Ex Parte Stiles

Board of Patent Appeals and Interferences

Feb 25, 2010

10648686 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHARIDAN LORRAINE STILES
____________

Appeal 2009-002758
Application 10/648,686
Technology Center 3700
____________

Decided: February 25, 2010
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002758
Application 10/648,686

2
STATEMENT OF THE CASE
Sharidan Lorraine Stiles (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-8, 10-12, 15, 21-24,
27, 28, and 33-40, which are the only claims pending in the application. We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to personal shaving razors
for grooming in fine detail. Spec. 1, para. 2.
Claims 11 and 10, reproduced below, are illustrative of the claimed
subject matter.
1. A personal styling razor, comprising:
a handle portion having lower, middle and
upper longitudinal portions; and
a head portion, having a razor blade with a
straight cutting edge, attached to said upper
longitudinal portion wherein said head portion and
said razor blade are configured to permit shaving
hair;
wherein said cutting edge of said razor blade
is substantially perpendicular to a longitudinal axis
of the handle;
wherein said lower longitudinal portion
extends along a first axis, said middle longitudinal
portion extends along a second axis and said upper
longitudinal portion extends along a third axis;

1 Independent claim 4 differs from claim 1 in that claim 4 requires a fixed
extension angle of greater than ninety degrees.
Appeal 2009-002758
Application 10/648,686

3
wherein said second and third axes intersect
at a single point and form a fixed extension angle
that is less than or equal to ninety degrees;
wherein said extension angle is defined by a
portion of said second axis starting from the
intersection of said second and third axes and
extending toward the intersection of the first and
second axes, and a portion of said third axis
starting from the intersection of said second and
third axes and extending toward the razor head,
wherein the extension angle faces the front of the
razor;
wherein said first and said second axes
intersect at a single point and form a fixed contour
angle that is less than 180 degrees;
wherein said contour angle is defined by a
portion of said first axis starting from the
intersection of said first and second axes and
extending toward the end of said razor handle
portion located on said lower handle portion, and a
portion of said second axis starting from the
intersection of said first and second axes and
extending toward the intersection of said second
and third axes, wherein the contour angle faces the
front of the razor; and
wherein said head portion has a width of less
than or equal to one inch.

10. A detail shaving razor, comprising:
an ergonomically shaped handle portion;
and
a head portion attached to said handle
portion and formed with at least one razor blade
having a straight cutting edge wherein said head
portion and said razor blade are configured to
permit shaving hair;
Appeal 2009-002758
Application 10/648,686

4
wherein said head portion is less than or
equal to 1/2 inch wide;
wherein said cutting edge of said razor blade
is substantially perpendicular to a longitudinal axis
of the handle;
wherein said handle portion is adapted to
provide increased control over the head portion
during shaving;
wherein said handle portion further
comprises a front or rear perspective that is
substantially hour-glass in shape, having:
a lower longitudinal portion of a first curved
shape; and
a middle longitudinal portion of a second
curved shape attached lengthwise to said first
lower longitudinal portion;
wherein a waist portion is formed between
said first curved shape and said second curved
shape.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Heinrich US 2,139,680 Dec. 13, 1938
Lamb US Des. 169,147 Mar. 31, 1953
Hollinger US Des. 259,743 Jun. 30, 1981
Smith US 4,335,509 Jun. 22, 1982
Carreker US 4,461,078 Jul. 24, 1984
Heller US 4,700,477 Oct. 20, 1987
Lazarchik US 4,785,534 Nov. 22, 1988

The following rejections under 35 U.S.C. § 103(a) are before us for
review:
Appeal 2009-002758
Application 10/648,686

5
(1) The Examiner rejected claims 1, 2, 4, 5, 7, 8, 21, 22, 27, 28, 33, 35,
and 37-39 as being unpatentable over Hollinger and Heller.
(2) The Examiner rejected claims 3, 6, 34, and 36 as being
unpatentable over Hollinger, Heller, and Lazarchik.
(3) The Examiner rejected claims 10, 23, and 24 as being unpatentable
over Heller and Lamb.
(4) The Examiner rejected claims 11 and 12 as being unpatentable
over Heller, Lamb, and Heinrich.
(5) The Examiner rejected claim 15 as being unpatentable over Heller,
Lamb, and Carreker.
(6) The Examiner rejected claims 10 and 40 as being unpatentable
over Hollinger, Heller, and Smith.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Rejection (1)
Claims 1, 4, 5, 8, 21, 27, 28, 35, and 37
Issues
In light of the contentions of the Examiner and Appellant (see Ans. 4-
7; App. Br. 7-12; Reply Br. 4), the issues presented for our consideration are
as follows:
1. Does Hollinger’s razor comprise a handle portion satisfying the lower,
middle, and upper longitudinal portions extending along a first axis, a
second axis, and a third axis, respectively, with the fixed extension
Appeal 2009-002758
Application 10/648,686

6
angle defined between the second and third axes and the fixed contour
angle defined between the first and second axes called for in claims 1
and 4?
2. Does Heller teach away from modification of Hollinger to provide a
head width as taught by Heller?
Findings
The lower, middle, and upper (top) longitudinal portions 32, 34, 36 of
Appellant’s handle, along with first, second, and third longitudinal axes 33,
35, and 37, contour angle C, and extension angle B, are depicted in Figure
6A. See Spec., paras. 28-30.
Appellant’s Figure 6A is reproduced below:

Appeal 2009-002758
Application 10/648,686

7
Figure 6A is said to be a side view of one embodiment of Appellant’s
razor. Spec., para. 16.
Appellant’s Figure 6A depicts an arcuate one-piece handle which
curves gently from a distal, lower end toward the top portion 36, where it
curves much more sharply toward the head 38. The first two longitudinal
axes 33 and 35 (said to define the axes along which the lower portion 32 and
middle portion 34 extend) are drawn through the gently curved section so as
to intersect to define a contour angle C therebetween. The third longitudinal
axis 37 extends through the top portion 36 and intersects second axis 35 to
define an extension angle B with the axis 35. Extension angle B is depicted
in Figure 6A to be greater than 90 degrees, and contour angle C is depicted
in Figure 6A to be less than 180 degrees. As depicted in Figure 6A,
Appellant’s handle is contoured, and the contour is not parallel to any of the
axes in any of the lower, middle, and top portions. The depicted
longitudinal axes do not bisect the lower, middle, and upper portions,
respectively.
Appellant discloses that the contour angle C may vary, and that any
angle between 0 and 180 degrees may be utilized for the extension angle B.
Spec., paras. 28 and 29.
The Examiner has annotated Figure 1 of Hollinger to illustrate how
Hollinger’s handle comprises lower, middle, and upper portions extending
along first, second, and third longitudinal axes as called for in claim 1. The
annotated Figure 1 is included as “Appendix A” (hereinafter “Appendix A”)
on page 15 of the Examiner’s Answer.
Appeal 2009-002758
Application 10/648,686

8
Appendix A of the Examiner’s Answer is reproduced below:

The Examiner’s Appendix A depicts Figure 1 of Hollinger (a front
elevational view of the razor), with annotations said to show a lower portion
102, a middle portion 101, and an upper portion 100, as well as first, second,
and third longitudinal axes C, B, and A, respectively. Appendix A depicts
an arcuate one-piece handle which curves gently from a distal, lower end
toward the upper portion 100, where it curves much more sharply toward the
head 14. The first two longitudinal axes C and B (said to define the axes
along which the lower portion 102 and middle portion 101 extend) are
drawn through the gently curved section so as to intersect to define a contour
angle 105 therebetween. The third longitudinal axis A extends through the
upper portion and intersects second axis B to define an extension angle 104
with the axis B. Extension angle 104 is depicted in Appendix A to be less
Appeal 2009-002758
Application 10/648,686

9
than 90 degrees, and contour angle 105 is depicted in Appendix A to be less
than 180 degrees. As depicted in Appendix A, the handle is contoured, and
the contour is not parallel to any of the axes in any of the lower, middle, and
upper portions. The depicted longitudinal axes do not bisect the lower,
middle, and upper portions, respectively.
The Examiner has annotated Figure 1 of Hollinger to illustrate how
Hollinger’s handle comprises lower, middle, and upper portions extending
along first, second, and third longitudinal axes as called for in claim 4. The
annotated Figure 1 is included as “Appendix B” (hereinafter “Appendix B”)
on page 16 of the Examiner’s Answer.
Appendix B of the Examiner’s Answer is reproduced below:

Appeal 2009-002758
Application 10/648,686

10
The Examiner’s Appendix B depicts Figure 1 of Hollinger (a front
elevational view of the razor), with annotations said to show a lower portion
102, a middle portion 101, and an upper portion 100, as well as first, second,
and third longitudinal axes C, B, and A, respectively. Appendix B depicts
an arcuate one-piece handle which curves gently from a distal, lower end
toward the upper portion 100, where it curves much more sharply toward the
head 14. The first two longitudinal axes C and B (said to define the axes
along with the lower portion 102 and middle portion 101 extend) are drawn
through the gently curved section so as to intersect to define a contour angle
105 therebetween. The third longitudinal axis A extends through the upper
portion and intersects second axis B to define an extension angle 104 with
the axis B. Extension angle 104 is depicted in Appendix B to be greater than
90 degrees, and contour angle 105 is depicted in Appendix A to be less than
180 degrees. As depicted in Appendix B, the handle is contoured, and the
contour is not parallel to any of the axes in any of the lower, middle, and
upper portions. The depicted longitudinal axes do not bisect the lower,
middle, and upper portions, respectively.
Heller describes an eyebrow trimmer or shaper mounted on a handle
10 having “a textured area 12 for easy gripping and manipulation of the
device.” Col. 2, ll. 16-19. Heller discloses a head consisting essentially of a
blade 16, a front razor head guard 18, and a back razor head and safety guard
20, and teaches that a razor blade width of “approximately 3/16" to 1/4"”
with rounded corners is desirable. Col. 2, ll. 22-30.
Heller teaches that the eyebrow trimmer “is mounted at a comfortable
operating angle on a handle having a textured grip for easy holding and
manipulation of the eyebrow trimmer.” Abstract.
Appeal 2009-002758
Application 10/648,686

11
Heller’s Figure 2 is reproduced below:

Heller’s Figure 2 is said to be a side elevational view of the eyebrow
trimmer. Heller, col. 1, ll. 66-68.
As depicted in Figure 2, Heller’s razor blade is directed downwardly,
at an angle of less than 90 degrees relative to the handle. Heller does not
specify that the particular angle depicted is critical, or disparage other
mounting arrangements of an eyebrow trimmer on a handle.
Analysis
Appellant does not present any separate arguments for claims 5, 8, 21,
27, 28, 35, and 37. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2009), these claims stand or fall with the one of claims 1 and 4 from which
they depend.
Based on our findings above, the handle of Hollinger satisfies both the
limitations of a lower, middle, and upper portion called for in claim 1 and
those called for in claim 4. The fact that Hollinger’s handle is a continuous
Appeal 2009-002758
Application 10/648,686

12
curved element does not detract from the Examiner’s reliance on various
portions of it as corresponding to the lower, middle, and upper portions
called for in the claims. As shown in our findings above, the similarity
between Hollinger’s handle and that of Appellant is striking, and the
demarcated lower, middle, and upper portions of Hollinger’s handle extend
along the three demarcated axes in both Appendices A and B in much the
same manner as Appellant’s lower, middle, and upper portions. As such, the
Examiner’s parsing of Hollinger’s handle into three portions and definition
of three longitudinal axes along which those portions extend are no more
arbitrary than those described by Appellant in Figure 6A.
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 51-52 (1966)). “A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be led in a direction divergent from the path that was taken
by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
(citation omitted).
As noted in our findings above, while Heller teaches that the eyebrow
trimmer is mounted at a comfortable angle on the handle for easy holding
and manipulation, Heller does not characterize the particular angle depicted
as critical or disparage other possible mounting arrangements of an eyebrow
trimmer on a handle. Simply that the particular mounting angle shown by
Heller differs from the angle of the razor blade to the handle in Hollinger is
not sufficient to establish that Heller teaches away from the use of a
trimming head on Hollinger having a width as taught by Heller. See In re
Appeal 2009-002758
Application 10/648,686

13
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (simply that there are
differences between two references is insufficient to establish that such
references teach away from any combination thereof).
Conclusions
1. Hollinger’s razor comprises a handle portion satisfying the lower,
middle, and upper longitudinal portions extending along a first axis, a
second axis, and a third axis, respectively, with the fixed extension
angle defined between the second and third axes and the fixed contour
angle defined between the first and second axes called for in claims 1
and 4.
2. Heller does not teach away from modification of Hollinger to provide
a head width as taught by Heller.
Claims 2 and 33
Issue
The issue presented is whether the Examiner erred in finding that
Hollinger’s head is “disposable,” as required in claims 2 and 33. The
Examiner construes the term “disposable” as capable of being “thrown away
or gotten rid of.” Ans. 20. Appellant’s argument that Hollinger’s head is
not “disposable” is premised on Appellant’s contention that the
Specification, in paragraph 20, sets forth a definition of “disposable” as
“interchangeably mounted.” See App. Br. 13-14; Reply Br. 5.
Discussion
We do not find a definition of “disposable” as “interchangeably
mounted” in paragraph 20 of Appellant’s Specification. In paragraph 20,
Appellant’s Specification discloses that in certain embodiments the heads
are “in a disposable form.” Paragraph 20 of the Specification further
Appeal 2009-002758
Application 10/648,686

14
discloses that the shaving heads “can be interchangeably mounted on the
same handle in some embodiments.” In other words, the feature of
interchangeably mounting appears to be another characteristic of some
embodiments of the heads, not a definition of “disposable.”
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
We find that the Examiner’s construction of “disposable” as having
the capability to be thrown away or gotten rid of is consistent with
Appellant’s use of the term “disposable” in the Specification. See Spec. 3-4,
para. 21 (stating “[t]he disposable razor may be thrown away when the blade
has become too dull for effective shaving”). Further, we find that an
ordinary and customary definition of “disposable” is “that can be thrown
away after use.” Webster's New World Dictionary 406 (David B. Guralnik
ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984). The Examiner’s
construction is also consistent with this ordinary and customary use of the
term “disposable.”
Conclusion
For the above reasons, we are not persuaded that the Examiner erred
in finding that Hollinger’s head is “disposable.”
Appeal 2009-002758
Application 10/648,686

15
Claim 7
Issue
Appellant argues that Hollinger’s handle does not comprise first and
second curved shapes, because Hollinger’s handle is a single curved shape.
App. Br. 15. Accordingly, the issue presented is whether the portions of
Hollinger’s handle designated as lower portion 102 and middle portion 105,
respectively, in Appendix A of the Examiner’s Answer, comprise first and
second curved shapes, respectively, as called for in claim 7.
Discussion
Notably, claim 7 does not exclude first and second curved shapes that
together form a continuous curved shape. As is apparent in Appellant’s
Figure 6A, reproduced above, the lower portion 32 and middle portion 34 of
Appellant’s handle form a single curved shape. Thus, claim 7 cannot be
construed, consistent with Appellant’s Specification, as excluding such a
configuration.
Like the lower portion 32 and middle portion 34 of Appellant’s
handle, the lower portion 102 and middle portion 101 of Hollinger’s handle,
as depicted in Appendix A, reproduced above, together do form a
continuous, gently curved portion of the handle. Each of them, however,
like Appellant’s lower portion 32 and middle portion 34, is also a curved
shape.
Conclusion
For the above reasons, we are not persuaded the Examiner erred in
finding that the portions of Hollinger’s handle designated as lower portion
102 and middle portion 101, respectively, in Appendix A of the Examiner’s
Appeal 2009-002758
Application 10/648,686

16
Answer, comprise first and second curved shapes, respectively, so as to
satisfy the limitations of claim 7.
Claims 38 and 39
Issue
Claims 38 and 39 require that no portion of the razor head extend
beyond the cutting edge of the blade. The Examiner, implicitly conceding
that Hollinger does not explicitly describe that limitation, found that such an
arrangement is inherent, as otherwise the blade could not cut. Ans. 4.
Accordingly, the issue presented is whether the record supports the
Examiner’s finding that inherently no portion of Hollinger’s head extends
beyond the cutting edge of the blade.
Discussion
“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
Once the PTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to appellant to prove that the prior art does not
possess the characteristic at issue. See In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986). This is the case whether the rejection is based on
inherency under 35 U.S.C. § 102, prima facie obviousness under 35 U.S.C. §
Appeal 2009-002758
Application 10/648,686

17
103, or both jointly or alternatively. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
In this case, even assuming that the Examiner articulated sufficient
technical reasoning to shift the burden to Appellant to show that Hollinger
does not inherently possess the feature at issue, Appellant presents Figure 2
of US Patent 4,785,534, depicting a portion of the head extending beyond
the cutting edges of the blades, as evidence that razor head arrangements
were known at the time of Appellant’s invention in which portions of the
razor head extend beyond the cutting edge of the blade. See App. Br. 17.
The Examiner does not dispute either the authenticity of the reproduced
Figure 2 of US Patent 4,785,534 or Appellant’s representation of what that
drawing figure shows. Rather, the Examiner simply counters that the razor
described in US Patent 4,785,534 is more complex than that of Hollinger.
Ans. 21. The Examiner then points to the Carreker patent as purportedly
showing that “it is normal for blades to extend past the razor head.” Id. At
best, Carreker shows that razor head arrangements wherein the razor blade
extends outwardly beyond the razor head were known at the time of
Appellant’s invention. In other words, while the Examiner may have shown
that the claimed arrangement is possible in Hollinger’s razor, the Examiner
has not shown that Hollinger’s razor necessarily possesses the feature that
no portion of the head extends beyond the cutting edge of the blade. We are
mindful that the Examiner’s rejection is based on a finding that Hollinger
inherently possesses this feature, not a conclusion that this feature would
have been obvious to include in Hollinger.
Appeal 2009-002758
Application 10/648,686

18
Conclusion
The record does not support the Examiner’s finding that inherently no
portion of Hollinger’s head extends beyond the cutting edge of the blade.
We reverse the rejection.
Claims 22 and 28
Issue
Based on the contentions of Appellant and the Examiner (see App. Br.
18-19; Ans. 21-22), the issue presented is:
On the basis of the record before us, does the recitation of a blade
width of 1/8 inch or less patentably distinguish the subject matter of claims
22 and 28 over the Hollinger razor modified so as to include a razor head
sized for trimming, as taught by Heller?
Analysis
In cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims, it has
consistently been held that “the applicant must show that the particular range
is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990).
As noted in our findings above, Heller evidences that blades having a
width as small as “approximately” 3/16 inch were known in the art at the
time of Appellant’s invention for trimming hair in smaller areas, such as
eyebrows. A person of ordinary skill in the art, being “also a person of
ordinary creativity, not an automaton,” KSR, 550 U.S. 398 at 421, could
have predicted that smaller blade widths permit more detailed and fine
trimming in areas less accessible to larger blades. Thus, the advantages
Appeal 2009-002758
Application 10/648,686

19
cited by Appellant for the claimed blade width of 1/8 inch are predictable
and expected.
Conclusion
On the basis of the record before us, the recitation of a blade width of
1/8 inch or less does not patentably distinguish the subject matter of claims
22 and 28 over the Hollinger razor modified so as to include a razor head
sized for trimming, as taught by Heller.
Rejection (2)
In contesting this rejection, Appellant simply relies on the arguments
asserted against the rejection of independent claims 1 and 4 based on
Hollinger and Heller. See App. Br. 7. These arguments are unpersuasive for
the reasons discussed above.
Rejection (3)
Claims 10 and 23
Issue
In rejecting claim 10, the Examiner acknowledges that Heller lacks an
ergonomically shaped handle having a front or rear perspective that is
substantially hour-glass in shape. Ans. 9. The Examiner found that Lamb
teaches that razor handles having an ergonomic, substantially hour-glass
shape were well known in the art at the time of Appellant’s invention. Ans.
9. The Examiner then concluded that it would have been obvious to provide
Heller’s razor with an ergonomically shaped handle as taught by Lamb,
because the modification is merely the substitution of one known element
for another, yielding predictable results. Id.
Appellant does not dispute the Examiner’s finding that Lamb teaches
an ergonomic, substantially hour-glass shaped handle. Rather, Appellant
Appeal 2009-002758
Application 10/648,686

20
argues that providing a large bulbous handle, as taught by Lamb, on Heller’s
eyebrow trimmer would render Heller’s trimmer inoperable for its intended
purpose, because the user could not accurately trim eyebrows. App. Br. 20.
Appellant reasons that because Heller has identified prior art standard safety
razors as inadequate, one of ordinary skill in the art would not look to them
for handle details. App. Br. 20. Appellant additionally argues that the
Examiner is taking inconsistent positions with respect to the structure in
Heller that corresponds to the “handle portion” in claim 10. App. Br. 20-21.
Accordingly, the issue presented is whether the combined teachings of
Heller and Lamb render obvious the provision of a substantially hour-glass
shaped handle, as taught by Lamb, on Heller’s eyebrow trimmer.
Discussion
Appellant does not present any separate argument for claim 23. Thus,
in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2009), claim 23 stands or
falls with claim 10.
We find that Heller discloses that a man’s safety razor is inadequate
for use by women in shaping and trimming their eyebrows because the blade
is too large and is not protected by suitable guards at the edges of the blades
to prevent nicking and cutting the skin in the area of the eyebrows. Col. 1,
ll. 19-40. Heller does not allude to any disadvantages in the handles on such
razors. While Heller depicts a generally cylindrical textured handle portion
12 (see Figs. 1 and 2), Heller does not disparage the use of other handle
configurations adapted to facilitate gripping and manipulation. Heller
focuses on the size of the blade, not the handle, as the inadequacy in the use
of the standard man’s safety razor in shaving or trimming eyebrows. As
such, Heller does not support Appellant’s argument that provision of a
Appeal 2009-002758
Application 10/648,686

21
handle as taught by Lamb for use with the eyebrow trimmer of Heller would
render Heller’s eyebrow trimmer inoperable for its intended purpose.
As for Appellant’s contention that the Examiner has taken
inconsistent positions with respect to which portions of Heller correspond to
the “handle portion,” the Examiner explains that while the reference number
10 generally designates the “handle” in Heller, it is the textured gripping
area 12 of the handle 10 that the Examiner proposes to replace with an
ergonomically hour-glass shaped handle element as taught by Lamb. Ans.
22. Accordingly, Appellant’s contention does not appear to highlight an
error in the Examiner’s rejection.
Conclusion
For the above reasons, we are not persuaded that the Examiner erred
in concluding that the combined teachings of Heller and Lamb render
obvious the provision of a substantially hour-glass shaped handle, as taught
by Lamb, on Heller’s eyebrow trimmer.
Claim 24
Claim 24 requires that the head portion be equal to or less than 1/8
inch wide. The contentions of the Examiner and Appellant with respect to
this limitation are essentially the same as those asserted with respect to the
same limitation in claims 22 and 28. See Ans. 13-14; App. Br. 25.
Accordingly, the issue presented is whether, on the basis of the record before
us, the recitation of a blade width of 1/8 inch or less patentably distinguishes
the subject matter of claims 22 and 28 over the Hollinger razor modified so
as to include a razor head sized for trimming, as taught by Heller. For the
reasons set forth above in our discussion of claims 22 and 28, we are not
persuaded that it does.
Appeal 2009-002758
Application 10/648,686

22
Rejection (4)
Claim 11
The issue presented is whether the Examiner erred in construing the
claim term “disposable” as capable of being disposed of. See Ans. 22-23;
App. Br. 22. For the reasons discussed above with respect to this same
limitation in claims 2 and 33, we conclude that the Examiner did not err in
so construing the term “disposable.”
Claim 12
Issue
In light of the contentions of the Examiner and Appellant (see Ans.
23; App. Br. 24), the issue presented is:
Does Heinrich teach a head portion “pivotally mounted” on the handle
portion? In particular, is a head that is threadedly connected to a handle
“pivotally mounted” on the handle? This issue turns on the broadest
reasonable interpretation of “pivotally mounted.”
Discussion
As noted above, when claim terminology is construed in the United
States Patent and Trademark Office, claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. Am. Acad., 367 F.3d at 1364.
We find that Appellant’s Specification discloses that in some
embodiments, the head “is mounted via a pivoting joint (not shown) such
that the angle of the shaving head 38 can vary with respect to the rest of the
razor.” Spec. 7-8, para. 30. We further find that the plain meaning of the
terminology “pivotally mounted” suggests a state of being mounted in a
Appeal 2009-002758
Application 10/648,686

23
pivotal manner, that is, so as to be capable of pivotal movement. Consistent
with Appellant’s Specification and with the plain meaning of the
terminology “pivotally connected,” we construe this terminology as meaning
mounted so as to be capable of pivotal movement.
We find that in the mounting arrangement taught by Heinrich, the
head is mounted on the handle by threading the stud 12 securely onto the
threaded stem 13. Heinrich, p. 1, col. 1, ll. 45-49; Fig. 2. In such mounted
state, it is not capable of pivotal movement. Otherwise, it would not operate
properly and safely. Accordingly, we find that a razor head mounted on a
handle via a threaded stem as taught by Heinrich is not “pivotally mounted”
on the handle.
Conclusion
Heinrich does not teach a head portion “pivotally mounted” on the
handle portion. Thus, the Examiner has not established that the combination
of Heller, Lamb, and Heinrich renders obvious a razor head “pivotally
mounted” on the handle. We reverse the rejection.
Rejection (5)
Appellant argues the rejection of claim 15 as being unpatentable over
Heller, Lamb, and Carreker along with the rejection of claim 10 as being
unpatentable over Heller and Lamb. See App. Br. 19. Appellant does not
assert any separate arguments for the patentability of claim 15 other than
those directed to claim 10. For the reasons discussed above with respect to
the rejection of claim 10, those arguments do not convince us that the
Examiner’s rejection of claim 15 should be reversed.
Appeal 2009-002758
Application 10/648,686

24
Rejection (6)
Issue
The issue presented is whether the teachings of Hollinger, Heller, and
Smith, combined as proposed by the Examiner, render obvious a
substantially hour-glass shaped handle portion having a lower longitudinal
portion of a first curved shape and a middle longitudinal portion of a second
curved shape attached lengthwise to the lower longitudinal portion, as called
for in claim 10. See App. Br. 27-28; Ans. 12-13.
Discussion
The Examiner found that Hollinger lacks a substantially hour-glass
shaped handle portion. Ans. 12. The Examiner found that Smith teaches a
substantially hour-glass shaped handle portion having a waist between a
lower portion and a middle portion, and concluded that it would have been
obvious to provide such a handle portion on Hollinger’s razor. Ans. 13. In
attacking the combined teachings of Hollinger and Smith, Appellant argues
that Smith does not teach a substantially hour-glass shaped handle portion
having a lower longitudinal portion of a first curved shape and a middle
longitudinal portion of a second curved shape attached lengthwise to the
lower longitudinal portion. App. Br. 28.
Appellant’s argument is convincing. The Examiner correctly found,
with reference to Appendix B of the Examiner’s Answer, that Hollinger’s
handle comprises a lower longitudinal portion 102 of a first curved shape
and a middle longitudinal portion 101 of a second curved shape attached
lengthwise to the lower longitudinal portion. See discussion supra, with
respect to the rejection of claim 7. The rejection of claims 10 and 40,
however, is not based on Hollinger alone, but rather Hollinger in
Appeal 2009-002758
Application 10/648,686

25
combination with Heller, and more particularly, with Smith. As noted
above, the Examiner’s rejection proposes to substitute a handle portion as
taught by Smith for the handle of Hollinger. We find that Smith’s handle,
while perhaps “substantially hour-glass shaped,” does not comprise a lower
portion having a first curved shape, and a middle portion having a second
curved shape. See Smith, Figs. 1-3 and 5 (showing a lower tapered portion
of square cross-section, an upper tapered portion of square cross-section, and
an indented waist portion formed between the upper and lower portions).
Thus, the modification of Hollinger’s handle proposed by the Examiner will
not result in a handle comprising a lower longitudinal portion of a first
curved shape and a middle longitudinal portion of a second curved shape
attached lengthwise to the lower longitudinal portion, as called for in claim
10, as well as claim 40, which depends from claim 10.
Conclusion
The teachings of Hollinger, Heller, and Smith, combined as proposed
by the Examiner, do not render obvious a substantially hour-glass shaped
handle portion having a lower longitudinal portion of a first curved shape
and a middle longitudinal portion of a second curved shape attached
lengthwise to the lower longitudinal portion, as called for in claim 10. We
reverse the rejection.

DECISION
The Examiner’s decision is affirmed as to claims 1-8, 10, 11, 15, 21-
24, 27, 28, and 33-37, and reversed as to claims 12 and 38-40.
Appeal 2009-002758
Application 10/648,686

26
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

hh

KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614