Ex Parte Obermann

Board of Patent Appeals and Interferences

Jan 7, 2011

10518262 (B.P.A.I. Jan. 7, 2011)

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.
10/518,262 12/16/2004 Wolfgang Johannes Obermann AT 020039 8325
24737 7590 01/07/2011
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/07/2011 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 WOLFGANG JOHANNES OBERMANN
____________________

Appeal 2009-008391
Application 10/518,262
Technology Center 3700
____________________

Before JOHN C. KERINS, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BARRETT, 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 2009-008391
Application 10/518,262

2
STATEMENT OF THE CASE
Wolfgang Johannes Obermann (Appellant) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1-6 and 21. Claims 7-20
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. Hair-cutting apparatus, comprising:
a cutting arrangement for cutting hair and means for
counter-acting flying off cut hair from the hair-cutting
apparatus, which means comprising a boundary wall, which
extends close to the cutting arrangement and further comprises
a stationary portion and a portion that is movable relative to the
stationary portion, the movable portion being arranged and
positioned to cooperate with the hair to be cut dependent on the
nature and condition of the hair.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1, 2, 5, 6, and 21 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Severson (US 1,506,139, issued Aug. 26, 1924);
2. Claims 1-3, 5, and 6 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Zucker (US 3,302,286, issued Feb. 7, 1967);
3. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Severson and Marchetti (US 4,074,427, issued Feb. 21,
1978); and
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4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zucker.

Appellant also seeks review of the Examiner’s objection to the
drawings for using the same number to designate two components, the
Examiner’s objection to the Specification because of informalities, and the
Examiner’s objection to the Abstract. App. Br. 4-5; Final Rej. at 2-4. These
matters are unrelated to the rejections before us on appeal and are
reviewable by petition under 37 C.F.R. § 1.181 (see Manual of Patent
Examining Procedure (MPEP) §§ 1002 and 1201) and are thus not within
the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA
1967).

OPINION
The rejection of claims 1, 2, 5, 6, and 21 as being anticipated by Severson
Appellant argues the rejected claims as a group. App. Br. 6-7, 8. We
select claim 1 as the representative claim, and claims 2, 5, 6, and 21 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites: “the movable portion being arranged and positioned
to cooperate with the hair to be cut dependent on the nature and condition of
the hair.” The Examiner found that Severson’s spring-biased hood guard or
shield 37 satisfies this limitation. Ans. 3; Severson 2, ll. 53, 68-70, 90-94.
Appellant’s arguments to the contrary appear to be premised on the assertion
that Severson does not disclose adjustability specifically dependent on the
nature and condition of the hair. App. Br. 7; Reply Br. 3.
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The “movable portion” feature is recited functionally, and merely
requires that portion to be arranged and positioned so as to be capable of
cooperating with the hair to be cut dependent on the nature and condition of
the hair. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). The
Examiner reasonably found that Severson’s hood guard has that capability.
Ans. 3, 9-10. Appellant presents no persuasive argument or evidence that
Severson’s device lacks this capability. Cf. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); Swinehart, 439 F.2d at 213.
Furthermore, as Appellant’s Figure 7 schematically depicts the movable
portion 35 spring-biased in a direction approximately straight down onto the
top of the hair to be cut, we, like the Examiner (Ans. 10), fail to see how
Appellant’s movable portion works differently than the prior art device in
any patentably distinguishing way. See Spec. 5:14-23.
We affirm the rejection of claim 1 as anticipated by Severson. Claims
2, 5, 6, and 21 fall with claim 1.

The rejection of claims 1-3, 5, and 6 as being anticipated by Zucker
Appellant argues the rejected claims as a group. App. Br. 7- 8. We
select claim 1 as the representative claim, and claims 2, 3, 5, and 6 stand or
fall with claim 1.
Appellant’s arguments regarding Zucker are the same or similar to
those for Severson. See App. Br. 7-8. We determine that the Examiner
reasonably found that Zucker’s spring-biased comb plate 59 is capable of
functioning as claimed by Appellant. See Ans. 5, 9-10 (noting that the
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explanation regarding the capability of Severson’s movable portion is also
“true with respect to the movable portion of Zucker's hair-cutting
apparatus.”); Zucker, col. 3, ll. 46-64. Appellant has not shown that Zucker
lacks that capability.
We sustain the rejection of claim 1, and of claims 2, 3, 5, and 6 which
fall therewith, as anticipated by Zucker.

The obviousness rejections
Appellant does not offer separate arguments regarding the claims
subject to the obviousness rejections, but relies on their dependency from
claim 1 for patentability. App. Br. 8. Because we have sustained the
rejections of claim 1, we also sustain the rejection of claims 3 and 4 as being
unpatentable over Severson and Marchetti and the rejection of claim 4 as
being unpatentable over Zucker.

DECISION
The decision of the Examiner to reject claims 1-6 and 21 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

Appeal 2009-008391
Application 10/518,262

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mls

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510