Ex Parte Szczepanowski et al

Patent Trial and Appeal Board

Jun 15, 2016

12629249 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/629,249 12/02/2009
27752 7590 06/17/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Andrew Anthony Szczepanowski
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-8410 7502
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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 ANDREW ANTHONY SZCZEP ANOWSKI,
JENNIFER RUTH KINARD, and
ROBERT HAROLD JOHNSON
Appeal2014-004713
Application 12/629,249
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew Anthony Szczepanowski et al. (Appellants) appeal under
35 U.S.C. § 134 from the Examiner's decision, in the latest Non-Final
Action, 1 rejecting claims 17-19 and 26-30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Non-Final Action, dated March 7, 2013 (hereinafter "Non-Final Act.")
Appeal2014-004713
Application 12/629,249
THE CLAIMED SUBJECT MATTER
Claim 17, reproduced below, is the sole independent claim and is
illustrative of the claimed subject matter.
17. A razor cartridge comprising first indicia incorporated onto
at least one component of a razor cartridge, second indicia,
different from said first indicia and incorporated proximal to said
first indicia, wherein said at least one of said first or said second
indicia communicates a functional benefit to a user before use of
said razor cartridge.
REJECTIONS
I. Claims 17-19 and 26-30 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. Claims 17-19 and 26-30 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
III. Claims 17-19, 26, and 27 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Zhuk (US 2007/0062047 Al, pub.
Mar. 22, 2007).
IV. Claims 17-19 and 26-30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pennella (US 7,103,976 B2, iss.
Sept. 12, 2006), Leslie (US 5,269,997, iss. Dec. 14, 1993), and
Zhuk.
DISCUSSION
Rejection I-Indefiniteness
The Examiner determined that the language "at least one of said first
or said second indicia communicates a functional benefit to a user" in claim
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17 renders this claim and its dependent claims indefinite because "[i]t is
unclear what structure the indicia incorporate, [such] that when viewed by
any/all users, the user will know every time the cartridge has a functional
benefit." Non-Final Act. 3. The Examiner explained that "[t]his
communication is based on the user's ability to receive the communication
and that from viewing an indicia or tear drop indicia will make [a]
determination that this cartridge will provide a functional benefit." Id.
According to the Examiner, Appellants are "attempting to use what a person
determines from seeing the indicia as a way to further limit the razor
cartridge," which is indefinite because such a determination is subjective and
depends upon the particular user. Id. (explaining that "[ w ]hat a person
determines from seeing an object (in this case a tear drop) is indefinite since
it can be different every time."). The Examiner posed the query, for
example, how the indicia could communicate a functional benefit to a user
who is blind. Id.
Appellants argue that "the indicia of the claimed razor cartridge are
definite in that they do their part by imparting benefits to a user" (Reply Br.
1-2) and "the communication of the benefit performed ... would be
constant and the same each time." Appeal Br. 5---6. In response to the
Examiner's query, Appellants assert that "tactile indicia which protrude or
are recessed and are supported in Appellant[ s'] specification (e.g.,
protruding indicia 52b in Appellant[s'] specification, Fig. 5b) clearly and
easily communicate to someone that is blind, much like the raised dots in
Braille code does." Appeal Br. 5; see Reply Br. 2. Appellants point to the
Specification as providing a clear definition of a functional benefit (Appeal
Br. 6 (citing Spec. 2, 11. 5-14, Figs. 1-12)) and also assert that "one reading
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Application 12/629,249
the[] specification would, with the many examples provided, understand
how to make the novel razor cartridge and thus, the scope of the claimed
invention does not lend itself to subjective constructions." Reply Br. 3.
Appellants' arguments are not convincing. Any information that the
claimed indicia "communicates ... to a user," such as a functional benefit, is
subjective to the particular user receiving the communication such that there
is no way to objectively ascertain the metes and bounds of the claim. See
Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005) (claim terminology "aesthetically pleasing" determined to be
indefinite because it is completely dependent on subjective opinion). In
other words, what a particular indicia communicates to one user may not be
the same to another user. Although the Specification describes water
droplets indicia 12b as communicating a moisturizing or lubricating
functional benefit to a user (Spec. 15, 11. 14--17), we agree with the Examiner
that one could only speculate as to what functional benefit, if any, that a
water droplet shape would communicate to a particular user, even though
such a shape is recognizable. Ans. 7-8. As such, the structure required to
communicate a functional benefit to a user, as required in claim 1 7, would
not be readily apparent to one of ordinary skill in the art.
Moreover, the use of the verb "communicates" raises a question as to
whether claim 1 7 is satisfied when indicia intended to convey a functional
benefit are placed upon the razor cartridge or whether claim 1 7 requires that
a user actually apprehend a functional benefit from the indicia.
Consequently, one of ordinary skill in the art would not be able to ascertain
the point at which infringement occurs.
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For the above reasons, Appellants do not apprise us of error in the
Examiner's rejection of claim 17 as indefinite.
The Examiner further rejected dependent claim 18 as indefinite for the
additional reason that it is unclear if the recitation of "at least one functional
benefit" in claim 18 "is the same or different benefit as the previous
functional benefit that is communicated [in] claim 17." Non-Final Act. 4.
The Examiner also determined that the language "at least one aesthetic
benefit" in claim 18 "is indefinite because it must be based on the user" and
"not all users are the same." Id.
The issue raised by the Examiner with respect to the recitation of "at
least one functional benefit" in claim 18 is one of breadth, but not
indefiniteness. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
587 F.3d 1339, 1352 (Fed. Cir. 2010) (pointing out that merely claiming
broadly does not prevent the public from understanding the scope of the
claim). Claim 17 recites that at least one of the indicia communicates a
functional benefit, whereas claim 18 recites that the first and second indicia
in claim 18 provide a functional benefit. Claim 18 covers both a razor
cartridge wherein the communicated functional benefit and the provided
functional benefit are the same and a razor cartridge wherein the
communicated functional benefit and the provided benefit are different.
Appellants argue that the Specification provides a clear definition for
"aesthetic benefit." Appeal Br. 6 (citing Spec. 2, 11. 5-14, Figs. 1-12). This
argument is not convincing. The Specification describes that the "aesthetic
benefit includes at least one pleasing sensation, at least one pleasing
emotion obtained via a scent released during use, improved skin appearance,
or a feeling that said razor cartridge is appealing, refreshing, clean, easy to
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use, moisturizing, relaxing, soothing, or safe for sensitive skin." Spec. 2, 11.
10-14 (emphasis added). Although the Specification defines the term, the
metes and bounds of indicia structure that would provide a pleasing emotion,
appearance, or feeling is indeterminable because it is entirely subjective to a
user. An indicium that provides a pleasing sensation or emotion to one user
may not necessarily provide a pleasing sensation or emotion to another user.
Due to the subjective nature of what the indicia communicates to a user, the
metes and bounds of indicia that provide an aesthetic benefit as recited in
claim 18 would not be discernible to a person having ordinary skill in the art.
See Datamize, 417 F.3d at 1350. We are not apprised of error in the
Examiner's determination that the language "aesthetic benefit" renders claim
18 indefinite.
Accordingly, we sustain the rejection of claims 17 and 18, and of
dependent claims 19 and 26-30, for which Appellants do not present any
separate arguments, under 35 U.S.C. § 112, second paragraph.
Normally, when substantial confusion exists as to the interpretation of
a claim and no reasonably definite meaning can be ascribed to the terms in a
claim, a determination as to compliance with 35 U.S.C. § 112, first
paragraph, and patentability under 35 U.S.C. § 102 or 103 is not made. See
In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board
erred in affirming an anticipation rejection of indefinite claims); In re Steele,
305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because
the rejection was based on speculative assumptions as to the meaning of the
claims); cf In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (One is not in a
position to determine whether a claim is enabled under the first paragraph of
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35 U.S.C. § 112 until the metes and bounds of that claim are determined
under the second paragraph of this section of the statute.). However, in this
instance, we consider it to be desirable to address the rejections under
35 U.S.C. §§ 112, first paragraph, 102, and 103 to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd.
App. 19 84) (expressing the view that, where a claim is subject to more than
one interpretation, one of which would render the claims unpatentable over
the prior art, the USPTO should enter simultaneous rejections under
35 U.S.C. § 112, second paragraph, and under 35 U.S.C. § 102 or 103, to
avoid piecemeal appellate review). As discussed in more detail below, we
interpret the limitation "at least one of said first or said second indicia
communicates a functional benefit to a user" in claim 17 as an indicium that
is capable of communicating a functional benefit to a user who associates
the functional benefit to the indicium. Therefore, we make a determination
below as to compliance with 35 U.S.C. § 112, first paragraph, and
patentability under 35 U.S.C. §§ 102 and 103 of the appealed claims in the
interest of judicial economy.
Rejection II- Written Description
The stated basis for the Examiner's rejection of claim 17 under
35 U.S.C. § 112, first paragraph, is that "[i]t is unclear how the indicia
communicate a functional benefit to the user before use." Non-Final Act. 2.
The Examiner posed the query how the indicia communicate anything to a
blind user. Id. Additionally, according to the Examiner, "it is unclear how a
user would determine that a razor automatically has a functional benefit for
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Application 12/629,249
that particular user just because there are two different tear drop indentations
in the lube ring." Id. at 3.
The written description requirement of 35 U.S.C. § 112, first
paragraph, requires that "the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991)). The test for sufficiency "requires an objective inquiry into the four
comers of the specification from the perspective of a person of ordinary skill
in the art." Id. "Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
Appellants' Specification discloses that "the indicia of the present
invention may include, but are not limited to, one or more graphic, pattern,
design, text, fragrance, or any combination thereof." Spec. 7, 11. 8-9. The
Specification also explains that "a 'functional benefit' ... pertains to having
an advantage communicated to or obtained by a user (or prospective user or
consumer) before, during or after the operation or use of the razor product
(e.g., while shaving) involving, or concerned with the functionality or usage
of the product," such as "a faster leaching time or an increased release of
lubricant." Id. at ll. 24--27; 7, 1. 31-8, 1. 1. For example, in "FIG. 1 of the
present invention, razor cartridge 10 is shown to include indicia 12
incorporated onto an exterior surface 14 of a lubricating body, shown here as
a lube ring 16, where indicia 12 form a pattern 13 (shown separately in FIG.
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2) of large water droplets 12a and small water droplets 12b." Id. at 11, 11.
24--27.
Claim 1 7 does not require indicia communicating a functional benefit
to a blind user. Nevertheless, in response to the Examiner's query as to how
the indicia communicate a functional benefit to a blind person, Appellants
direct our attention to the "protruding indicia 52b" depicted in Figure 5B and
discussed in the Specification. Appeal Br. 2; see Spec. 17, 11. 9-13.
Appellants submit that such indicia would communicate to someone who is
blind, much like the raised dots in Braille code. Appeal Br. 2-3.
We agree with Appellants that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. See Appeal Br. 2-5. The
Examiner does not set forth a cogent explanation as to why the Specification
would not convey to a person having ordinary skill in the art that Appellants
were in possession of the claimed invention at the time of filing. Thus, we
do not sustain the rejection of claims 17-19 and 26-30 under 35 U.S.C.
§ 112, first paragraph.
Re} ection III-Anticipation
In contesting the rejection of claims 17-19, 26, and 27 as anticipated
by Zhuk, Appellants do not assert any separate arguments for patentability
of claims 18, 19, 26, and 27 apart from their dependence, directly or
indirectly, from independent claim 17. Appeal Br. 7-8. We select claim 17
as representative, with claims 18, 19, 26, and 27 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
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The Examiner found that Zhuk discloses a razor cartridge satisfying
all of the limitations of claim 17. Non-Final Act. 5 (citing Zhuk, para. 19).
Appellants argue that "nowhere in Zhuk is there a disclosure of
second indicia proximal to first indicia, nor wherein one of first or second
indicia communicates a functional benefit to a user before use of said razor
cartridge." Appeal Br. 7. In particular, Appellants assert that Zhuk does not
require a different second indicia proximate to the first, nor that the indicia
communicate a functional benefit to a user before use. Id. According to
Appellants, "[ e ]ven if Zhuk is deemed to have proximal first and second
indicia (different color), no functional benefit is communicated to the user
before use of the cartridge by either of these indicia." Id.
In response, the Examiner asserts that Zhuk discloses multiple indicia
in the form of different color stripes. Ans. 9-10 (citing Zhuk, para. 19, Fig.
1 ). According to the Examiner, "one colored stripe is the first indicia and
another stripe proximal/near the one stripe is the second indicia." Id. at 10.
Appellants' Specification describes that "the indicia of the present
invention may include, but are not limited to, one or more graphic, pattern,
design, text, fragrance, or any combination thereof' and that "[g]raphics may
include pictures (e.g., a man's or woman's face), logos, images, shapes, or
charts or any combination thereof." Spec. 7, 11. 8-11 (emphasis added).
Zhuk discloses a razor cartridge with blades having a polymer coating
disposed in a "pattern [that] can be decorative as well as functional, e.g.,
shaped as a logo or indicia." Zhuk, para. 19. In particular, Zhuk describes a
pattern of parallel stripes (id. at paras. 15-17, Fig. 1) and that "the stripes
may be of different colors" (id. at para. 17). The Examiner's reading of the
first and second indicia in claim 17 on Zhuk's different color stripes, which
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comprise patterns of graphic shapes, is consistent with Appellants'
Specification, which explicitly includes patterns and graphic shapes within
the scope of "indicia," and Appellants do not persuade us that the
Examiner's position is unreasonable.
As for the limitation in claim 17 that "at least one of said first or said
second indicia communicates a functional benefit to a user," Appellants do
not direct our attention to, nor do we discern, any unique structural attribute
of the indicia disclosed in Appellants' Specification and drawings that would
cause them to communicate a functional benefit to the user. Rather, the
disclosed indicia appear to be capable of communicating a functional benefit
to a user only if the user associates a functional benefit to the indicia. Thus,
for purposes of determining whether Zhuk anticipates the subject matter of
claim 17, we construe "at least one of said first or said second indicia
communicates a functional benefit to a user" as requiring an indicium that is
capable of communicating a functional benefit to a user who associates the
functional benefit to the indicium. The Examiner finds that Zhuk's stripes
are "capable of performing the communication of a functional benefit."
Ans. 10. Appellants do not assert any error in this finding.
For the above reasons, Appellants do not apprise us of error in the
Examiner's finding that Zhuk anticipates the subject matter of claim 17.
Accordingly, we sustain the rejection of claim 17, as well as claims 18, 19,
26, and 27, which fall with claim 17, under 35 U.S.C. § 102(b) as
anticipated by Zhuk.
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Rejection IV- Obviousness
Appellants do not assert any separate arguments for patentability of
dependent claims 18, 19, and 26-30 apart from their dependence, directly or
indirectly, from claim 17. Appeal Br. 8-11. We select claim 17 as
representative, with claims 18, 19, and 26-30 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Pennella discloses a razor cartridge,
substantially as claimed, except for "[two] different indicia on the upper and
lower portions of the lubricating ring." Non-Final Act. 6. However, the
Examiner found that Zhuk "provide[s] evidence that [it] is old and well
known in the art of razor cartridges to incorporate decorative/functional
indicia." Id. (citing Zhuk, para. 19). The Examiner also found that "Leslie
teaches [that] it is old and well known in the art of soap bar production (the
same structure that the lubricating ring of Pennella is made out of (column 3
lines 10-12)) to have imprinted a design logo onto an area of the surface of
the soap bar." Id. at 6-7. The Examiner determined that it would have been
obvious to modify the cartridge of Pennella to include an indicium with a
droplet shape "or any other shape that is a desired logo or trademark," as
taught by Leslie, on the lubricating ring "because all [of the] claimed
elements were known in the prior art and one skilled in the art could have
combined the elements as claimed by known methods with no change in
their respective function and the combination would have yielded
predictable results." Id. at 7. The Examiner also determined that "[i]t would
have been obvious to have provided any or all of the exterior surfaces of the
lube ring with as many or as few indicium as wanted by the user." Id.
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Appellants argue that "none of the cited references teach or suggest a
second indicia proximal to a first indicia wherein at least one of said first or
second indicia communicates a functional benefit to a user before use of said
razor cartridge." Appeal Br. 9. In particular, Appellants argue that Leslie
does not disclose the use of logo stamping on "a razor cartridge, the
applicability, benefit, or achievability of the Leslie stamping machine to
much smaller components than soap bars in and of themselves, such as those
found on a razor cartridge, nor any functional benefits being conveyed by
the design to a user before use." Id.
We are not persuaded by Appellants' argument against the Leslie
reference because it is not responsive to the rejection as articulated by the
Examiner. Here, the Examiner did not rely on Leslie for teaching indicia
incorporated on a razor cartridge, but instead relied on Zhuk as providing
evidence that it was old and well known in the razor cartridge art to
incorporate functional indicia. See Non-Final Act. 6. Nonobviousness
cannot be established by attacking references individually when the rejection
is predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,
425 (CCPA 1981)). Furthermore, Appellants' argument that the cited
references do not disclose second indicia is not convincing because it does
not specifically address the Examiner's determination that it would have
been obvious to provide as many indicia as a user desires. See Non-Final
Act. 7.
Appellants argue that "Zhuk['s] disclosure is limited to a polymer
pattern on a metallic component, not on a shaving aid component," and that
"Zhuk does not provide evidence of incorporation of any type of indicia
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anywhere on a razor cartridge." Appeal Br. 10. This argument is misplaced
because Zhuk discloses a polymer coating pattern indicia disposed on razor
cartridge blades used for shaving. See Zhuk, paras. 2-3, 19.
Appellants further argue that a person having ordinary skill in the art
at the time of the invention would not have understood "that it would be
desirable, applicable, beneficial or even achievable, to modify Pennella, nor
that it would be applicable, beneficial or achievable with Leslie's imprinting
method." Appeal Br. 10. In particular, Appellants assert that "there is no
disclosure in any of these references as to how they could or should be
combined." Id. at 11.
Appellants' argument does not identify error in the Examiner's
rejection. To the extent that Appellants' argument insists on an explicit
motivation in the cited references to modify the razor cartridge of Pennella,
such an argument has been foreclosed by the Supreme Court. KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence
on teaching, suggestion, or motivation (the TSM test) is incompatible with
its precedent concerning obviousness). Appellants' argument does not
address the Examiner's articulated reasoning for the conclusion of
obviousness. Here, the Examiner articulated adequate reasoning based on
rational underpinnings as to why it would have been obvious to one of
ordinary skill in the art to modify Pennella's razor cartridge to include
multiple indicia capable of communicating a functional benefit to a
user. See Final Act. 7 (the Examiner explained that such a modification
would "allow[] the user to determine that this product has a functional
benefit based on viewing the indicia ... in comparison to another shaver
option" and that "one skilled in the art could have combined the elements as
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claimed by known methods with no change in their respective function and
the combination would have yielded predictable results."). Appellants'
arguments do not specifically address the Examiner's articulated reasoning
for the proposed combination of Pennella, Leslie, and Zhuk or explain why
the reasoning is in error.
For the above reasons, Appellants' arguments do not apprise us of
error in the Examiner's determination that the subject matter of claim 17
would have been obvious. Accordingly, we sustain the rejection of claim
17, and of claims 18, 19, and 26-30 falling therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Pennella, Leslie, and Zhuk.
DECISION
The Examiner's decision rejecting claims 17-19 and 26-30 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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