Ex Parte Szczepanowski et al

Patent Trial and Appeal Board

Jun 3, 2013

10956752 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW A. SZCZEPANOWSKI
and ROBERT A. TROTTA
____________________

Appeal 2012-008444
Application 10/956,752
Technology Center 3700
____________________

Before: RICHARD M. LEBOVITZ, SCOTT R. BOALICK, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1, 3-31, 47, and 53. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Invention
Appellants’ claimed invention relates to razors for wet shaving. Spec.
1:2-3. Claims 1 and 47 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A razor comprising:
a handle,
a head, mounted on said handle, said head
including a housing that is positioned to contact
the user's skin during shaving and that carries one
or more blades configured for wet shaving, said
housing being comprised of a plastic material, said
housing comprising a guard, said guard being
positioned between said at least one or more blades
and said handle, and
an electrical circuit including a heating
element embedded completely within said plastic
material under said guard, said region of relatively
higher resistance delivering heat directly to said
plastic material to heat said plastic material.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 1, 9-11, and 47 under 35 U.S.C. § 102(b) as anticipated Bojan
(FR985030; pub. Jul. 13, 1951); or under 35 U.S.C. § 103(a) as
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unpatentable over Bojan and Patrick (US 2003/0226258 A1; pub.
Dec. 11, 2003).1
II. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Bojan and Patrick.
III. Claims 14-22 and 53 under 35 U.S.C. § 103(a) as unpatentable over
Bojan, Patrick, and Brandt (US 6,868,610 B2; iss. Mar. 22, 2005).
IV. Claims 3, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over
Bojan, Patrick, and Kanzer (US 2003/0046816 A1; pub. Mar. 13,
2003.
V. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Bojan,
Patrick, and Garets2 (FR2716402; pub. Aug. 25, 1995).
VI. Claims 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over
Bojan, Patrick, Garets, and Toyoda (US 6,175,152 B1; iss. Jan. 16,
2001).
VII. Claims 1, 4-6, 9-13, and 47 under 35 U.S.C. § 103(a) as unpatentable
over Patrick and Bojan.
VIII. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Patrick,
Bojan, and Kanzer.
IX. Claims 14-22 and 53 under 35 U.S.C. § 103(a) as unpatentable over
Patrick, Bojan, and Brandt.
X. Claims 3, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over
Patrick, Bojan, and Kanzer.

1 Appellants mistakenly list the alternate version of this rejection as
obviousness over Bojan (Br. 3), but then properly address it as obviousness
over Bojan and Patrick (Br. 5). The alternate version is obviousness over
Bojan and Parick. See Ans. 5; Office Action dated Oct. 9, 2011 at 2.
2 References are to the English translation by McElroy Translation
Company, May 2006, PTO-06-4402.
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XI. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Patrick,
Bojan, and Garets.
XII. Claims 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over
Patrick, Bojan, Garets, and Toyoda.

OPINION
Rejection I - Claims 1, 9-11, and 47
Anticipation by Bojan3
Appellants argue that Bojan fails to disclose two elements of
independent claim 1: a heating element, and a head mounted on the handle.4
Br. 4. We address these arguments in turn.
- Heating Element
Claim 1 calls for the heating element to be “embedded completely
within” the plastic material under the guard of the housing of the head.5
The Examiner found that Bojan discloses an embodiment of a razor
having a single resistor in the form of chip 11 embedded in element 3 as
shown in Figure 7, and alternatively, discloses an embodiment having chip
11 housed in lower guard 2. Based upon this disclosure, the Examiner found

3 We are unable to locate an English translation of this French reference in
the file. Some of the Examiner’s findings are footnoted to the French
version of Bojan. See e.g., Ans. 17, footnote 1. Appellants do not contest
the translations given by the Examiner, nor do Appellants argue they have
not been provided a translation.
4 Appellants present a single argument for independent claims 1 and 47
without distinguishing between the claims. As such, we select claim 1 as
representative and claims 9-11 and 47 stand or fall with claim 1. Br. 4; see
37 C.F.R. § 41.37(c)(1)(vii)(2011).
5 The Examiner notes that the phrase ,“said region of relatively higher
resistance” should have been amended to read, “said heating element.” Ans.
16. Appellants do not contest this reading of the claim.
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that Bojan’s chip 11 as shown in the embodiment of Figure 7 corresponds to
a heating element embedded completely within the plastic material under the
guard (guard 3) of the head. Ans. 5.
Appellants argue that the Examiner has not made a proper anticipation
rejection because the finding makes reference to two embodiments. Such
contention is unpersuasive because while the rejection mentions two
embodiments, the rejection properly relies upon a single embodiment, that of
Figure 7. See Ans. 5, 17.
Appellants also argue that the passage from Bojan cited by the
Examiner simply teaches that the plate (chip 11) can be housed in lower
guard 8. We agree that Bojan discloses that chip 11 may be housed in lower
guard 2 as shown in the embodiment of Figure 8. However, as previously
noted, the rejection relies upon the embodiment of Figure 7 which shows
chip 11 (heating element) embedded in guard 3 (plastic material). For that
reason, Appellants’ argument is not responsive to the rejection as articulated
by the Examiner.
- Head
Claim 1 recites that the head is “mounted on said handle.”
Appellants argue that Bojan’s lower guard 2 is an extension of the
handle 1 rather than a “separate head” as called for by claim 1. Br. 4. This
argument is premised upon the claim interpretation that claim 1 requires the
head to be separable from the handle.
Claim 1 does not explicitly state that the head is separable or separate
from the handle. The Specification does not contain a lexicographical
definition of the claim term “mounted,” which is commonly understood to
mean, “assembled or equipped for use esp. by being attached to a support.”
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WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed.
1983) (“mounted,” adj., definition 4a). This common meaning suggests that
the head is assembled or equipped for use by being attached to the handle,
and covers both separable and non-separable attachment. In parity with that
interpretation, the Specification states that, “the head may be separable from
the handle,” which implies that the head may be either separably or non-
separably mounted to the handle. See Spec. 2:11-12. We discern nothing in
the Specification inconsistent with this interpretation. Accordingly, claim 1
calls for the head to be attached to the handle in either a separable or non-
separable manner. See Ans. 19 (similarly interpreting that claim 1 does not
require that the head be separable).
Therefore, Appellants’ argument is unconvincing because it is not
commensurate in scope with claim 1. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
Appellants fail to demonstrate error in the rejection of claim 1.
Consequently, we sustain the rejection of claim 1 as anticipated by Bojan,
and claims 9-11 and 47 fall with claim 1.
Obviousness over Bojan and Patrick
Because Appellants asserted that claim 1 calls for the head to be
separable from the handle, the Examiner alternatively rejected these claims
by concluding that it would have been obvious to modify Bojan’s head to be
removable and replaceable as disclosed by Patrick. Ans. 5-6. As explained,
supra, claim 1 does not call for the head to be separable from the handle.
On this basis, we found the claim to be anticipated by Bojan alone, and find
it unnecessary to reach this alternate version of the rejection.
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Rejections II through VI
Each of these rejections rely at least in part on the combination of
Bojan and Patrick utilized for the alternate version of Rejection I. See Ans.
6-10. For each of these rejections, Appellants repeat the arguments utilized
against Rejection I. Br. 6-10 (repeating the argument at Br. 4-5).
The arguments that Bojan does not meet each limitation of the claim
are unpersuasive for the reasons given in the analysis of the first rejection,
supra.
Regarding the combination of Bojan and Patrick, Appellants argue
that Bojan’s heating resistors 11 and 11' in handle 1 heat metal rod 8 which
in turn heats the blades, while Patrick’s contacts 42 and 44 mate with the
handle to complete an electrical circuit, so that adding Patrick’s head to
Bojan’s handle would not provide heating to the blades, rendering the
combination inoperable. Br. 5.
Appellants argue as if the Examiner relied upon the embodiment of
Figure 1. See Bojan, fig. 1 (metal rod 8). Such is not the case. The
Examiner found that the embodiments of Figures 1-3 utilize inductive
heating (e.g., metal rod 8), while the embodiments of Figures 3-9 use heat
resistance (chip 11), and the rejection relies upon the embodiment of Figure
7. See Ans. 5, 17. Therefore, Appellants’ argument is not responsive to the
rejection as articulated by the Examiner, and fails to demonstrate error in
Rejections II-VI.

Rejection VII - Claims 1, 4 -6, 9-13, and 47 over Patrick and Bojan
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Rejection VII is based upon Patrick and Bojan. This is not simply a
reordering of the references as utilized for Rejection I; rather, the rejection
combines the references in a different way. See Ans. 10.6
Appellants repeat the argument that Bojan does not disclose a heating
element as called for in claim 1.7 Br. 8. This argument is unconvincing for
the reasons given in the analysis of Rejection I, supra.
Appellants also argue that Patrick utilizes the most efficient method to
heat the blades (directly heating the blades), and a person of ordinary skill in
the art would not make the proposed modification to the less efficient
method of indirectly heating the blades as proposed by the Examiner. Br. 7.
We agree with the Examiner that heating efficiency is not the only
consideration. See Ans. 20. Here the Examiner provides the reasonable
rationale that “moving the heating element to the guard creates a larger
heating engagement surface area for a longer heat exposure and softening of
the hair to facilitate a less resistive and irritating shave rather than only
providing the heating element directly on the blade.” Ans. 21. At most,
Appellants’ argument identifies a drawback of the proposed combination;
however, that there are tradeoffs involved regarding features, costs,
manufacturability, or the like, does not necessarily prevent the proposed
combination. See also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165

6 Cf. In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is
predicated on two references each containing pertinent disclosure which has
been pointed out to the applicant, we deem it to be of no significance, but
merely a matter of exposition, that the rejection is stated to be on A in view
of B instead of on B in view of A, or to term one reference primary and the
other secondary.”).
7 Appellants argue claims 1, 4 -6, 9-13, and 47 as a group, and we select
claim 1 as representative. Br. 7-8; see 37 C.F.R. § 41.37(c)(1)(vii).
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(Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). Appellants’ argument fails to weigh the identified drawback
against the benefit identified by the Examiner, and as such is not persuasive.
Appellants have failed to demonstrate error in the Examiner’s
rejection of claim 1, and claims 4 -6, 9-13, and 47 fall with claim 1.

Rejections VIII through XII
Rejections VIII through XII are each based at least in part upon the
combination of Patrick and Bojan utilized for Rejection VII. Ans. 12-16.
For each of these rejections, Appellants argue that the additional reference(s)
does not cure the deficiencies of the Patrick and Bojan combination argued
against Rejection VII. Br. 8-9. As explained in the analysis of the Rejection
VII, supra, there are no deficiencies to cure. Accordingly, we sustain
Rejections VIII through XII.

DECISION
We affirm the Examiner’s decision to reject claims 1, 3-31, 47, and
53.
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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).

AFFIRMED

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