Ex parte Silva

Board of Patent Appeals and Interferences

Aug 31, 2000

08652723 (B.P.A.I. Aug. 31, 2000)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of
the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. SILVA
____________
Appeal No. 1999-2628
Application No. 08/652,723
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and JENNIFER D. BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to allow claims 15-17, 23 and
24 as amended subsequent to the final rejection. Claims 1 and 4-14 stand allowed and claims
18-22 stand objected to as being dependent on a rejected claim. No other claims are pending in
this application.
Appeal No. 1999-2628 Page 2
Application No. 08/652,723
The examiner (advisory action, Paper No. 6) indicated that the 35 U.S.C. ß 112 rejection of claims 15-241
was overcome by the amendment filed December 8, 1997.
Any references in this decision to the brief refer to the corrected appeal brief filed April 17, 1998 (Paper2
No. 12).
BACKGROUND
The appellant's invention relates to a haircutting guide-comb instrument for use in
cutting hair of a human being. An understanding of the invention can be derived from a
reading of exemplary claim 16, which appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Wall 3,928,871 Dec. 30, 1975
Maggiore 4,520,565 Jun. 4, 1985
The following rejection is before us for review.1
Claims 15-17, 23 and 24 stand rejected under 35 U.S.C. ß 103 as being unpatentable
over Maggiore in view of Wall.
Reference is made to the brief and reply brief (Paper Nos. 12 and 14) and the answer2
(Paper No. 13) for the respective positions of the appellant and the examiner with regard to the
merits of this rejection.
Appeal No. 1999-2628 Page 3
Application No. 08/652,723
In claims 1, 15 and 16, line 2, it appears that "being" should be deleted.3
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims , to the applied prior art references, and to the respective3
positions articulated by the appellant and the examiner. For the reasons which follow, we shall
sustain the examiner's rejection.
We note, at the outset, that the appellant's brief states, on pages 3 and 4, that claims 15-
17, 23 and 24 stand or fall together. Therefore, in accordance with 37 CFR ß 1.192(c)(7), we
have selected claim 16 as the representative claim to decide this appeal, with claims 15, 17, 23
and 24 standing or falling therewith.
Maggiore, the primary reference relied upon by the examiner, discloses a hair cutting
guide apparatus for clamping and holding a section of hair in spaced relationship from the scalp
for cutting purposes. The hair cutting guide apparatus comprises two jaw members 10, 12,
each including a clamping portion 16 and a handle member 36. A spring member 60 applies
pressure to the handle members 36 to urge the clamping portions 16 together. The examiner
(answer, pages 4-5) finds that Maggiore discloses the subject matter of claim 16, with the
exception of a plurality of comb-teeth on the first elongated leg and an elongated channel on the
second elongated leg superposed over the plurality of comb-teeth, as required by the claim.
Appeal No. 1999-2628 Page 4
Application No. 08/652,723
Wall discloses a similar device (barber's glove) for holding and clamping sections of
hair for cutting. Wall, in particular, discloses provision of arcuate detents (51 in Figure 9 or
the tapered versions 42 in Figure 10) on one of the confronting surfaces of the device and a
channel (illustrated but unnumbered in Figure 10; corresponding element numbered 67 in
Figure 12 and bounded by flanges 68, 69) on the other confronting surface which is
superposed over the detents when the confronting surfaces are brought together. A foam
cushion is contained in the channel and arranged to receive and conform about the detents so as
to form mating surfaces, thereby engaging all the hair disposed between the confronting
surfaces. The purpose of the detents and channel is to cause lifting of the distal ends of the hair
a varying amount so as to provide a serrated cut edge (column 5, lines 59-61) to permit the hair
ends to blend in with the remaining hair (column 1, lines 39-48). As explained, for example,
in column 5, lines 62-67, strands of hair will end up being different lengths after cutting,
depending on whether they pass across the crest of the narrow outer surface of a detent 42,
between the detents or across a detent at a location offset from its crest. The examiner
determines that it would have been obvious to provide the apparatus of Maggiore with comb
teeth and a corresponding superposed groove on the hair engaging surfaces of the legs in view
of the teachings of Wall in order to consistently and simply provide a uniform serrated edge to
the distal ends of the cut hair (answer, page 5).
Appeal No. 1999-2628 Page 5
Application No. 08/652,723
The test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). Indeed, a prima facie case of obviousness is established where the
reference teachings would appear to be sufficient for one of ordinary skill in the art having
those teachings before him to make the proposed combination or modification. See In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Moreover, in evaluating
such references it is proper to take into account not only the specific teachings of the references
but also the inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The appellant's argument (brief, page 10) that it is difficult to imagine what one would
have by combining Maggiore and Wall and that it is doubtful that it would be anything of value
is not well taken, in our opinion. As we see it, the combined teachings of Maggiore and Wall
would have suggested providing the hair cutting guide apparatus of Maggiore with a plurality
of arcuate detents on the clamping face of one of the jaw members and a channel and cushion
on the clamping face of the other jaw member in the manner taught by Wall so as to raise
strands of hair engaged by the apparatus varying amounts in order to facilitate cutting of a
serrated edge. The device so produced is a hair cutting guide apparatus specially adapted for
Appeal No. 1999-2628 Page 6
Application No. 08/652,723
blending cut hair ends with the remaining hair, an application recognized as useful by Wall
(column 1, lines 39-48, and column 2, lines 20-27).
The appellant's principal arguments against the rejection are based on the assertion that,
even if the references were combined as proposed by the examiner, the detents taught by Wall
are not "comb-teeth" in that, when used as disclosed, they hold some hair on their tops (the
narrow outer surfaces) and, thus, do not have a top surface that will move through hair
completely and without interruption (brief, pages 7-8; reply brief, pages 2-5). Consequently,
according to the appellant, the hair cutting guide apparatus is not capable of penetrating through
the hair positioned between the jaw members such that the hair is combed as the apparatus is
then moved through the hair, as required in the last paragraph of independent claims 15 and
16.
In support of the position that the detents of Wall cannot be considered "comb-teeth,"
the appellant cites several patents which illustrate combs having teeth which are tapered
throughout their free ends (see reply brief, page 2 and Exhibit 1). While many, if not all, of
these patents do appear to illustrate comb-teeth having free ends which are tapered in the
direction transverse to the stroke direction, the appellant has not pointed to any express
definition of "comb-teeth" in any of these patents which requires such tapering. In fact, the
Appeal No. 1999-2628 Page 7
Application No. 08/652,723
U.S. Patent No. 1,108,375, issued August 25, 1914 (copy appended).4
U.S. Patent No. 2,397,696, issued April 2, 1946 (copy appended).5
U.S. Patent No. 5,318,051, issued June 7, 1994 (copy appended).6
It is well settled that the recitation of an intended use for an old product does not make a claim to that old7
product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
disclosures in Laing (Figure II), Schweizer (Figure 1) and Koppel (Figure 5; column 4, lines4 5 6
7-15) of comb-teeth which are not tapered throughout their free ends in the direction transverse
to the stroke direction belies any such notion. Laing (page 1, lines 49-53) and Koppel (column
4, lines 7-15) even express an intent to have the hair enter the gaps between the teeth.
Accordingly, we are not persuaded by the appellant's arguments that the examiner's
characterization of the detents taught by Wall as "comb-teeth" is unreasonable.
While we appreciate that neither Wall nor Maggiore teaches or suggests passing the hair
cutting guide apparatus through a person's hair and that the detents taught by Wall, in
cooperation with the channel and cushion on the other confronting face, are intended to lift a
strand or two onto the crest of each detent , the Maggiore apparatus, modified as proposed by7
the examiner in view of Wall, is inherently capable of the use recited in the "whereby . . ."
clause. In particular, it is possible to position the hair of a human being intermediate the jaw
members with the detents penetrating through the hair and to move the hair cutting guide
apparatus through and along the length of that hair to a desired position at which the edges of
the jaw members establish a guide for cutting the hair, such that the hair is combed by such
Appeal No. 1999-2628 Page 8
Application No. 08/652,723
By flat, we understand the appellant to mean that the outer surface of the detent is not tapered in the8
direction transverse to the stroke direction. It is rounded in the stroke direction.
An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405,9
181 USPQ 641, 646 (CCPA 1974).
movement. This is true even if "penetrating through" as used in the claims requires that each
and every strand disposed between the legs (jaw members) lies between the comb-teeth, as the
appellant's arguments on page 3 of the reply brief suggest. While we have carefully considered
the appellant's argument on page 2 of the reply brief that the flat top surface of the detent will8
trap hair thereon as illustrated in Exhibit 2 of the reply brief, we observe, initially, that the
appellant has provided no evidence that this would occur if the Maggiore apparatus were
moved through the hair in a combing motion with the jaw members held in a non-clamping
state, rather than merely clamped to hair at a particular location as disclosed. Moreover, even9
accepting the appellant's argument in this regard, there is nothing in the structure suggested by
Wall which would preclude positioning of each and every strand of hair between the detents,
albeit perhaps with some manipulation of the jaw member and/or the strands being necessary
while the jaw members are held in a non-clamping position. Accordingly, we conclude that the
"whereby . . ." clause does not in this instance serve to patentably distinguish the claims over
the applied prior art .
The appellant also argues, on page 8 of the brief, that the channel taught by Wall carries
a foam cushion which receives and conforms about the detents so as to form mating surfaces
Appeal No. 1999-2628 Page 9
Application No. 08/652,723
and, thus, is not a "channel." We do not agree. As pointed out by the examiner (answer, page
6), the claims do not preclude the presence of an additional element received in the channel
between it and the comb-teeth filling the volume defined by the channel.
The appellant's argument that the claims call for a structure for "one length" cutting
(brief, pages 9 and 10) or "straight haircuts" (reply brief, pages 6 and 7) is simply not
commensurate in scope with the claims. While we have carefully reviewed the claim
terminology particularly alluded to by the appellant on pages 9 and 10 of the brief as requiring
this feature, we see nothing therein which even suggests, much less requires, structure for one-
length cutting. In any event, to the extent that use of the device in the manner recited in the
final paragraph of claim 16 necessarily results in a "straight haircut or "one-length" cutting, the
Maggiore apparatus, as modified in view of Wall, as discussed above, is fully capable of such
use and, thus, inherently meets this limitation.
Accordingly, we sustain the examiner's rejection of representative claim 16, as well as claims
15, 17, 23 and 24 which stand or fall with claim 16.
CONCLUSION
To summarize, the decision of the examiner to reject claims 15-17, 23 and 24 under 35
U.S.C. ß 103 is affirmed.
Appeal No. 1999-2628 Page 10
Application No. 08/652,723
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR ß 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2628 Page 11
Application No. 08/652,723
JDB:pgg
Thomas E. Schatzel
16400 Lark Avenue
Suite 300
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