Ex Parte Franke et alDownload PDFPatent Trial and Appeal BoardJun 27, 201311777651 (P.T.A.B. Jun. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WOLFGANG FRANKE and JURGEN BEHRENDT ____________________ Appeal 2011-004510 Application 11/777,651 Technology Center 3700 ____________________ Before: LINDA E. HORNER, BART A. GERSTENBLITH, and NEIL A. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004510 Application 11/777,651 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-7, 91-11, and 13-24. Claims 1 and 24 are independent. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to an electric hair trimmer. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electric hair trimmer comprising a long hair cutter, the long hair cutter comprising: an undercutter; and an outer cutter that cooperates with the undercutter to cut hair, the outer cutter comprising: an inner surface adjacent to the undercutter; an outer surface arranged to contact skin; and a lateral surface that extends between a contour of the inner surface and a contour of the outer surface, wherein the lateral surface and the outer surface of the outer cutter define therebetween an at least partially acute-angled first edge, and the lateral surface and the inner surface of the outer cutter form an at least partially acute-angled second edge, wherein the outer cutter comprises a comb having a plurality of teeth substantially parallel to the inner surface of the outer cutter, and wherein the at least partially acute-angled first edge is arranged to facilitate the lifting of hairs lying close to a skin surface by the outer cutter. 1 The Office Action from which this appeal was taken included claim 9 as part of the first prior art rejection. See Office Action (mailed Oct. 27, 2009) at 1, 4. Although the Office Action and the Examiner’s Answer do not list claim 9 in the heading identifying the claims rejected, the Office Action and Answer explicitly mention claim 9 and include an analysis of the claim elements. See Ans. 4; Office Action (mailed Oct. 27, 2009) at 4. Appellants appear to recognize that claim 9 was rejected. See App. Br. 2 (identifying claim 9 amongst the rejected claims). Accordingly, we consider claim 9 to be encompassed within the rejection. Appeal 2011-004510 Application 11/777,651 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Starre Vankov Parsonage US 2,877,548 US 5,802,932 US 6,308,414 B1 Mar. 17, 1959 Sep. 8, 1998 Oct. 30, 2001 REJECTIONS The Examiner made the following rejections:2 Claims 1-7, 9-11, 13-20, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vankov and Starre. Ans. 3. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vankov, Starre, and Parsonage. Ans. 5. OPINION Claim 1 The Examiner found with respect to, inter alia, claim 1, that Vankov discloses the claimed subject matter (Ans. 3-4), except that the Examiner acknowledged that “Vankov et al. fail to disclose the first edge defines an angle in a range of about 40° and about 60° along at least a portion of the first edge” (Ans. 4), but found that “Starre teaches it is old and well known in the art of outer cutters to incorporate a first edge that defines an angle in a range of about 40° and about 60.°” Id. (citing Starre, col. 1, ll. 69-72). The Examiner noted that the idea of lifting hair is old and well-known in the art of shaving razors and trimmers and it would have been obvious to one of 2 A rejection of claims 6, 7, and 13 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, has been withdrawn by the Examiner (Ans. 3), and is therefore not before us. Appeal 2011-004510 Application 11/777,651 4 ordinary skill in the art to have modified the angle of the first edge to better facilitate the lifting of hair. Id. at 4-5. The Examiner concludes that in light of Starre it would have been obvious to one skilled in the art to have provided Vankov et al. with the angles, as taught by Starre, because the substitution of one known element for another would have yielded predictable results, and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results. Id. at 5. Appellants argue on appeal that Vankov is different in that it “produce[s] particularly good hair cutting results” (App. Br. 6 (citing Vankov, col. 4, ll. 24-28)) with its roughly trapezoidal outer tooth configuration, and that “Vankov does not suggest adding an acute-angled edge at the outer (skin) surface of his device” (id.). Appellants argue further that the Examiner’s rejection of these claims is premised on the proposition that one of ordinary skill in this art would consider a foil shaving apparatus,3 like that taught by Starre, to look for ways to improve upon a long hair trimmer. Id. But Appellants assert that “[i]t is general knowledge in this field that the mechanics of dry shaving of short hairs extending from the skin surface differs in fundamental respects from the mechanics of cutting longer hairs.” Id. 3 Foil shavers are machines that use an oscillating (back and forth) motion to cut hairs through a foil (also known as a screen) and cutter (blade) system. Rotary shavers are machines whose cutting system is based upon circular, rotating series of blades that move under a usually slotted head. http://www.tribalwar.com/forums/archive/t-492492.html (last visited Jun. 24, 2013). Appeal 2011-004510 Application 11/777,651 5 Put another way, Appellants argue that the principal of operation of the Starre dry shaver is so different from that of the Vankov device that one of mere ordinary skill would not have seen from the Vankov device how to implement the bi-directional trimming of Vankov’s design within the context of the slanted apertures of Starre. Id. at 8. We answer Appellants’ several arguments directed at the combination of the references based upon the knowledge of those of ordinary skill in the art of electric hair trimmers who, in Appellants’ view, would understand that “advantageous design features for a shear plate for a dry shaver designed to shear hair off at the surface of the skin are different than advantageous design features of an outer cutter for a long hair cutter.” Id. at 7. Regarding this statement and that above, regarding the “general knowledge in this field” (id. at 6), Appellants provide no evidence for this “general knowledge” in this field, presumably of dry/electric razors. Attorney argument cannot suffice for evidence of record before the Board. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Both references are for dry/electric razors, directed at cutting beards with moving blades relative to each other. Further, notwithstanding this “general knowledge in the field,” Appellants admit that “[w]hile this angled aperture configuration [of Starre] may be recognized as having some potential advantage and purpose for short hair dry shaving” (App. Br. 6), Appellants contend that “there is nothing about Starre’s teachings that would have given one of ordinary skill any impression of an advantage as a modification of a long hair trimmer.” Id. However, Appellants’ argument goes too far, and is based upon their Appeal 2011-004510 Application 11/777,651 6 unsubstantiated “general knowledge in the field.” App. Br. 6. The Examiner has articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to modify the cited references to arrive at the subject matter of claim 1 from the combination of the references for the purpose of electric razor beard cutting. We concur with the Examiner’s conclusion that it would have been obvious to have provided Vankov with the angles taught by Starre “to better facilitate the lifting of hair” and “because the substitution of one known element for another would have yielded predictable results, and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.” Ans. 5. In KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), the Supreme Court stated that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Id. at 416 (citing U.S. v. Adams, 383 U.S. 39, 50-51 (1966)). Appellants’ acknowledgement of the “potential advantage and purpose for short hair dry shaving” (App. Br. 6), is an element of the combination known to provide a desired result. In KSR, the Supreme Court stated that: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Appeal 2011-004510 Application 11/777,651 7 Id. at 418. The general knowledge of the difference in electric razor cutting alleged by Appellants in the industry has not been made an evidentiary record here. Appellants argue that: Although Starre teaches apertures with angled edges, it would not have been obvious to one of skill in the art at the time of the invention to combine specific features of the aperture of Starre with the trapezoidal configuration of Vankov, absent some teaching in the art that would suggest the desirability of such a combination. There was simply no motivation at the time of the invention to combine an acute angle at the skin surface of an opening of a shear plate, described by Starre as achieving a rasping effect such that the hairs are introduced into the apertures, with the toothed combs of Vankov, particularly given the requirement of Vankov that a smaller width at the outer (skin) surface is required for the formation of a positive cutting angle at the undercutter surface. App. Br. 7. However, the Examiner has used the Starre reference only to teach that the first edge angles (vertical and acute) are old and well known and it would have been obvious to one skilled in the art to have applied/substituted either type of angle based [sic] an intended result. By using the Starre reference as a teaching does not also bring in the type of cutting performed by Starre as shown in the Figures. Only the fact that vertical angles can be changed to acute angles and vice versa is being taught by Starre. Ans. 6. Moreover “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those Appeal 2011-004510 Application 11/777,651 8 references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Appellants argue that “it is unclear how substitution of the acute angle formed by the slanting boundary of Starre would have led to Applicant’s invention, when the trapezoidal configuration of Vankov was deemed a prerequisite for the formation of the positive cutting angle necessary for the desired cutting results.” App. Br. 8. In response to Appellants’ argument that “it would not have been readily apparent how to incorporate such an acute-angled outer edge into Vankov’s comb” we note that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also Nievelt, 482 F.2d at 968 (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Here, as noted, the Examiner does not propose that Starre be physically incorporated into the structure of Vankov, but, as the Examiner noted, “using the Starre reference as a teaching does not also bring in the type of cutting performed by Starre as shown in the figures. Only the fact that vertical angles can be changed to acute angles and vice versa is being taught by Starre.” Ans. 6. The Examiner’s reliance on Starre is limited as noted to the angled surfaces. Accordingly, we affirm the rejection of claim 1. Appeal 2011-004510 Application 11/777,651 9 Claims 2-7, 9-11, 13-20, 23 and 24 Appellants argue that claims 2-3, 6-7, 9-11, 13-20, 23, and 21-24, which depend, directly or indirectly, from claim 1, are patentable over the Vankov and Starre references for the same reasons above argued for claim 1, and have not provided any additional arguments to be addressed by the Examiner. App. Br., passim. Ans. 7. Appellants argue that claims 4 and 5, which also depend from claim 1, add additional limitations, and are separately patentable and discuss the reasons therefor. We treat claims 4 and 5 separately, as they are so argued. We affirm the rejections of claims 2-3, 6-7, 9-11, 13-20, 23, and 24, for the reasons given above with respect to claim 1. Claims 4 and 5 Claim 4 recites in part: “wherein the outer surface of the outer cutter has a three-dimensional structure.” Claim 5 depends from claim 4 and recites in part: “wherein the outer surface of the outer cutter has an undulating construction arranged to facilitate the lifting of hairs lying close to a skin surface by the outer cutter.” Appellants argue that their outer surface, according their Specification “is not a plane surface, but has an undulating surface topography” with elevations and depressions which help support the process of lifting the hair. App. Br. 9. The Examiner notes in response that, with regard to claim 4, “every known structure is three-dimensional.” Ans. 7. With regard to claim 5, the Examiner states that Appellants do “not dispute the fact that Vankov et al. has an undulating shape however argues [sic] that undulated shape of Vankov et al. does not perform the claimed intended use of lifting hairs.” Appeal 2011-004510 Application 11/777,651 10 Ans. 7. The Examiner has taken the position that the Vankov undulating shape is capable of lifting hairs since it is an intended use of the claimed structure, and the undulating shape of Vankov et al. could in a particular situation when moving along the skin perform a lifting hair function. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Ans. 7. Appellants did not file a reply brief under 37 C.F.R. § 41.41, and thus did not respond to the Examiner’s statement that they do not dispute that Vankov has an undulating shape. We note in addition that Appellants acknowledge that “teeth in the outer cutter of Vankov may have differing lengths” (App. Br. 9), and thus with the spaces therebetween provide an undulating shape and a three dimensional structure. See, e.g., Vankov, fig. 4. We find the Examiner correctly identifies this “facilitating the lifting of hairs” as an intended use limitation and reasonably found that the structure of Vankov would be capable of performing the claimed function. Appellants have not provided sufficient evidence or arguments to establish this finding is in error. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function); see also In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971) (“[W]here 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 Appeal 2011-004510 Application 11/777,651 11 the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). Accordingly, for the reasons stated above, we affirm the rejection of claims 4 and 5 under 35 U.S.C. § 103(a). Claims 21 and 22 Claims 21 and 22 were rejected under 35 U.S.C. § 103(a) as being unpatentable over Vankov in view of Starre and further in view of Parsonage. Ans. 5-6. Parsonage was cited as disclosing stationary pressure elements recited in these claims. Ans. 6. Appellants assert that Parsonage does not cure the deficiencies of the proposed combination of Vankov and Starre discussed above with respect to claim 1 and do not raise additional argument as to why these claims are patentable. App. Br. 10. For the reasons given above with respect to claim 1, we affirm the rejection of claims 21 and 22 under 35 U.S.C. § 103(a). DECISION For the above reasons, the Examiner’s decision rejecting claims 1-7, 9-11, and 13-24 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED hh Copy with citationCopy as parenthetical citation