Ex Parte Gray et alDownload PDFBoard of Patent Appeals and InterferencesOct 14, 201011904443 (B.P.A.I. Oct. 14, 2010) Copy Citation 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. 11/904,443 09/27/2007 Michael J. Gray 8135C/Z-03368C 5514 27752 7590 10/14/2010 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER MICHALSKI, SEAN M ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 10/14/2010 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 MICHAEL J. GRAY and CRAIG PROVOST ____________ Appeal 2009-011699 Application 11/904,443 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, 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 2009-011699 Application 11/904,443 2 STATEMENT OF THE CASE Michael J. Gray and Craig Provost (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-7 and 9-16. Claims 8 and 17 are withdrawn from consideration. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants’ claimed invention is a shaving razor having a trimming blade. Spec. 1, l. 6. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A shaving razor comprising a housing having a primary guard at a front of said housing and a primary cap at an upper surface at a back of said housing, one or more primary shaving blades between said primary guard and said primary cap, a trimming blade mounted at the back of said housing having a trimming blade cutting edge oriented away from said upper surface, an elongated handle having a first end secured to said housing, said handle being bifurcated adjacent said first end into two portions such that there is a region between said two portions, the two portions joining at the first end to enclose the region, and a finger pad positioned where said two portions join at said first end. Appeal 2009-011699 Application 11/904,443 3 THE EVIDENCE The Examiner relies upon the following evidence: Shurtleff US 5,687,485 Nov. 18, 1997 Carson US 5,784,790 Jul. 28, 1998 Rozenkranc US 6,276,061 B1 Aug. 21, 2001 THE REJECTIONS Appellants seek review of the following Examiner’s rejections: 1. Rejection of claims 1, 3-7, 9, 10, and 12-16 under 35 U.S.C. § 103(a) as being unpatentable in view of Shurtleff and Rozenkranc. 2. Rejection of claims 1, 2, 10, and 11 under 35 U.S.C. § 103(a) as being unpatentable in view of Shurtleff, Rozenkranc, and Carson. ISSUES The issues presented by this appeal are: Would the combined teachings of Shurtleff and Rozenkranc have led one having ordinary skill in the art at the time of Appellants’ invention to a finger pad positioned on the same side as the primary blades where the two portions of the bifurcated handle join at the first end of the handle? Has the Examiner articulated an adequate rationale as to why one having ordinary skill in the art would have been led to modify the razor of Shurtleff in view of the teachings of Rozenkranc? Appeal 2009-011699 Application 11/904,443 4 ANALYSIS Rejection of claims 1, 3-7, 9, 10, and 12-16 under 35 U.S.C. § 103(a) as unpatentable in view of Shurtleff and Rozenkranc With regard to this first ground of rejection, Appellants argue claims 1, 3-7, and 9 as a first group and claims 10 and 12-16 as a second group. App. Br. 5, 8. We select claim 1 as representative of the first group and claim 10 as representative of the second group, and the remaining rejected claims stand or fall with their respective representative claims. See 37 C.F.R. § 41.37(c)(1)(vii). Claims 1, 3-7, and 9 The Examiner defined “finger pad” to mean “any place a reasonable user of a device could reasonably be expected to place a finger.” Ans. 4. Appellants argue the Examiner erred in finding that portions of Shurtleff’s razor handle, such as curved arms 26, 28, mounting structure 32, recess 54, and forward underside thumb support position “D” are the claimed finger pad, because either they are not positioned where the two bifurcated portions join at the first end, or they correspond to one of the two bifurcated portions themselves, or there is no surface or feature that would serve as a pad for a finger. App. Br. 4-5; Reply Br. 2. The Examiner, however, also provided an alternate explanation of the obviousness rejection. The Examiner found that Shurtleff discloses a razor having a finger pad (finger rest 30), and that when Shurtleff’s razor is modified to add the trimming blade of Rozenkranc, it would be obvious to place a finger rest, like finger rest 30, on the other side of the handle since, Appeal 2009-011699 Application 11/904,443 5 as modified, there would be blades on both sides of the razor and the user would need to press his finger on either side depending on which blades are being employed. Ans. 6. Appellants acknowledge that Shurtleff discloses the use of finger rest 30 to help the user steer the handle. App. Br. 5. We agree with the Examiner that it would have been obvious to one having ordinary skill in the art, when making the modification to Shurtleff’s razor to add a trimming blade mounted at the back of the housing, to also add another finger rest to the opposite side of the handle from the finger rest 30 so as to help the user steer the handle when using the trimming blade. Shurtleff discloses that the finger rest 30 is positioned approximately at the junction of projecting arms 26, 28 with central portion 12 of handle 10. Shurtleff, col. 4, ll. 42-44; fig. 2. Appellants argue that Shurtleff’s finger rest 30 is positioned where the bifurcated arms begin to diverge instead of where they join at the first end, as called for in claim 1. App. Br. 4. It does not necessarily follow that the finger rest added to the opposite side of the handle for use with the trimming blade would also be placed in the same position by a person of ordinary skill in the art. A person of ordinary skill in the art is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Since the trim blade 4 of Rozenkranc is located at the back of the razor housing, when the user turns the razor over from its Appeal 2009-011699 Application 11/904,443 6 shaving position in order to use the trim blade, the user will need to angle the razor housing and the trim blade with respect to the sideburn hairs being trimmed. Thus, a person of ordinary skill in the art would readily recognize that the finger rest, to be used to help the user guide the razor when using the trim blade, would need to be positioned at a point at which the bifurcated portions of the handle join at the first end in order to allow for the proper positioning of the trim blade relative to the user’s face. As such, we conclude that it would have been obvious to position the second finger rest where the two bifurcated portions join at the first end of the handle, as called for in claim 1. Appellants also argue that the Examiner erred in rejecting claim 1 because there is no motivation to combine the teachings of Shurtleff and Rozenkranc. App. Br. 5. Appellants argue “[t]he skilled man looking to provide an ergonomic handle such as disclosed in Shurtleff would not even consider Rozenkranc which is directed to the multi-function cartridge and not to a handle let alone an ergonomic handle.” Id. Appellants’ argument misunderstands the obviousness inquiry. The Supreme Court stated in KSR: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Appeal 2009-011699 Application 11/904,443 7 KSR, 550 U.S. at 417. Shurteff discloses a wet razor having an ergonomic handle mounted to a conventional shaving unit. Shurtleff, col. 1, ll. 4-12. Rozenkranc discloses an improvement to wet razors consisting of the addition of a trim blade to a conventional shaving unit so as to provide a multi-blade shaving apparatus which would be convenient for the regular shaving of the skin and would also be convenient for the use of side sideburns trimming and for similar purposes. Rozenkranc, col. 1, ll. 20-23. The Examiner found, and we agree, that it would have been obvious to modify the razor of Shurtleff with the trim blade cartridge including the trimming blade of Rozenkranc to improve the marketability of Shurtleff’s razor by providing the convenience of a multi-blade shaving apparatus. Ans. 5. We also agree with the Examiner that this combination is within the level of ordinary skill in the art and is no more than the predictable use of prior art elements according to their established functions. Id. As such, we will affirm the rejection of claim 1. Claims 3-7 and 9 fall with claim 1. Claims 10 and 12-16 Claim 10 is similar to claim 1, except that claim 10 additionally calls for the finger pad to be positioned on the same side as the primary blades. Appellants present many of the same arguments for patentability of claim 10 as were raised by Appellants for claim 1. App. Br. 6-8. Our reasoning and analysis supporting our conclusion of obviousness of claim 1 applies equally to the subject matter of claim 10. Appellants’ arguments with respect to claim 10 do not persuade us of any patentable distinction between claim 1 Appeal 2009-011699 Application 11/904,443 8 and claim 10. As such, we will affirm the rejection of claim 10 for the same reasons discussed supra. Claims 12-16 fall with claim 10. Rejection of claims 1, 2, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable in view of Shurtleff, Rozenkranc, and Carson With regard to this second ground of rejection, Appellants argue claims 1 and 2 as a first group and claims 10 and 11 as a second group. App. Br. 8-9. We select claim 1 as representative of the first group and claim 10 as representative of the second group, and claims 2 and 11 stand or fall with their respective representative claim. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that the combination of Shurtleff, Rozenkranc and Carson does not establish a prima face case of obviousness because it does not teach or suggest all of the claim elements of independent claims 1 and 10. App. Br. 8-9. In particular, Appellants argue that Carson fails to provide the missing elements of the combination of Shurtleff and Rozenkranc. Id. The Examiner relies on Carson to teach elastomeric- covered finger pads for gripping, as called for in claims 2 and 11. Ans. 6. Having found no missing elements in the combination of Shurtleff and Rozenkranc as applied to claims 1 and 10 supra, Appellants’ argument fails to persuade us of error in the Examiner’s rejection of claims 1 and 10. As such, we will affirm the rejection of claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable in view of Shurtleff, Rozenkranc, and Carson. Claims 2 and 11 fall with claims 1 and 10. Appeal 2009-011699 Application 11/904,443 9 CONCLUSIONS The combined teachings of Shurtleff and Rozenkranc would have led one having ordinary skill in the art at the time of Appellants’ invention to a finger pad positioned on the same side as the primary blades where the two portions of the bifurcated handle join at the first end of the handle. The Examiner articulated an adequate rationale as to why one having ordinary skill in the art would have been led to modify the razor of Shurtleff in view of the teachings of Rozenkranc. DECISION The decision of the Examiner to reject claims 1-7 and 9-16 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT - IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI OH 45202 Copy with citationCopy as parenthetical citation