Ex Parte Ndou et alDownload PDFPatent Trials and Appeals BoardMay 1, 201912271320 - (D) (P.T.A.B. May. 1, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/271,320 11/14/2008 27752 7590 05/03/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Thilivhali Tshikovhi Ndou 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Z-4840 3883 EXAMINER DA VIES, SAMUEL ALLEN ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 05/03/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THILIVHALI TSHIKOVHI NDOU and NEVILLE SONNENBERG1 Appeal2018-000107 Application 12/271,320 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thilivhali Tshikovhi Ndou and Neville Sonnenberg ("Appellants") appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-20. See Br. 13 ("it is respectfully requested that the claims be allowed on appeal"); see also Non-Final Act. 1 (rejecting all pending claims 1-20). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is The Gillette Company LLC of Boston Massachusetts. Br. 1 Appeal2018-000107 Application 12/271,320 SUMMARY OF THE DECISION We AFFIRM. CLAIMED SUBJECT MATTER The Appellants' invention is directed to a razor cartridge with a shaving aid strip. Spec. 1. Claims 1 and 11 are independent. Br. 14 (Claims App.) Claim 1 is illustrative and reproduced below, with emphases added to limitations discussed in this Decision. 1. A razor cartridge comprising a guard, a cap and a plurality of blades each with sharpened edges located between the guard and the cap, the cap comprising a cap edge positioned nearest the blades and an erodible skin engaging member, said plurality of blades comprising a cap blade defining a blade edge nearest the cap and an adjacent blade defining a blade edge positioned immediately adjacent to the cap blade and between the cap blade and the guard, said skin engaging member comprising at least one upper layer comprising an erodible skin engaging layer of a first color, said upper layer having an upper surface, a lower surface and a first thickness dimension, a base layer positioned below said upper layer comprising an erodible skin engaging layer of a second color different from said first color, said base layer having an upper surface, a lower surface and a thickness dimension, and said upper layer eroding during shaving exposing said upper surface of said base layer, said upper surface of said base layer being positioned relative to the cap edge such that when said upper layer has eroded the cap blade edge has a final exposure defined by the adjacent blade edge, the cap edge and the upper surface of the base layer. Id. ( emphases added). 2 Appeal2018-000107 Application 12/271,320 I. THE REJECTIONS The Examiner rejected: (a) Claims 1-20 under 35 U.S.C. § 112 ,i 2, as being indefinite (Non- Final Act. 2); (b) Claims 1-20 under 35 U.SC. § 103(a) as unpatentable over Tseng (US 6,944,952 Bl, issued Sept. 20, 2005) and Vreeland (US 2004/0139611 Al, published July 22, 2004) (Non-Final Act. 3); and (c) Claims 9, 10, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Tseng, Vreeland, and Doroodian-Shoja (US 2002/0000041 Al, published Jan. 3, 2002) (Non-Final Act. 6). ANALYSIS Claims 1-20 Reiected as Indefinite A. Examiner's Rejection The preamble of independent claims 1 and 11 recites, inter alia, "the cap comprising a cap edge."2 Br. 14, 16 (Claims App.). In referencing Figure 7 of the Specification, the Examiner states, "it is unclear how the cap 2 If the preamble is "necessary to give life, meaning, and vitality" to the claim, then the claim preamble should be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citation omitted). In the present case, the preamble of independent claims 1 and 11 recites, "the cap comprising a cap edge," and the body of the claims recites, "the cap edge." Br. 14, 16 (Claims App.). Because claims 1 and 11 each rely on a portion of the preamble as antecedent basis for the "cap edge" limitation in the body of the claim, we treat related language in the preamble as limiting. Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372-73 (Fed. Cir. 2014) (treating preamble language as limiting when a portion of the language appeared in the body of the claim). 3 Appeal2018-000107 Application 12/271,320 23 comprises a cap edge [ 48]." Ans. 3. The Examiner points out that the "cap edge 48 is a separate component [ from cap 23 and is instead] part of the razor cartridge housing." Id. at 8. To illustrate the described "cap" and "cap edge," we reproduce Figures 5 and 7 of the Specification, below: Fig. Fig. 7 4 Appeal2018-000107 Application 12/271,320 The Specification describes Figures 5 and 7 as depicting a razor cartridge prior to use (Figure 5), and after several shaves (Figure 7). Spec. 3, 11. 24-29. Both figures depict blades 17, 18, and 19 and Figure 5 further depicts cap 23. See id. at 4, 1.6 (referring to Figures 1 and 2). Figure 7 also depicts cap edge 48. Id. at 7, 1. 30. Figure 5 depicts lead line 23 as pointing to a portion of housing 16, near shaving aid strip 22. The Examiner rejects the claims as indefinite because they recite "the cap comprising a cap edge," yet "the cap edge 48 is not on the cap 23 [and i]t is unclear how the cap comprises a cap edge." Non-Final Act. 2. B. Analysis Appellants argue that the "cap comprising a cap edge is unambiguously described in Appellant's disclosure," referencing cap 23 and cap edge 48 of Figures 5 and 7 of the Specification. Br. 4. At the same page of the brief, Appellants also cite to page 8, lines 11-19, of the Specification, which we reproduce, below: In FIG. 7 the razor cartridge 14 is shown after numerous shaves. The exposure 52 of the cap blade 19 after numerous shaves is about +0.3 mm. The exposure of the cap blade 19 after numerous shaves is measured with reference to plane 50 tangential to the edge 18' of the adjacent blade 18 and the cap edge 48 and the upper surface 33 of base layer 26. After the numerous shaves the entire upper layer has eroded away and thus the upper surface and lower surface of the upper layer 24 are no longer present. The location of the upper surface 33 of the base layer 2 6 is positioned substantially equivalent to or aligned with the cap edge 48. The end of optimal shave performance is reached when the entire upper layer 24 has eroded away. At this point in time the edge 18' of the adjacent blade 18, the cap edge 48 and the upper surface 33 of the base layer 26 define the exposure of the cap blade 19. 5 Appeal2018-000107 Application 12/271,320 Spec. 8, 11. 11-19 ( emphasis added). Although the Examiner is correct in that Figure 2 depicts the lead line of cap 23 as pointing to shaving aid strip 22, only, which appears structurally separate from cap edge 48, and the claims require "the cap [to comprise] a cap edge," this does not render the claims indefinite. As also shown in Figure 5, the cap also includes a portion of housing 16. In other words, even if Figure 2 depicts lead line 23 as pointing to only shaving aid strip 22, Figure 5, reproduced supra, depicts lead line 23 as pointing to a portion of housing 16. As such, one of ordinary skill in the art would understand that the claimed "cap" includes shaving aid strip 22 ( or skin-engaging portion) and a portion of housing 16. Upon reviewing the claims in light of the Specification, one of ordinary skill in the art would also understand that the "cap edge" to be the edge of housing 16 upon which shaving aid strip 22 rests. For example, page 8 and Figures 5-7 of the Specification describe the "cap edge" to be the edge upon which the shaving aid strip 22 rests or is adjacent to (Figs. 5, 6) and which is "positioned substantially equivalent to or aligned with" the upper surface of the base layer once the upper layer of shaving aid strip 22 has eroded (Fig. 7). See also Spec. 8, 11. 15-16 ("The location of the upper surface 33 of the base layer 26 is positioned substantially equivalent to or aligned with the cap edge 48."). Because the cap includes a portion of the housing ( and cap edge), the phrase "the cap comprises a cap edge" does not render the scope of the claims unclear. As such, we do not sustain the rejection of claims 1-20 under 35 U.S.C. § 112 ,i 2. 6 Appeal2018-000107 Application 12/271,320 II. Claims 1-20 Reiected as Unpatentable Over Tseng and Vreeland A. Examiner's Rejection In rejecting independent claims 1 and 11, the Examiner relies on Tseng for disclosing the claimed limitations with the exception of a base layer comprising an erodible skin engaging surface. Non-Final Act. 4 ("Tseng fails to disclose the base layer comprises an erodible skin engaging surface"). To address the missing limitation, the Examiner relies on Vreeland. Id. In particular, the Examiner relies on Vreeland for teaching "a similar razor cartridge (fig. 2) with a cap (14) that comprises a skin engaging member (20, 22) that is made of at least one erodible upper layer (20) and an erodible base layer (22), wherein the first and second layers are different colors." Id. at 4-5 ( citing Vreeland ,i 33). The Examiner proposes to modify Tseng' s skin engaging member "with the teaching of Vreeland in order to provide a useful indication to the user as to the useful life of the product." Id. at 5 (citing in-part Vreeland ,i 33). In the Answer, the Examiner further reasons that the modification would further "continue providing useful skin conditioning ingredients while shaving." Ans. 6 ( citing Vreeland ,i 24). B. Analysis Appellants present several arguments, which we address separately, below. First, Appellants argue that the combination of Tseng and Vreeland do not satisfy the limitations of independent claims 1 and 11 (Br. 5-6), specifically, the claimed limitation that "when the upper layer has eroded, the cap blade edge has a final exposure defined by the adjacent blade edge, 7 Appeal2018-000107 Application 12/271,320 the cap edge and the upper surface of the base layer" (id. at 7). Appellants further argue that "[t]here is simply no disclosure as to exposure of the cap blade edge" in the cited art. See id. at 7. Although Appellants are correct in that neither Tseng nor Vreeland explicitly describes a final exposure defined when an upper layer has eroded, Appellants' argument is not persuasive. The description in the prior art need not be ipsis verbis in order to teach or suggest the disputed claim limitation. See in re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). To illustrate how the claimed limitation is satisfied, the Examiner submits an annotated version of Tseng's Figure 2 (when modified by Vreeland), which we reproduce, below: 18 12 16 According to the Examiner, and as shown in the above annotated Figure 2, the "final exposure is defined by the adjacent blade edge, cap edge and upper surface of the base layer when the user's skin to contact [sic] the 8 Appeal2018-000107 Application 12/271,320 adjacent blade (20), the cap edge (38) and base layer (Vreeland 22) simultaneously." Ans. 9. The Examiner's annotated figure illustrates sufficiently how the proposed combination of Tseng and Vreeland satisfies the claimed limitation. Second, Appellants argue that Tseng "unambiguously teaches away from having such an erodible layer as a base layer since if the 'core' in Tseng is also eroded, the mechanical strength and rigidity of the entire skin engaging member of Tseng would be significantly compromised." Id. at 8 ( emphasis added). Appellants' second argument is not persuasive. Appellants do not cite to any disclosure within Tseng that criticizes, discredits, or otherwise discourages using an erodible base layer, such as the one taught by Vreeland. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). Moreover, Appellants' argument that the modification would significantly compromise the strength and rigidity of Tseng' s skin engaging member lacks any evidentiary support and is given little weight. See Br. 8. Third, Appellants argue that "the Office has not set forth some reason why a person would have thought to combine particular available elements of the prior art to reach the claimed invention" and that there is "no teaching, suggestion, or motivation for one of ordinary skill in the field of the invention to make the combination." Id. at 9 ( citation omitted). Appellants' third argument is also unavailing. The Examiner provides two reasons for replacing Tseng's base layer with Vreeland's erodible base 9 Appeal2018-000107 Application 12/271,320 layer: (1) "to provide a useful indication to the user as to the useful life of the product" and (2) "to continue providing useful skin conditioning ingredients while shaving." Ans. 6 (citations omitted). Furthermore, these reasons are adequately supported by rational underpinnings, as Vreeland teaches using a contrasting base layer color so that the user knows when to replace the razor (Vreeland ,i 33), and also teaches the inclusion of "shaving aid" and "lubricous agents" to the base layer (id. ,i,i 24, 25). Fourth, and finally, Appellants argue that a prior Board decision- which reversed an earlier rejection that relied on Tseng-precludes the Examiner from relying on Tseng, again. See Br. 10-11 ( citing MPEP 1214.014). Appellants' fourth argument is also not persuasive. The Examiner is not prohibited from issuing a subsequent, different rejection after a Board decision. The rejection before us is different in that it relies on Vreeland in addition to, and as a basis for modifying, Tseng. Compare Non-Final Act. 3, with Appeal 2012-006581, 3 (PTAB Aug. 4, 2014). The prior Board decision reversed an examiner's anticipation rejection based on Tseng alone, and the rejection before us does not conflict with the Board's prior findings or conclusions. See Appeal 2012-006581, 5-6 (reversing the prior art rejections because Tseng does not inherently disclose the claimed "final exposure" limitation of independent claims 1 and 11 ). As explained above, in this case, the claimed "final exposure" is satisfied by a combination of Tseng and Vreeland. See Ans. 9 ("final exposure is defined by the adjacent blade edge, cap edge and upper surface of the base layer when the user's skin to contact [sic] the adjacent blade (20), the cap edge (3 8) and base layer (Vreeland 22) simultaneously."). 10 Appeal2018-000107 Application 12/271,320 For the foregoing reasons, we affirm the rejection of claims 1-20 as unpatentable over Tseng and Vreeland. III. Claims 9, 10, 19, and 20 Re;ected as Unpatentable Over Tseng, Vreeland, and Doroodian-Sho;a A. Examiner's Rejection Dependent claims 9, 10, 19, and 20 further require the upper layer to comprise two layers (claims 9, 19), or three layers (claims 10, 20). Br. 15, 17. In relying on Doroodian-Shoja, the Examiner asserts that Doroodian- Shoja "teaches a similar razor cartridge with a skin engaging member ... having an upper surface that is comprised of multiple distinct layers (top 70, middle 72, and bottom 74)" and proposes to modify Tseng in light of this teaching "in order to clearly present to the user the life expectancy of their razor." Non-Final Act. 7 (citing Doroodian-Shoja, Figs. 7a-7e, 8a-8e). B. Analysis In contending the rejection of claims 9, 10, 19, and 20, Appellants do not present arguments separate from those discussed above in connection with Tseng and Vreeland, alone. See Br. 12 ("Tseng, Vreeland and Doroodian-Shoja do not teach or suggest all of the claim limitations of Claims 1 and 11 and, therefore, do not establish a prima facie case of obviousness"). For the same reasons Appellants' arguments contesting the rejection based on Tseng and Vreeland are unpersuasive, Appellants' arguments contesting the rejection based on Tseng, Vreeland, and Doroodian-Shoja are 11 Appeal2018-000107 Application 12/271,320 also unpersuasive. Accordingly, we affirm the rejection of claims 9, 10, 19, and 20 as unpatentable over Tseng, Vreeland, and Doroodian-Shoja. SUMMARY The rejection of claims 1-20 under 35 U.S.C. § 112 ,-J 2, as indefinite is reversed. The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Tseng and Vreeland is affirmed. The rejection of claims 9, 10, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Tseng, Vreeland, and Doroodian-Shoja is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation