Ex Parte Skrobis et al

Patent Trial and Appeal Board

Aug 2, 2016

13419929 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/419,929 03/14/2012
27752 7590 08/04/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Kenneth James Skrobis
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-8596 1094
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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 KENNETH JAMES SKROBIS,
JEFFREY STUART PARKER,
BIN SHEN,
MATTHEW ROBERT STONE,
JOHN JOSEPH NISBY,
JASON SCOTT SLATTERY,
and
YONGQINGJU
Appeal2014-006632
Application 13/419,929
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
MARK A. GEIER, 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 1-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-006632
Application 13/419,929
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 forward
profile near the tip and a narrow profile further away from the tip." Spec.
1 :6-8. 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 50 to 350 angstroms, said coated blade
comprising a pair of first facets extending from said
blade tip and a pair of second facets extending from a
respective one of the first facets, said coated blade
comprising a facet angle from 90° to 135°, a facet width
from 0.3 8 micrometers to 0.65 micrometers a wedge
angle from 5° to 30°, said coated blade having a
thickness of between 0.8 and 1.5 micrometers measured
at a distance of I micrometer from the blade tip.
REFERENCES RELIED ON BY THE EXAMINER
Sastri
Althaus
US 3,761,372 Sept. 25, 1973
US 5,275,672 Jan. 4, 1994
Trotta US 5,497,550 Mar. 12, 1996
Clipstone US 6,684,513 Bl Feb. 3, 2004
THE REJECTIONS ON APPEAL 1
Claims 1 and 3-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trotta, Clipstone, and Sastri.
1 The rejection of all the claims (i.e., claims 1-15) as being indefinite has
been withdrawn. Ans. 6.
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Application 13/419,929
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Trotta, Clipstone, and Althaus.
ANALYSIS
The rejection of claims 1 and 3-15
as unpatentable over Trotta, Clipstone, and Sastri
Appellants argue claims 1 and 3-15 together. App. Br. 5-11. We
select independent claim 1 for review with claims 3-15 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 first and second pairs of facets on the coating from which certain
ranges of a "facet angle," a "facet width," and a "wedge angle" are recited. 2
Claim 1 further recites, "said coated blade comprising a cutting edge being
defined by a blade tip having a tip radius of from 50 to 350 angstroms," and
also that this coated blade has a thickness in a certain range as "measured at
a distance of 1 micrometer from the blade tip."
The Examiner primarily relies on the teaching of Trotta for disclosing
these limitations and the recited geometry. Final Act. 3 (citations omitted).
However, the Examiner acknowledges that the specifically recited ranges or
dimensions are not disclosed in Trotta. Final Act. 3-5; Ans. 6. In this
regard, the Examiner references both Clipstone and Sastri for their
respective teachings with respect to these missing limitations. Final Act.
3-5. Based on the teachings of these references, the Examiner concludes
that the claimed ranges/dimension would have been obvious "since it has
been held that where the general conditions of a claim are disclosed in the
2 These claim terms are discussed in Appellants' Specification. See Spec.
5:11-24 and Fig. 2.
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Appeal2014-006632
Application 13/419,929
prior art, discovering the optimum or workable ranges involves only routine
skill in the art." Final Act. 4--5; Ans. 8. The Examiner also relies on
"design choice," "a mere change in the size of a component" and "it would
have been obvious to have experimented" with these ranges/dimensions as
additional reasons why claim 1 is obvious. Final Act. 5---6; Ans. 8-9.
For brevity, we do not recite, in detail, the Examiner's analysis
employed to reach the above-stated rejection/conclusion. However, the
Examiner summarizes by stating that claim 1 would have been obvious
"because a person of ordinary skill has good reason to pursue the known
options within [their] technical grasp" and further that "[i]f this leads to the
anticipated success, it is likely the product is not of innovation but of
ordinary skill and common sense." Final Act. 6. On this point, the primary
reference to Trotta recognizes a problem of a too-thin blade tip stating,
"reduction of the included facet angle tends to reduce the strength of the
blade tip," and that as a result thereof, "the edge becomes 'blunt' or 'dull."'
Trotta 1 :48-54. Trotta's invention is directed to providing "characteristics
such as improved shavability, improved hardness, increased edge strength,
durability and/ or corrosion resistance while not adversely affecting the
geometry and effectiveness of the shaving edge." Trotta 1:57---61. Clipstone
identifies a similar problem with a thin blade tip and has similar goals to
make it stronger. See Clipstone 1: 13; 1:24--28; 2: 17-22. Sastri discusses
producing "an extremely sharp and durable cutting edge on a razor blade."
Sastri 1:24--26; see also Sastri 1:59---67. Appellants' Specification follows
this vein and expresses a similar desire in this field of art. See Spec. 1: 19-
22. We thus, do not find fault with the Examiner's statement that a skilled
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Application 13/419,929
person "has good reason to pursue the known options within [their] technical
grasp." Final Act. 6.
Appellants contend that the teachings of Trotta fall "outside the
scope" of Appellants' claimed range for "facet angle" and "tip radius." App.
Br. 6. Additionally, Appellants contend that they are unable "to find in
Trotta any specific disclosure of a tip radius, facet width, wedge angle or
thickness( es)." App. Br. 6; see also Reply Br. 2. As indicated supra, the
Examiner acknowledged Trotta's failure to disclose these specific ranges
and instead, the Examiner relied on the teachings of Clipstone and Sastri, as
well as the optimization of the "general conditions" such as those found in
Trotta. Hence, Appellants' focus on the teachings of Trotta alone is not
persuasive of Examiner error.
The Examiner further supplemented the stated rationale of relying on
Trotta's "general conditions" by referencing where Trotta states, "it is not
intended that the invention be limited to the disclosed embodiments or to
details thereof, and departures may be made therefrom within the spirit and
scope of the invention." Ans. 6 referencing Trotta 4:64 to 5:2; see also Ans.
7-8. Trotta, it is noted, discloses two embodiments having different
geometries, and hence different values associated therewith. Trotta 3 :34 to
4:6. Further, each differently-configured embodiment addresses the problem
Trotta identifies as the "reduction of the included facet angle [that] tends to
reduce the strength of the blade tip." Trotta 1:48-51. As stated above, we
understand from Trotta that "departures" from the "details" disclosed "may
be made," and Appellants do not explain how the Examiner erred in
following Trotta's guidance by finding that it would have been obvious to
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Application 13/419,929
discover "the optimum or workable ranges" of such "details" so as to avoid
the problem of reduced facet angles. See supra.
Appellants also address Clipstone alone contending that Clipstone
"does not concern itself with facet angles, facet widths, wedge angles, or
thicknesses at various micrometers from the blade tip." App. Br. 6.
However, the Examiner did not rely on Clipstone for the variables recited
above but instead, the Examiner relied on Clipstone for its disclosure of a
"tip radius" as well as coatings. Final Act. 3; Ans. 7. It is noted that the
Examiner additionally relied on Trotta for its disclosure of "a tip radius" too.
Final Act. 3.
Appellants further address the Examiner's reliance on "optimization"
by stating, "neither Trotta nor Clipstone recognize or appreciate the facet
angle range to be a result-effective variable" (Appellants also address "facet
width, wedge angle, tip radius, and thickness"). App. Br. 7; see also id. at 8.
Upon reviewing the Examiner's stated rationales, we are not persuaded the
Examiner failed to produce sufficient evidence and findings (supported by
citations to the references) to support a prima facie case of obviousness
based on optimization. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). 3 In such a situation, the burden then shifts to Appellants to produce
evidence or argument in rebuttal. 4
3 "[A ]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [35 U.S.C.] § 132." Jung, 637 F.3d at
1363.
4 In In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014), our reviewing
court stated, "[t]he PTO bears the initial burden of showing a prima facie
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Application 13/419,929
Here, Appellants do not persuasively explain how the different
variables ("details") disclosed in Trotta cannot be altered or optimized as
stated by the Examiner and as expressed in Trotta (i.e., how they are not
result-effective variables). 5 See supra. Instead, Appellants contend that the
"desire to balance all attributes/benefits (e.g., safety, comfort, sharpness)"
"is clearly not recognized by the cited prior art." App. Br. 7. Appellants'
stated contention is not persuasive based on the discussion and references to
Trotta above, without even further addressing the additional prior teachings
of Clipstone and/or Sastri.
Additionally, Appellants contend that the prior art "teaches away from
a wide tip" and that "increasing the tip or facet angle is counterintuitive."
App. Br. 8. However, these contentions by Appellants are not persuasive in
view of the identified problems of reduced facet angle/reduced blade
strength, and the different solutions to these problems provided by Trotta,
Clipstone, and Sastri. See supra. Furthermore, as stated by the Examiner,
"[ t ]he claim would have been obvious because a person of ordinary skill has
good reason to pursue the known options within technical grasp. If this leads
to the anticipated success, it is likely the product is not of innovation but of
ordinary skill and common sense." Final Act. 6.
case of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir.
2007). When a prima facie case of obviousness is made, the burden then
shifts to the applicant to come forward with evidence and/or argument
supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir.
2002)."
5 The Examiner states, "[t]he specification of Trotta et al. does not provide
any disclosure supporting appellant's claim that Trotta et al. teach against
modifications." Ans. 7. Appellants do not identify any provision in Trotta
that contradicts this statement (i.e., that would teach against modification).
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Application 13/419,929
In short, Appellants contend, "[t]he Office has made a bare assertion
of obviousness" (App. Br. 10), but we disagree because we find that there is
reason behind the Examiner's findings and conclusions.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 1 and 3-15 as being obvious over Trotta,
Clipstone, and Sastri.
The rejection of claim 2 as unpatentable over Trotta, Clipstone, and Althaus
Claim 2 depends from claim 1. We note that the Examiner's stated
rejection of claim 2 does not include a reference to Sastri which was
employed in the rejection of base claim 1. Normally, the lack of a reference
to art (i.e., Sastri) relied upon in a base claim but not relied on when
rejecting a dependent claim would warrant a reversal. 6 However, when
responding to the rejection of dependent claim 2, Appellants repeatedly
acknowledge that the rejection of claim 2 is in view of "Trotta, Clip stone,
Sastri; and Althaus." App. Br. 11 (emphasis added). Hence; the underlying
basis for normally reversing this rejection (i.e., Appellants not being
afforded a fair opportunity to respond to Sastri) is no longer relevant since
Appellants understood that Sastri was indeed part of this rejection, and had
6 In In re Hoch, 428 F.2d 1341, 1342, n3 (CCPA 1970), the CCPA 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." Such an omission
suggests Appellants were not afforded a fair opportunity to react to the thrust
of the Examiner's rejection.
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Application 13/419,929
the opportunity to respond thereto. We thus, treat the Examiner's failure to
list Sastri in this rejection of dependent claim 2 as inadvertent error.
When responding to this rejection, Appellants do not address Althaus
or attempt to indicate how the Examiner's reliance thereof for the additional
limitations of claim 2 might be in error. Instead, Appellants contend that
"[a ]dding Althaus to the Trotta, Clipstone, Sastri combination still fails to
provide the missing elements mentioned above with respect to base claim
1." App. Br. 11. However, we are not persuaded that there are missing
elements with respect to parent claim 1, and as such, we sustain the
Examiner's rejection of dependent claim 2.
DECISION
The Examiner's rejections of claims 1-15 are 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)(l )(iv).
AFFIRMED
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