Ex Parte Park et al

Patent Trial and Appeal Board

Nov 3, 2016

12306626 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/306,626 12/24/2008
23413 7590 11/07/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Young Ho Park
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.
MIFOOOlUS 5345
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG HOP ARK and BYUNG SUN AN
Appeal2014-008542
Application 12/306,626
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Young Ho Park and Byung Sun An ("Appellants") 1 appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting claims 1 and 3-9 in
this application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies Dorco Co., Ltd. as the real party in interest.
Appeal Br. 3.
Appeal2014-008542
Application 12/306,626
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A shaver comprising:
a cartridge including:
a cartridge body having a rectangular frame shape;
a plurality of blades installed in the cartridge body in a
horizontal direction of the cartridge body, each of the
blades having a front portion bent downwardly from a rear
portion thereof;
a plurality of pairs of side fixation slots, each pair of
the side fixation slots formed on left and right frame
portions of the cartridge body, respectively, so as to fix left
and right lateral ends of each of the blades;
a single supporter provided at a center area between the
left and right frame portions of the cartridge body and
connecting upper and lower frame portions of the cartridge
body; and
a plurality of inside fixation slots, each formed on the
central supporter so as to fix an inner side portion of each
of the blades; and
a handle body coupled to the cartridge body;
wherein each of the inside fixation slots has a waved groove
shape in the horizontal direction of the cartridge body, the waved
groove shape defining at least one convex portion to fix and
provide a lateral support to the inner side portion of each of the
blades at the center area of the blade.
Appeal Br. 35-36 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
Claims 1, 3, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over King (US 2005/0102847 Al, pub. May 19, 2005) "in view
of' Barone (US 6,948,249 B2, iss. Sept. 27, 2005) "and evidence references"
Ancona '606 (US Des. 428,606, iss. July 25, 2000), Ancona '452
2
Appeal2014-008542
Application 12/306,626
(US Des. 410,452, iss. June 1, 1999), and Liptak (US 4,125,243, iss.
Nov. 14, 1978). See Non-Final Act. 3-5. 2
Claims 4--7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over King, Barone, Ancona '606, Ancona '452, and Liptak as applied to
claim 1, and further in view of Blatter (US 7 ,526,869 B2, iss. May 5, 2009).
See Final Act. 5---6. 3
ANALYSIS
A. Obviousness based on King in view of Barone and evidence
references Ancona '606, Ancona '452, and Liptak
In rejecting claim 1, the Examiner cites King's Figure 5 as disclosing
a cartridge for receiving a plurality of blades, including "a supporter
provided at an area between the left and right frame portions connecting
upper and lower frame portions of the body (38)." Non-Final Act. 3; see
also King i-f 53 (discussing "middle bridging members 3 8" illustrated in
Figs. 4--5). The Examiner finds King's middle supports 38 have inside blade
fixation slots, with "a grooved shaped in the horizontal direction (39)."
Non-Final Act. 3; see also King, Figs. 7-9, i-f 53 (illustrating and discussing
"flexible blade supports 39"). The Examiner finds "King in view of
Barone ... fail[ s] to disclose the inside fixation slots have a waved groove
shape defining at least one convex portion," as recited in claim 1. Non-Final
Act. 4 (emphases added). The Examiner cites Ancona '606 and
Ancona '452 as "provid[ing] evidence that the idea of a wavy shaped
2 The Office Action from which this appeal is taken is the Non-Final Office
Action mailed on March 29, 2013.
3 The Examiner's statement of rejection does not include Ancona '606,
Ancona '452, and Liptak, but we include them here because they are
referenced in the rejection of claim 1, from which claims 4--7 depend.
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Application 12/306,626
support slot is an alternative to a substantially straight shaped support slot in
the art of supporting elongated members," and cites Liptak as "provid[ing]
evidence that it is old and well known in the art of support slots [that] a
wavy shape groove can be used for a planar work piece." Id. at 4--5.
Based on those findings, the Examiner determines "it would have
been well within [the] technical grasp" of a person of ordinary skill in the art
to have made King's grooved shaped slot "in any reasonable known shape
including a waved grooved shaped slot." Id. at 5 (emphasis added). The
Examiner further determines "[i]t would have been an obvious matter of
design choice to make the different portions of the slot of whatever form or
shape was desired or expedient." Id. (emphasis added). The Examiner cites
In re Dailey, 357 F.2d 669 (CCPA 1966), for the proposition that "[a]
change in form or shape is generally recognized as being within the level of
ordinary skill in the art, absent any showing of unexpected results." Id.
The Examiner further reasons the proposed modification of King
would have been obvious in order to provide a functional benefit. Non-Final
Act. 5. In particular, according to the Examiner:
[I]t would have been obvious to have modified [King's] inside
slots to incorporate a wavy shape to utilize three points of contact
(or any other reasonable number) on each blade instead of two
points of contact. Slot/holders are known to incorporate different
shapes to allow for more points of contact (see [Ancona '606],
[Ancona '452], and Liptak). It would have also been obvious to
incorporate any reasonable known shape to allow for this
multiple points of contact (i.e. concave/convex or half of a square
or rectangle).
Id. (emphases added).
Appellants point out that the "intended use" of each of Ancona '606,
Ancona '452, and Liptak "is to hold a photo or sign upright resting on an
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Application 12/306,626
edge face thereof." Appeal Br. 18. Appellants contrast such usage with the
intended use of King and Barone, which Appellants describe as "to laterally
support a side or face portion of a blade" to perform a cutting function. Id.
at 18-19, 26. Appellants contend the Examiner has not explained
adequately why a person of ordinary skill in the art would have "bridge[ d]
the technical and/or informational gap between" these two kinds of devices,
to arrive at the invention of claim I. Id. at 19, 26-27. Appellants further
argue the Examiner's modification does not result in the alleged
improvement of providing more contact points in King, because King's
blade supports 39 are "already in complete contact with" the supported
blades. Id. at 20-21 (citing King, Figs. 8-9).
We determine the Examiner's rejection fails to provide a rational
underpinning to support the legal conclusion of obviousness. See In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The Examiner's "design
choice" rationale concludes it would have been obvious to shape King's
blade supporting grooves to have "any reasonable known shape" or
"whatever form or shape was desired or expedient." Non-Final Act. 5. That
rationale overlooks the fact that King's groove functions to hold a cutting
blade securely in position within a razor head to perform a cutting operation
over a person's skin. See King, Abstract, i-fi-146-48. Some groove shapes
will perform that function adequately, other groove shapes will not. Not just
any groove shape will do. To support the obviousness of modifying King's
blade support grooves 39 to have the claimed "waved ... shape defining at
least one convex portion," the Examiner needs to provide an affirmative
rationale for why that specific groove shape would have been used to hold a
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Application 12/306,626
cutting blade securely in position within a razor head to perform a cutting
operation over a person's skin.
Ancona '452 discloses a waved groove shape defining at least one
convex portion, for supporting a photograph vertically in a mount on a level
surface. Ancona '452, Title, Figs. 1, 6. Liptak also discloses a waved
groove shape defining at least one convex portion, for supporting a sign card
or board vertically in a mount on a level surface. Liptak, Abstract, Figs. 1-
3. However, as Appellants contend, the Examiner has not provided a
sufficient reason why a person of ordinary skill in the art would have
modified King's groove to have such a shape, when King's groove is used
for the very different purpose of holding a cutting blade securely in position
within a razor head to perform a cutting operation over a person's skin.
The Examiner posits such would have been obvious to provide "three"
or "any other reasonable number" of contact points between King's blades
and its blade supports, "instead of two" contact points. Non-Final Act. 5.
Given the structure of King's blade supports 39, it is not clear what "two"
contact points the Examiner finds would be improved by having three or
more contact points. See King, Figs. 7-9, i-f 53. We further agree with
Appellants that King's blade supports 39 are in "complete contact" with the
supported blades. Appeal Br. 20-21. In light of these considerations, the
Examiner's finding that King would have been improved by using the
claimed waved groove shape is not supported by a preponderance of the
evidence.
For the foregoing reasons, we do not sustain the rejection of claim 1
as unpatentable over King in view of Barone and evidence references
Ancona '606, Ancona '452, and Liptak. The Examiner's additional
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Application 12/306,626
consideration of dependent claims 3, 8, and 9 does not cure the noted
deficiency as to claim 1. Non-Final Act. 3--4. Thus, we likewise do not
sustain the rejection of claims 3, 8, and 9.
B. Obviousness based on King in view of Barone and evidence
references Ancona '606, Ancona '452, and Liptak,
and further in view of Blatter
Claims 4--7 depend directly or indirectly from independent claim 1.
Appeal Br. 36-37 (Claims App.). The Examiner's additional consideration
of claims 4--7 in view of Blatter does not cure the deficiency of the other
cited art concerning claim 1, discussed above. Non-Final Act. 5---6.
Therefore, we do not sustain the rejection of claims 4--7 as unpatentable over
King in view of Barone, Ancona '606, Ancona '452, and Liptak as applied
to claim 1, and further in view of Blatter.
DECISION
The Examiner's decision to reject claims 1 and 3-9 is reversed.
REVERSED
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