Ex Parte Obermann et al

Patent Trials and Appeals Board

Feb 24, 2016

11722685 - (D) (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111722,685 12/05/2008 Wolfgang Obermann
24738 7590 02/26/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
PO BOX 3001
BRIARCLIFF MANOR, NY 10510-8001
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.
2005P00013WOUS 1218
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG OBERMANN
Appeal2014-000658
Application 11/722,685 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wolfgang Obermann (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's final decision rejecting claims 1-14. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
According to Appellant, the real party in interest is Koninklijke
Philips Electronics N.V. Appeal Br. 2 (filed May 17, 2013).
Appeal2014-000658
Application 11/722,685
INVENTION
Appellant's invention "relates to a hair-clipping device for shaving or
trimming hair." Spec. 1, 1. 1.
Claims 1 and 14 are independent. Independent claim 1 is illustrative
of the claimed invention and reads as follows:
1. A hair clipping device comprising:
a stationary cutter member having outer and inner
surfaces, a chamber bounded by the inner surface, a plurality of
alternating skin-stretching portions and hair-catching openings
extending from the outer surface to the inner surface;
a movable cutter member comprising a carrier oriented in
a longitudinal direction and a plurality of alternating recesses
and cutters projecting radially from the carrier and each having
a cutting edge, the movable cutter member is positioned in the
chamber with a free, close fit; and
a drive coupled to the movable cutter member for driving
the movable cutter member relative to the stationary cutter
member,
wherein the carrier and the cutters are solid and loads
exerted onto the cutters during use have minimal effect on the
dimensions of the cutters in radial directions.
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4, 6-8, and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Testi (US 2,253,737, iss. Aug. 26, 1941).2
Although claims 2 and 14 are not cited in the heading of this rejection,
because they are discussed in the body of the rejection, we consider this to
be a mere typographical error on the part of the Examiner. See Final Act. 2-
3 (mailed Dec. 19, 2012).
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Appeal2014-000658
Application 11/722,685
IL The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Testi and Stevens (US 2005/0223559 Al, pub. Oct. 13,
2005).
III. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Testi and Segal (US 2,119,248, iss. May 31, 1938).
IV. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Testi.
V. The Examiner rejected claims 11-13 under 35 U.S.C. § 103(a) as
being unpatentable over Testi and Gallanis (US 3,894,335, iss. July 15,
1975).
ANALYSIS
Rejection I
The Examiner finds that Testi teaches "a stationary cutter member
(16) having outer and inner surfaces, and a chamber (17) bounded by the
inner surface." Final Act 2. The Examiner also finds that Testi teaches "a
moveable cutter member (22)," and that "the movable cutter member (22) is
positioned in the chamber ( 17) with a free, close fit." Id. In the Answer, the
Examiner notes that "the claims have been examined with their 'plain
meaning' as set forth in MPEP 2111.01," and that the plain meaning of the
term "free" is "'able or capable of moving, not constrained' or in this
instance, the moveable cutter member is free to reciprocate/move within and
along the chamber." Ans. 10. The Examiner concludes that, "Appellant
does not clearly define the recitation [free, close fit], such that when the
limitation is used in the claim language, it is understood that no friction-
adding pressure is being applied." Id. at 10-11.
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Appeal2014-000658
Application 11/722,685
Appellant argues that because "'[t]he two cutters [of Testi] are pressed
upwardly in an equalizing manner and maintained in yielding engagement,'"
Testi "teach[ es] against a free, close fit, as recited[]in the claims." Appeal
Br. 8 (citing Testi, 2, col. 1, 11. 66-68). Appellant contends that "the plain
meaning of the phrase 'positioning ... with a free, close fit', precludes using
a leaf spring 25 to press the two cutters upwardly and to maintain the two
cutters in yielding engagement with the stationary shear teeth of the
implement as described in Testi." Reply Br. 4. Appellant relies on the first
paragraph of the Specification which describes that "'the free fit can be so
close, that no friction-adding pressure between the elements is necessary to
insure clean cutting, which greatly reduces power demand."' Id. at 5 (citing
Spec. 1, 11. 11-13). Appellant understands this to mean that "'pressure is not
necessary to insure clean cutting."' Id.
At the outset, we note that both Appellant and the Examiner propose
various definitions for the phrase "free, close fit." Compare Appeal Br. 9
with Ans. 10. It is well established that "claims ... are to be given their
broadest reasonable interpretation consistent with the specification, and ...
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). In this case,
we agree with the Examiner that an ordinary and customary meaning of the
term "free" is "able or capable of moving, not constrained." See Ans. 10.
As such, an ordinary and customary meaning of the phrase "free fit" is a fit
that allows "movable cutter [7] ... to reciprocate/move within and along the
chamber [ 4]" without constraint. See id. It is settled that an artisan must be
presumed to know something about the art apart from what the references
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Appeal2014-000658
Application 11/722,685
disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, a person
of ordinary skill in the art would have readily recognized that because
movable cutter 7 can move unconstrained along hole 4, movable cutter 7 and
hole 4 form a "clearance fit. "3 Such an interpretation of the phrase "free fit"
is consistent with Appellant's Specification which describes cutting member
7 as fitting in hole 4 with a "clearance." Spec. 6, 11. 12-13 (emphasis
added). Furthermore, with respect to the term "close," Appellant's
Specification states that, "the close fit insures reliable cutting of hairs that
are caught between the cutter members 2, 7" and hence, "associated friction
added by tightness between the hole 4 and the movable cutting member [7]
are also avoided." Spec. 3, 1. 33--4, 1. 3 (emphasis added).
As such, in light of Appellant's Specification, we interpret the phrase
"free, close fit" to mean a clearance fit that is so dimensioned as to avoid
friction between the elements forming the fit, namely, movable cutter
member 7 and hole 4, and also to ensure reliable cutting of hair. 4
Accordingly, the limitation of a "movable cutter member is positioned in the
chamber with a free, close fit," as called for by each of independent claims 1
and 14, requires a fit with a clearance between the cutting member and the
chamber so that no friction occurs, such as by contact, between the cutter
member and the chamber. In contrast, as Appellant correctly notes, because
Testi teaches that "[t]he two cutters are ... maintained in yielding
3 An ordinary and customary meaning of the term "fit" is "the degree of
closeness between surfaces in an assembly of parts." Merriam Webster's
Collegiate Dictionary (10th ed. 1997).
4 For reliable cutting of hair, Appellant's Specification describes "a
clearance smaller than 50 µm and more preferably at most about 30 or 40
µm." Spec. 6, 11. 13-14.
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Appeal2014-000658
Application 11/722,685
engagement with the stationary shear teeth of the implement," (Testi, 2, col.
1, 11. 66-68 (emphasis added), Testi teaches contact and hence, teaches
friction between the two cutters and the stationary shear teeth of the
implement. See Reply Br. 4. Therefore, Testi fails to teach a "free, close
fit," as called for by each of independent claims 1 and 14.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of independent claims 1and14, and
claims 2, 4, and 6-8, depending from claim 1, as anticipated by Testi.
Rejections 11-V
The Examiner's use of the disclosures of Stevens, Segal, and Gallanis
in the various combinations presented by the Examiner, and the Examiner's
modification of Testi does not remedy the deficiencies of Testi as discussed
supra. See Final Act. 4--7. Accordingly, for the same reasons as discussed
above, we do not sustain the rejections under 35 U.S.C. § 103(a) of claim 3
as unpatentable over Testi and Stevens; of claim 5 as unpatentable over Testi
and Segal; of claims 9 and 10 as unpatentable over Testi; and of claims 11-
13 as unpatentable over Testi and Gallanis.
SUMMARY
The decision of the Examiner to reject claims 1-14 is reversed.
REVERSED
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