Ex Parte Gray et al

Board of Patent Appeals and Interferences

Oct 14, 2010

11904443 (B.P.A.I. Oct. 14, 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.
11/904,443 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

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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Claims 8 and 17 are withdrawn from consideration.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.

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Application 11/904,443

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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?
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Application 11/904,443

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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,
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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
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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.
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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
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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.

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Application 11/904,443

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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
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