Ex Parte Perez-Lopez et alDownload PDFPatent Trial and Appeal BoardSep 1, 201612522284 (P.T.A.B. Sep. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/522,284 01/06/2010 27752 7590 09/06/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Xavier Perez-Lopez 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-8051 8498 EXAMINER PRONE, JASON D ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 09/06/2016 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 XAVIER PEREZ-LOPEZ and ANDREAS LARSCHEID Appeal 2015-000106 1,2 Application 12/522,284 Technology Center 3700 Before PHILIP J. HOFFMANN, MATTHEWS. MEYERS, and ROBERT J. SILVERMAN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 2, 7, 9, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is the only independent claim under appeal. See Br., Claims App. Below, we reproduce claim 1, with formatting added, as representative of the appealed claims. 1 Our decision references Appellants' Appeal Brief ("Br.," filed Apr. 29, 2014), and the Examiner's Answer ("Answer," mailed July 8, 2014). 2 According to Appellants, "[t]he real party in interest is Braun GmbH of Kronberg, Germany, a wholly owned subsidiary of The Procter & Gamble Company of Cincinnati, Ohio." Br. 1. Appeal2015-000106 Application 12/522,284 Id. 1. A hair removal apparatus having a trimmer ( 4 ), whereby the trimmer ( 4) has at least two cutting parts (7, 8) that each have rows of teeth, wherein the rows of teeth of one of the cutting parts is drivable relative to the other cutting part, and having at least one wet shaver unit (21) which has at least one sharp-edged razor blade (22), characterized in that the at least one wet shaver unit (21) is arranged on a carrying element (19) guided movably on a housing ( 1 ), said carrying element being adjustable by a user in at least two different positions, a first position being a storage position of the wet shaver unit and a second position allowing simultaneous removal of hair by the trimmer ( 4) which is leading in a direction of use (P) and the at least one wet shaver unit (21 ). REJECTION AND PRIOR ART The Examiner rejects claims 1, 2, 7, 9, and 11 under 35 U.S.C. § 103(a) as unpatentable over Blaustein (US 7,536,787 B2, iss. May 26, 2009) and Wetzel (US 5,507,095, iss. Apr. 16, 1996). See Answer 2-3. ANALYSIS Independent claim 1 recites a hair removal apparatus characterized in that the at least one wet shaver unit (21) is arranged on a carrying element (19) guided movably on a housing ( 1 ), said carrying element being adjustable by a user in at least two different positions, a first position being a storage position of the wet shaver unit and a second position allowing simultaneous removal of hair by the trimmer ( 4) which is leading in a direction of use (P) and the at least one wet shaver unit (21 ). Br., Claims App. Appellants argue that the rejection is in error because 2 Appeal2015-000106 Application 12/522,284 the Office Action failed to state sufficient reasoning why it would have been obvious to one skilled in the art to modify Blaustein so that its razor blade is extendable. As presently understood, the long hair trimmer of Wetzel is extendable (not the short hair cutter) as may been seen in Fig. 2 thereof, and it is the trimmer assemhlv, not the razor cartridge, that is extendahle in Blaustein. In contrast, the claimed invention recites that it is the wet shaver unit (which comprises a sharp edged razor blade) which is arranged on a carrying element guided movably on the housing and being adjustable by a user in at least two different positions in combination with the trimmer leading in a direction of use (P). The Office Action merely states that "it would have been obvious and well within one's technical skill to have made the trimmer the main tool and to put the shaving unit on the carrying element and the trimmer on the housing in front of the shaver unit to allow for the shaver unit to be adjustable." (Para 3 of the Office Action). It is respectfully submitted that merely because something is within one's technical skill does not mean that the change would have been obvious and that this is an insufficient reasoned basis as to why modifying Blaustein would have been obvious to one skilled in the art. Br. 4 (emphases added). We agree with Appellants. The Examiner does not find that either reference teaches a wet shaver unit positionable between a stowage position and a hair-removal position. Further, both references show that it is the trimmer that is positionable between two positions. See id. Still further, the Examiner's rationale for combining the references such that a wet shaver (i.e., the cutter other than the trimmer) is positionable between two positions is that [i]t would have been obvious to have replaced any of the tools of Blaustein ... with any other known shaving tool based on a preference of the user to achieve an ideal tool including replacing the shaving cartridge with a trimmer and replacing the movable trimmer with a movable shaving cartridge all at the same time keeping the adjustable tool as the rear tool in the direction of shaving. 3 Appeal2015-000106 Application 12/522,284 Answer 4--5 (emphasis added). The Examiner's rationale says only that one may modify the arrangement if one desires to do so. Thus, we determine that the Examiner does not provide a reason with rational underpinnings for the proposed combination of references. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Based on the foregoing, we do not sustain the rejection of claims 1, 2, 7, 9, and 11. DECISION We REVERSE the Examiner's obviousness rejection of claims 1, 2, 7, 9, and 11. REVERSED 4 Copy with citationCopy as parenthetical citation