Ex Parte Sinnema et al

Patent Trial and Appeal Board

Apr 24, 2017

10559360 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/559,360 12/06/2005 Anke Gerda Sinnema 2003P01789WOUS 5647
24737 7590 04/26/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue DEXTER, CLARK F
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANKE GERDA SINNEMA,
ALBERTUS JOHANNES CORNELIS VAN DER BORST,
MARTIN LEONARD BARKER, and GEERT-JAN DARWINKEL
Appeal 2016-000078
Application 10/559,360
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anke Gerda Sinnema et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1 and 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to a shaving apparatus having a skin
contact surface.
Appeal 2016-000078
Application 10/559,360
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A shaving apparatus comprising:
a device for providing a shaving aid additive;
at least one rotary cutting unit including an external
annular cutting member having a wall perpendicular to and
separating parallel skin contact region and hair trapping apertures
region; and
an annular additive retainer positioned on the skin contact
region below the hair trapping apertures region and including a
domed shape, a plurality of circular, sloping ridges having
different concentric diameters centered on the axis, a dimple at
the axis, and a plurality of grooves formed between adjacent ones
of the plurality of ridges, a base of the dimple and of each groove
is higher on the dome than the bases of the grooves with larger
diameters,
wherein the wall and the ridges are configured to
temporarily store and prevent the shaving aid additive from
entering the hair trapping apertures region.
REJECTIONS
The Examiner rejects:
(i) claims 1 and 3 under 35U.S.C. § 112, second paragraph, as
being indefinite; and
(ii) claims 1 and 3 under 35 U.S.C. § 103(a) as being unpatentable
over Geertsma (US 2002/0083591 Al, published July 4, 2002), Westerhof
(WO 98/08660 Al, published Mar. 5, 1998), and Hasselquist (US 1,416,199,
issued May 16, 1922).
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Application 10/559,360
ANALYSIS
Claims 1 and 3—Indefiniteness1
The Examiner finds that the term “parallel” is indefinite because “it is
not clear as to what aspects of the skin contact region and the hair trapping
apertures region are parallel (i.e., parallel in what manner?).” Final Act. 2.
The Examiner also finds that, because the Specification discloses that the
shaving aid retaining means is “in” the skin contact region 16, it is not clear
how the annular additive retainer is provided or positioned “on” the skin
contact region, as required by claim 1. See Ans. 10.
Appellants reply that Figure 4 and page 4, lines 10 to 18, of the
Specification disclose that “(1) the skin contact region and (2) hair trapping
apertures region are parallel to each other as recited in the claims.” Reply
Br. 7.2 Appellants assert that Figure 4 and page 4, lines 3 to 9, of the
Specification support the limitation “positioned on the skin contact region.”
Id. at 4. Appellants thus assert that “claim 1 is not vague and is not
indefinite.” Id. at 7.
We agree with Appellants that Figure 4 and page 4, lines 10 to 18, of
the Specification make it clear to a person of ordinary skill in the art that the
1 The Examiner also rejected claim 1 under the same statutory basis
finding that the terms “wall” and “the axis” are unclear, but withdrew this
rejection. See Ans. 9—10.
2 Although Appellants’ discussion of the term “parallel” is under the
heading “Rejection of the Claims Under 35 U.S.C. § 103(a),” Appellants’
discussion appears to refute the Examiner’s position that the term “parallel”
is indefinite. See Reply Br. 6—8. In addition, Appellants appear to accept
that the regions of Geertsma are “parallel in the same manner or to the same
extent as the corresponding structure of the present application.” Reply Br.
8.
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Application 10/559,360
phrase “parallel skin contact region and hair trapping apertures region”
means that skin contact region (16) and hair trapping apertures region (5),
which we take to be surfaces of the external annular cutting member are
themselves parallel to each other.
Insofar as the phrase “positioned on the skin contact region” is
concerned, other terminology might be more clear, in that, when the annular
additive retainer is positioned on the skin contact region, which we, too,
regard as a surface of the external annular cutting member, the skin contact
region, at least in the area covered by the annular additive retainer, will not
come into contact with the skin. Nonetheless, use of the term “on” does not
make the claim indefinite because one of ordinary skill, taking into
consideration the embodiment illustrated in Appellants’ Figure 4, would
understand that the annular additive retainer (cap 33) is positioned on skin
contact region or surface (16).
Because a person of ordinary skill in the art would be able to
determine the metes and bounds of the limitations at issue, as well as the
claims as a whole, the rejection of claims 1 and 3 under 35 U.S.C. § 112,
second paragraph, is not sustained.
Claims 1 and 3—Obviousness
The Examiner finds that Geertsma discloses “almost every structural
limitation of the claimed invention,” except for “(a) a device for providing
the shaving aid additive; and (b) the specific annular additive retainer
configuration.” Final Act. 3—A. The Examiner relies on Westerhof as
disclosing a device for providing a shaving aid additive, and Appellants do
not contest that the Examiner’s conclusion that it would have been obvious
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to combine Geertsma and Westerhof is improper. See Appeal Br. 13. The
Examiner relies on Hasselquist as teaching the recited configuration of the
retainer and concludes that it would have been obvious to one having
ordinary skill in the art to “provide an alternative friction-reducing
configuration in the form of a concentric ridge structure such as that taught
by Hasselquist,” to eliminate undesirable suction or adhering action. Final
Act. 6.
Appellants argue that “because in Hasselquist and Geertsma the hair
trappings are positioned in opposite locations relative [to] their respective
skin contact regions, it would NOT be obvious to combine these two
references.” Appeal Br. 9. Appellants assert that because Geertsma does
not teach, disclose or suggest an annular additive retainer, and in Hasselquist
the corrugated face plate 22 is held above the hair trappings, Geertsma and
Hasselquist fail to teach an annular additive retainer positioned on the skin
contact region below the hair trapping apertures region, as recited in claim 1.
Id. Appellants assert that, moreover, “th[e] incompatible structure of
Hasselquist teaches away from positioning an annular additive retainer
BELOW the hair trapping apertures as recited in the claims.” Id. at 10.
The Examiner responds that “Appellants’ arguments are not
commensurate with the subject prior art rejection,” because “the shaving
apparatus of Geertsma '591 is modified by replacing its friction-reducing
plate 9 with the friction-reducing plate 22 of Hasselquist,” and the rejection
does not rely on the position of the hair receiving apertures region of
Hasselquist. Ans. 14.
Appellants reply that “the structural incompatibility exists due to the
nature of the shaver (i.e., electric vs. mechanical) precisely because of their
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Application 10/559,360
perceived functional similarity or intended use.” Reply Br. 11. Appellants
argue that “at least due to the dissimilarity in use and the different function
provided by the face plate 22 of Hasselquist and skin support surface (9) of
Geertsma, it is respectfully submitted that it would not be obvious to one of
ordinary skill in the art to combine these references.” Id. at 12. Appellants
assert that, moreover, the combination of Geertsma and Hasselquist is
improper because the slope of Hasselquist’s face plate 22 “is too big to
remain below the cutter even if combined with Geertsma . . . the size of face
plate 22 of Hasselquist is at least three times as large as the skin support
surface (9) of Geertsma ... the face plate 22 covers the whole of the shaver
and in Geertsma three skin support surfaces (9) are used.” Reply Br. 13.
With respect to Appellants’ initial argument and the position of the
hair trapping apertures, we note that the position of the hair trapping
apertures region of Hasselquist is irrelevant to the Examiner’s rejection
because the Examiner relies on Hasselquist only for the particular shape of
the additive retainer, i.e., friction reducing plate 22 of Hasselquist. See Ans.
14. To this end, Geertsma itself discloses an additive retainer, namely, cover
9 below a hair trapping region 5 (see Geertsma, Fig. 3; see also Final Act.
4), and the Examiner’s proposed combination modifies cover 9, or replaces
it with a similarly-sized cover, such that it has a concentric ridge structure
like that of face-plate 22 in Hasselquist. See Final Act. 6. Appellants’
assertion that Hasselquist teaches away from positioning an annular additive
retainer below the hair trapping apertures, as recited, is not germane to the
rejection, in that it appears to ignore the fact that Geertsma teaches this
limitation and is relied on by the Examiner in making the rejection.
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In addition, we do not find Appellants’ additional arguments in the
Reply Brief to be persuasive, in that, as noted above, the Examiner is not
proposing to bodily incorporate the identical face-plate of Hasselquist in the
Geertsma device. Rather, the Examiner is relying on the teachings of
Hasselquist as disclosing a domed shape retainer with a concentric ridge
structure. Final Act. 6. In the Geertsma device, the retainer would remain
below the hair trapping region and be in each of cutting units 3 of Geertsma,
in the same manner as do skin supporting surfaces 9 of Geertsma. See
Geertsma, para. 12 (each cutter of cutting unit 3 has the disclosed structure).
The device of Geertsma would operate in the manner intended, but with a
different shaped decorative cover 9. Further, Appellants’ argument that the
convex face plate 22 of Hasselquist teaches away from the concave skin
support surface 9 of Geertsma (see Reply Br. 8—9) misapplies the concept of
“teaching away,” because it merely points out a difference in structure and
fails to show where either reference criticizes, discredits or otherwise
discourages the use of either a convex or concave shape in as these covers.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
Appellants also argue that reliance on Hasselquist is misplaced
because Geertsma does not suggest replacing cover 9 with an annular
additive retainer as claimed. See Appeal Br. 10-11. Appellants assert that
“Geertsma certainly does not provide any motivation for replacement of its
cover 9.” Id. at 11.
The Examiner responds that there is no requirement for reference to
suggest a modification of itself. Ans. 16.
Appellants reply that because the combined teachings of Geertsma
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Application 10/559,360
and Hasselquist do not “suggest the subject matter of retention of the
shaving aid additive, it would not be obvious to one of ordinary skill in the
art to combine these references as combined by the Examiner’s Answer.”
Reply Br. 10.
Appellants’ arguments are not commensurate with the Examiner’s
rejection. The Examiner finds that Hasselquist provides a reason to modify
Geertsma, namely, to eliminate undesirable suction or adhering action. See,
e.g., Ans. 17. The Examiner states that Geertsma as modified by Hasselquist
results in the structure of the annular additive retainer recited in claim 1 and
that this structure “is fully capable of performing such a function” (of
temporarily storing and preventing the shaving aid additive from entering
the hair-trapping apertures in the external cutting member). Final Act. 5.
Appellants do not explain why the modified Geertsma device would not
meet the recited features, or would not be capable of performing any recited
functions. As such, we are not apprised of Examiner error on this point.
Appellants also argue that the Examiner’s reason to combine the
teachings of the references is insufficient because the length of time between
when Hasselquist was issued and Geertsma was published “is certainly
strong evidence that the combination of recited elements is not obvious.”
Appeal Br. 12.
The Examiner responds that substituting art-recognized equivalents
used for the same purpose provides sufficient rationale to support an
obviousness rejection. See Ans. 17 (citing KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007) (“[Wjhen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
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predictable result.”). The Examiner also notes that “contentions that the
reference patents are old are not impressive absent a showing that the art
tried and failed to solve the same problem notwithstanding its presumed
knowledge of the references.” Id. at 18 (citing In re Wright, 569 F.2d 1124
(CCPA 1977)).
Appellants reply that because there are no shavers in the marketplace
that include all limitations set forth in the claims, and because the Examiner
did not find such shavers in the patent databases, “this great difference in the
ages of the patents cited ... is strong evidence that such a result is not
obvious.” Reply Br. 13.
Appellants’ argument is not persuasive. Although we appreciate that
Hasselquist is nearly 80 years older than Geertsma, Appellants offer no
evidence that the art tried and failed to solve any problems Appellants’
claimed device purports to solve, as is required by Wright. Nor do
Appellants provide objective evidence of long-felt need. See Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)
(“Absent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness.”); see also Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1337—
1338 (Fed. Cir. 2016).
Appellants make additional arguments as to the “incompatibility of
the structures of Hasselquist and Geertsma apparatuses,” and assert that it
would not have been obvious to combine the corrugated face plate 22 sitting
above hair trappings with Geertsma since this positioning as suggested
makes the device inoperable and prevents shaving. Appeal Br. 12.
Appellants also assert that whereas “Hasselquist describes a mechanical
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razor, Geertsma describes an electrical shaver,” which “are incompatible by
their operation,” and thus would not have been obvious to combine together
as suggested. Id.
The Examiner responds that there are no compatibility issues because
“one having ordinary skill in the art would readily understand how to adopt
such a teaching; for example, by providing a replacement plate 22 that is
generally the same size as the plate 9 of Geertsma '591 that is being
replaced.” Ans. 19. The Examiner states that the devices of both Geertsma
and Hasselquist “have skin-contacting surfaces/portions,” and that, in the
shaving arts, one would look to any of the various types of mechanical,
electrical, or manually-operated shaving devices “for improvements and/or
desired shaving characteristics, particularly where there is common ground
between the types, such as problems of traversing the skin, and would be
motivated to make modifications based on the available technology.” Id. at
20.
Appellants reply that “[t]he fields of art are incompatible,” and,
moreover, neither Geertsma nor Hasselquist “is directed to a device for
providing a shaving aid additive.” Reply Br. 10.
To the extent that Appellants’ position is that either Geertsma or
Hasselquist is nonanalogous art, we note that the Geertsma device and the
Hasselquist device appear to be in the same field of endeavor as Appellants’
claimed device, namely, a shaving apparatus having a skin contact surface,
and thus are within the ambit of analogous art. Therefore, we are not
persuaded that any disparity in the nature of the teachings of Geertsma and
Hasselquist renders them non-combinable. Further, Appellants offer no
evidence that Geertsma and Hasselquist could not be used with a shaving aid
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additive. Nor, as mentioned at the outset, have Appellants argued that the
articulated reason to combine the teachings of Westerhof, which is relied on
by the Examiner as teaching a device providing a shaving aid additive, with
Geertsma (as modified by Hasselquist), is somehow deficient. See Final
Act. 5; Appeal Br., passim; Reply Br., passim.
We have carefully considered all of Appellants’ arguments, but they
also do not apprise us of error in the Examiner’s rejection. Thus, for the
reasons discussed above, we sustain the rejection under 35 U.S.C.
§ 103(a) of claim 1, and of claim 3 depending therefrom, as unpatentable
over Geertsma, Westerhof, and Hasselquist.
DECISION
The Examiner’s decision to reject claims 1 and 3 under 35 U.S.C.
§112, second paragraph, is reversed.
The Examiner’s decision to reject claims 1 and 3 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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