Ex Parte Patel et al

Patent Trial and Appeal Board

Aug 11, 2016

13419788 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/419,788 03/14/2012
27752 7590 08/15/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Ashok Baku! Patel
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-8595 2362
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
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 ASH OK BAKUL PATEL,
JEFFREY STUART PARKER,
BIN SHEN,
KENNETH JAMES SKROBIS,
MATTHEW ROBET STONE,
JOHN JOSEPH NISBY,
JASON SCOTT SLATTERY,
and
YONGQINGNU
Appeal2014-006631
Application 13/419,788
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-13. Final Act. 1 (Office Action Summary). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-006631
Application 13/419,788
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to razors and more particularly
to razor blades with sharp and durable cutting edges having a large tip radii
and a narrow profile." Spec. 1: 6-7. Claim 1 is the sole independent claim;
is illustrative of the claims on appeal; and, is reproduced below:
1. A razor blade comprising:
a substrate with a coating joined to said substrate
defining a coated blade, said coated blade comprising a
cutting edge being defined by a blade tip having a tip
radius of from 500 to 1500 angstroms, said coated blade
having a thickness of between 0.3 and 0.5 micrometers
measured at a distance of 0.25 micrometers from the
blade tip, a thickness of between 0.4 and 0.65
micrometers measured at a distance of 0.5 micrometers
from the blade tip, a thickness of between 0.61 and 0.71
micrometers measured at a distance of 1 micrometer
from the blade tip, a thickness of between 0.96 and 1.16
micrometers measured at a distance of 2 micrometers
from the blade tip, and a thickness of between 1.56 and
1.91 micrometers measured at a distance of 4
micrometers from the blade tip.
REFERENCES RELIED ON BY THE EXAMINER
Sastri
Althaus
Clip stone
Bridges
US 3,761,372 Sept. 25, 1973
US 5,275,672 Jan. 4, 1994
US 6,684,513 Bl Feb. 3, 2004
US 2011/0308089 Al Dec. 22, 2011
THE REJECTIONS ON APPEAL
Claims 1 and 3-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clipstone, Bridges, and Sastri.
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Clipstone, Bridges, and Althaus.
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Application 13/419,788
ANALYSIS
The rejection of claims 1 and 3-13
as unpatentable over Clipstone, Bridges, and Sastri
Appellants argue claims 1 and 3-13 together. App. Br. 3-10. We
select independent claim 1 for review with claims 3-13 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 is directed to a coated razor blade having a cutting edge, and
recites different blade thicknesses based on different distances from the
cutting edge. Claim 1 also recites that the cutting edge has "a tip radius of
from 500 to 1500 angstroms."
The Examiner relies on Clipstone for disclosing a razor blade
substrate having various coatings thereon, and a cutting edge having a tip
radius. Final Act. 2. The Examiner finds that "Clipstone fail[ s] to disclose
the tip radius is 700 angstroms" and relies on Bridges for this teaching. 1
Final Act. 2-3. The Examiner identifies "the substitution of one known
element for another'' to yield a predictable result as the basis for providing
"Clipstone et al. with the radius, as taught by Bridges." Final Act. 3.
Despite their combination, the Examiner acknowledges that
"Clipstone et al. in view of Bridges fail to disclose the claimed specific
thicknesses" and relies on Sastri for providing "evidence that it is old and
well known in blade construction to alter the blade thickness as you extend
1 We cannot help but notice that Clipstone teaches "an ultimate tip having a
radius less than about 1000 angstroms, e.g., about 200-300 angstroms."
Clipstone 1:7-9; see also Clipstone 2:41--43. Nevertheless, the Examiner
relies on Bridges for disclosing "a tip radius that is 700 angstroms
(paragraph [0016] lines 25-29)." Final Act. 3.
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Application 13/419,788
away from the blade tip." Final Act. 3--4 (referencing Sastri Figs. 3 and 4);
see also Ans. 6-7.
Sastri discloses an increase in thickness as the distance from the tip
increases. See Sastri Figs. 2--4 and accompanying description. In rebuttal,
Appellants provide two distance/thickness tables, one depicting the values
recited in claim 1 and the other depicting the values disclosed in Sastri. See
App. Br. 7-8. The distance/thickness values depicted in these two tables
overlap, i.e., Sastri depicts values measured 1,000 to 8,000 Angstroms from
the tip while Appellants' table depicts values measured from 2,500 to 40,000
Angstroms from the tip.
In view of Sastri, the Examiner finds that "since it has been held that
where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art." Final Act. 4; see also Ans. 7. The Examiner also references
"design choice," "a mere change in the size of a component," and the ability
of one skilled in the art "to pursue the known options within [their] technical
grasp" as further reasons for the rejection of these claims. Final Act. 4. The
Examiner also references Sastri' s teaching of altering blade thicknesses,
stating, "it would have been obvious to have experimented with different
thicknesses of Clipstone et al. [as] modified by Bridges razor." Ans. 6-7.
Appellants initially address Clipstone alone, contending that Clipstone
does not disclose the recited tip radius as well as particular thicknesses at
various distances from the blade tip. App. Br. 4. Appellants' focus on
Clipstone for these teachings is not responsive to the Examiner's rejection
that instead relies on Bridges and Sastri for these teachings.
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Application 13/419,788
Appellants further contend that a person skilled in the art "would be
discouraged from increasing the tip radius chosen by Clipstone to improve
resistance to tip rounding." App. Br. 4; see also id. at 5. However, as noted
earlier, Clip stone envisions a tip radius range ("less than about 1000
angstroms") that overlaps the claimed range ("of from 500 to 1500
angstroms"). 2 See supra. The Examiner further references Clipstone' s
statement that "[ o ]ther embodiments of the invention are within the scope of
the appended claims" as support that Clipstone itself acknowledges that
"modified versions of the Clipstone et al. invention are within the scope of
[Clipstone's] claimed invention." Ans. 6. Accordingly, Appellants'
contention that one skilled in the art "would be discouraged" from using a
tip radius in the recited range is not persuasive of Examiner error.
Appellants also address Bridges, stating that one skilled in the art
"would not readily tum to any reference requiring the tip radius to be
changed." App. Br. 5. However, this contention is not persuasive for the
reasons expressed immediately above. Additionally, Appellants contend,
"Bridges does not disclose this range on a coated substrate" (Reply Br. 2),
but the Examiner relies on Clipstone for teaching multiple coatings on a
substrate (Final Act. 2). 3 Appellants further address teachings in Bridges
2 Appellants also contend that the Examiner "appears to miss the notion that
the cutting force generally becomes lower only by providing a thinner tip
and smaller radius, and not with a larger tip radius, as in the instant
invention." Reply Br. 2. However, Appellants do not appear to realize that
the tip radius recited and the tip radius disclosed in Clipstone and Bridges
overlap, meaning that these references can also be said to teach "a larger tip
radius," as argued.
3 The Examiner also finds, "[i]t would have been well within one's technical
skill to have modified the thicknesses of Clipstone et al. to match the
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that extend beyond those relied on by the Examiner (i.e., finding that
"Bridges teaches it is old and well known in the art of razor blade tips to
incorporate a tip radius of 700 angstroms"). App. Br. 5; Ans. 6. Appellants'
argument seeking to bodily incorporate other, additional teachings in
Bridges to Clipstone is not persuasive the Examiner erred in relying on
Bridges for disclosing a tip radius of 700 angstroms, or that it was error to
provide "Clipstone et al. with the radius, as taught by Bridges." Final Act. 3.
When addressing Sastri, Appellants seem not to recognize that the
Examiner is relying on Sastri for disclosing that blade thickness varies "as
you extend away from the blade tip." Final Act. 3. In other words,
according to the Examiner, "it would have been well within one's technical
skill to have arrived at the claimed thicknesses because it has been held that
where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art." Ans. 7; see also Final Act. 4. Instead, Appellants provide separate
tables listing the distance/thickness values disclosed in Sastri and those
claimed. App. Br. 7-8. Appellants state that in view of these tables, "[i]t is
evident the ranges required in [Appellants'] Claim 1 are not recognized by
Sastri." App. Br. 8. The Examiner is not relying on Sastri for disclosing the
exact ranges as claimed, but instead for teaching that the distance/thickness
measurements can vary and, as such, "discovering the optimum or workable
ranges involves only routine skill in the art." Ans. 7; Final Act. 4.
modified Clipstone et al. in view of Bridges blade that incorporates a tip
radius of 700 angstroms." Ans. 6. Appellants' contentions are not
persuasive of Examiner error on this point.
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Application 13/419,788
On this point, Appellants dispute "that it would have been within the
ordinary skill in the art to optimize one or more of them," and that "'[t]he
parameter optimized was not recognized to be a result-effective variable."'
App. Br. 8 (citations omitted). However, Appellants do not explain how or
why the Examiner erred in finding that the general conditions of this claim
are disclosed in the cited art or how optimization of such variables would
have been beyond the ability of one skilled in the art. Further, motivation to
achieve such optimization is expressed in both Clipstone (Clipstone 2: 17-
22) and Sastri (Sastri 1 :24--26, 1 :56-58, and 2:35-37).
Appellants also argue that Sastri "clearly teaches away from providing
thicker layers or providing a larger tip radius." App. Br. 7. However,
Appellants provide no evidence or support to the effect that Sastri criticizes,
discredits, or otherwise discourages the solution claimed. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants further argue that Sastri' s process "alters thicknesses in a
very different way than Clipstone," however, even Appellants acknowledge
that the "claim does not require a type of coating process." Reply Br. 2-3.
Accordingly, in view of the record presented, Appellants are not
persuasive the Examiner erred in rejecting claims 1 and 3-13 as
unpatentable over Clipstone, Bridges, and Sastri. We sustain the Examiner's
rejection thereof.
The rejection of claim 2
as unpatentable over Clipstone, Bridges, and Althaus
Claim 2 depends from claim 1. The Examiner relies on the teachings
of Clipstone, Bridges, and Althaus (and not also Sastri) in rejecting
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Application 13/419,788
dependent claim 2. Final Act. 4. The teachings of Althaus are directed to
the additional limitations recited in claim 2. Final Act. 5.
Appellants contend, "adding Althaus to the Clipstone and Bridges
combination [] fails to provide the missing elements mentioned above with
respect to base claim 1" (i.e., "the specific thicknesses at the specific
distances from the tip"). App. Br. 5, 12. Consequently, Appellants contend,
"Claim 2 is patentable over Clipstone alone or the combination of Clipstone,
Bridges, and Althaus." App. Br. 12. The Examiner disagrees, elaborating
on why "Clipstone et al. in view of Bridges [and] further in view of Althaus
et al." teach the limitations of claim 2. Ans. 7.
However, with respect to base claim 1, the Examiner acknowledges
that "Clipstone et al. in view of Bridges fail to disclose the claimed specific
thicknesses," and Althaus is not relied on in this rejection of dependent
claim 2 for teaching these thicknesses. Final Act. 3, 5; see also Ans. 7. In
short, the Examiner fails to identify a reference in the rejection of dependent
claim 2 (such as Sastri) that teaches the distance/thickness values recited in
base claim 1. 4 As such, the Examiner has not presented a prima facie case
of obviousness. We reverse the Examiner's rejection of claim 2 as being
unpatentable over Clipstone, Bridges, and Althaus.
4 In In re Hoch, 428 F.2d 1341, 1342, n.3 (CCPA 1970), the predecessor to
our reviewing court affirmed the decision by the Board, which approved the
use of non-referenced art but stated that "if we did not find the rejections
based solely on [the referenced art] to be sound, we might well feel
constrained to reverse the decision of the board. Where a reference is relied
on to support a rejection, whether or not in a 'minor capacity,' there would
appear to be no excuse for not positively including the reference in the
statement of the rejection." This omission suggests Appellants were not
afforded a fair opportunity to react to the thrust of the Examiner's rejection.
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Application 13/419,788
DECISION
The Examiner's rejection of claims 1 and 3-13 is affirmed.
The Examiner's rejection of claim 2 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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