Ex Parte LI et al

Patent Trial and Appeal Board

Jun 27, 2013

11259552 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHENG-JIH LI, STEPHEN F. HOBBS and
NICOLAE NEAMTU
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Appeal 2011-006743
Application 11/259,552
Technology Center 3700
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Before ANNETTE R. REIMERS, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 6, 15 and 18. Br. 1. Claims 5, 7-14, 16, 17, 19 and
20 have been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED INVENTION
The claimed invention relates to “methods of manufacturing razor
blades from a strip material.” Spec. 1, ll. 26-27. Claim 1 is the sole
independent claim; it recites:
1. A method of manufacturing razor blades from a
strip material having upper and lower surfaces, a maximum
thickness, and lengthwise-extending edge regions that are
converted to blade edges during the method, the method
comprising the steps of:
(a) providing the strip material;
(b) contacting the upper and lower surfaces of the strip of
material with a first set of rollers to reduce the maximum
thickness of the strip material by at least 10% and to roll down
the material at locations to provide beveled surfaces in the
upper and lower surfaces at the lengthwise extending edge
regions of the strip material, wherein the beveled surfaces have
a thickness which is less than the maximum thickness;
(c) contacting the upper and lower surfaces of the strip of
material with a second set of rollers to reduce the maximum
thickness of the strip material by an additional amount and to
offset the material at locations with the beveled surfaces at the
lengthwise extending edge regions placed in between the
offsets;
(d) contacting the upper and lower surfaces of the strip
material with a third set of rollers to reduce the maximum
thickness of the strip material by an additional amount and to
flatten the offsets and provide weakened regions;
(e) separating the strip material lengthwise between the
beveled surfaces and the weakened regions; and
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(f) sharpening the beveled surfaces to provide blade
edges.
Br. 8, Claims App’x (emphasis added).
REJECTIONS
1. Claims 1-4 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over De Bats (US 2,016,770, iss. Oct. 8, 1935), Simons
(US 2,226,948, iss. Dec. 31, 1940), Franek (US 4,109,500, iss. Aug. 29,
1978), and Young (US 2,409,604, iss. Oct. 15, 1946). Ans. 3.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Bats, Simons, Franek, Young, and Kylberg (US
1,877,758, iss. Sep. 20, 1932). Id. at 6.
3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Bats, Simons, Franek, Young, and Cartwright (US
4,265,055, iss. May 5, 1981). Id. at 7.
ANALYSIS
Claims 1-4 and 15
Claim 1 requires that the first set of rollers not only “reduce the
maximum thickness of the strip material by at least 10%” but also “roll
down the material at locations to provide beveled surfaces in the upper and
lower surfaces.”
The Examiner relied on De Bats as teaching both of these steps,
referencing De Bats’ disclosure that “[t]he drawing of the strip is continued
or repeated a sufficient number of times until the scoring or strip-formation
is completed, as indicated generally at 60a in Fig. 6.” Ans. 4 (citing
De Bats, p. 2, col. 1, ll. 8-11). In addition, the Examiner acknowledged that
De Bats does not disclose multiple sets of rollers (as claimed), but relied on
Simons as teaching the “technique of reducing the maximum thickness of a
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strip material numerous times by using multiple sets of rollers.” Id. at 5.
Based on the teachings of De Bats and Simons, the Examiner concluded that
a skilled artisan would have found it obvious “to modify the method, of
De Bats, with the known technique of reducing the maximum thickness of a
strip material numerous times by using multiple sets of rollers . . . , as taught
by Simmons, and the results would have been predictable.” Id.
Appellants dispute the propriety of the Examiner’s combination of
De Bats and Simons. Specifically, Appellants contend that De Bats forms
the beveled cutting edge “by drawing the razor blade strip material through
rollers and scoring the strip with diamond or other like members at the
center and edges a sufficient number of times until the scoring is
completed.” Br. 4 (emphasis added). According to Appellants, De Bats’s
drawing/scoring operation is different from Simons’s rolling operation, and
even if De Bats could be combined with Simons, the “combination does not
result in the claimed invention” because the modified operation would result
in a process that draws and scores the strip material to form the beveled
cutting edge whereas the claimed invention “roll[s] down the material” to
form the cutting edge. Id. at 4-5.
We agree with Appellants. While the Examiner states that De Bats
discloses a beveled edge, the Examiner falls short in explaining how the
beveled edge is formed by “roll[ing] down the material,” as required by
claim 1. See Ans. 4-5, 8-9. The Examiner fails to point to any portion of De
Bats that teaches or suggests the “roll down” step for forming the beveled
edge. See id. Nor does the Examiner indicate that a skilled artisan would
have equated De Bats’s drawing/scoring operation with a rolling down
operation. Further, the Examiner never directly addresses Appellants’
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argument that a skilled artisan would not look to replace De Bats’s process,
which forms a beveled edge by scoring the material between diamond plates,
with Simons’s process, which teaches nothing about beveled surfaces and is
concerned solely with rolling material of uniform width and thickness.
Instead, the Examiner focuses on the provisions in claim 1 that “reduce the
maximum thickness” to the exclusion of the step that “roll[s] down the
material at locations to provide beveled surfaces.” See Ans. 8-9 and 11.
In essence, the Examiner simply concludes, without any supporting
citation or rationale, that De Bats meets the “roll down” limitation of
claim 1. But “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.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As
such, we are not persuaded that the Examiner has provided sufficient
reasoning in equating De Bats’s drawing/scoring operation with a rolling
down operation. Also, while the Examiner relies on Simons as teaching the
operation of “reducing the maximum thickness of a strip material by using
multiple sets of rollers,” the Examiner does not rely on Simons to cure the
above-noted deficiency with De Bats. Nor does the Examiner’s reliance on
the additional references of Franek (for creating the “offset”) and Young (for
“separating” and “sharpening”) cure the above-noted deficiency with
De Bats. Accordingly, for the foregoing reasons, we do not sustain the
rejection of claim 1 or its dependent claims 2-4 and 15.
Claims 6 and 18
Claims 6 and 18 depend from claim 1. The Examiner rejected
dependent claims 6 and 18 as being rendered obvious by the additional
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references of Kylberg and Cartwright, respectively. Ans. 6-7. None of the
reasons discussed by the Examiner in rejecting claims 6 and 18 cures the
above-noted deficiency with the Examiner’s rejection of claim 1.
Accordingly, for the reasons given with respect to the erroneous rejection of
parent claim 1, we cannot sustain the rejection of dependent claims 6 and 18.
DECISION
We reverse the Examiner’s decision rejecting claims 1-4, 6, 15 and
18.
REVERSED

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