a desirable close
shave while not too thin to jeopardize the stiffness or strength of the comb
portion.” Id.
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is
improper. Id. “Rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
The Examiner’s conclusion that the recited differences in the
thicknesses of the comb portion and sidewall are not a patentable distinction
substitutes a per se rule of obviousness, namely, that different size as a
general proposition is not a patentable distinction, for an apparent reason to
modify Sanders’s comb portion thickness underpinned by a careful
consideration of the facts. As such the Examiner’s proposed reason why the
thickness difference between the comb portion and the sidewall is not a
patentable distinction is not persuasive of the obviousness of the subject
matter of claim 37.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Sanders and
Vankov.

Appeal 2009-010409
Application 10/932,523

8
CONCLUSIONS
It would have been obvious to a person of ordinary skill in the art to
modify the convex opposed sidewalls 38 of the hair entry openings 37 of the
shaver of Sanders to be concave as taught by Vankov.
It would not have been obvious to a person of ordinary skill in the art
to modify the resulting shaving head from the combination of Sanders and
Vankov to have the comb portion thickness be substantially less than the
sidewall thickness.

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 5, 6, 8-10, 12, 14,
33, and 36 under 35 U.S.C. § 103(a) as unpatentable over Sanders and
Vankov.
We reverse the Examiner’s rejection of claim 37 under 35 U.S.C.
§ 103(a) as unpatentable over Sanders and Vankov.
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).

AFFIRMED-IN-PART

Klh