Ex Parte Veenstra et al

Patent Trial and Appeal Board

May 25, 2017

13466650 (P.T.A.B. May. 25, 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.
13/466,650 05/08/2012 GEERT VEENSTRA 2004P01310US01 1506
24737 7590 05/30/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue LEE, LAURA MICHELLE
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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 GEERT VEENSTRA, SIEDS BOSCH,
LEONARDUS HENDRIKUS GERARDUS JOHANNES
SEGEREN, and SJOERD HAITES
Appeal 2016-000224
Application 13/466,650
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Geert Veenstra et al. (Appellants) appeal under 35U.S.C. § 134 from
the Examiner’s decision to reject claims 1, 2, 4—9, and 11—16. Claims 3 and
10 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2016-000224
Application 13/466,650
CLAIMED SUBJECT MATTER
The claims are directed to a shaving apparatus. Claims 1,5, and 9 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A cutting unit of a shaving apparatus,
comprising:
an external cutting member having hair trap
openings bounded by cutting edges;
a backing plate having a first opening, the
external cutting member and the backing plate
are mutually movable;
a mass component including
an internal cutting member having
cutting elements with cutting edges for
cooperating with the cutting edges of the
external cutting member for cutting hairs,
and
a coupling member coupled to the
internal cutting member and provided
within the first opening for driving the
internal cutting member with respect to the
external cutting member; and
an energy-dissipating system positioned
outside the coupling member between the mass
component and the backing plate.
Tyler
Uchiyama
Stevens
REFERENCES
US 4,038,748 Aug. 2, 1977
US 7,152,324 B2 Dec. 26, 2006
US 2005/0223559 A1 Oct. 13, 2005
REJECTIONS
Claims 1, 2, 7, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tyler. Final Act. 2
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Appeal 2016-000224
Application 13/466,650
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tyler and Stevens. Final Act. 4.
Claims 5, 6, 8, 9, and 12—16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tyler and Uchiyama. Final Act. 4, 6.
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter a new ground of rejection for claims 1, 2, 4—9, and 11—16
under 35 U.S.C. § 112(b), as indefinite for failing to particularly point out
and distinctly claim the subject matter which Appellants regard as the
invention.
“It is of utmost importance that patents issue with definite claims that
clearly and precisely inform persons skilled in the art of the boundaries of
protected subject matter.” MPEP § 2173. During prosecution “[a] claim is
indefinite when it contains words or phrases whose meaning is unclear,” id.
§ 2173.05(e), or if it is “amenable to two or more plausible claim
constructions,” Ex. Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Independent claim 1 is drawn to a “cutting unit of a shaving
apparatus” comprising “an external cutting member” and a “backing plate,”
the external cutting member and the backing plate being “mutually
movable.” App. Br. 15, Claims App. Independent claims 5 and 9 likewise
require an external cutting member and a backing plate that are “mutually
movable.” Id. at 16—17. The remaining claims at issue ultimately depend
from one of these three independent claims. Id. at 15—17.
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Appeal 2016-000224
Application 13/466,650
The term “mutually movable” is not expressly defined in the
Specification. In the absence of an express definition, “it is appropriate to
consult a general dictionary definition of the word for guidance.” Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips v.
AWHCorp., 415 F.3d 1303, 1322—23 (Fed. Cir. 2005) (en banc). The term
“mutual” is defined as “shared in common.” Merriam Webster’s
Collegiate Dictionary 820 (11th ed. 2005). The term “movable” is
defined as “something (as an article of furniture) that can be removed or
displaced.” Id. at 812. This suggests that “mutually movable” means, in the
context of the claims, that the external cutting member and the backing plate
can be “removed or displaced” together or as a single unit. On the other
hand, the Specification describes at least one embodiment comprising an
external cutting member and a backing plate that do not move together, i.e.,
the backing plate is part of the internal cutting member that moves with
respect to the external cutting member to cut hairs. Spec. 5:7—6:4, Fig. 2.
Claim interpretation excluding the preferred embodiment is rarely, if ever,
correct. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1997). Further, it is unclear what frame of reference should be used to
determine what is or is not “movable.” For example, the external cutting
member appears not to be movable at all, at least with respect to the housing
of the shaving apparatus. See Spec. 4:12—18, Fig. 1 (stating that the internal
cutting member “can be driven with respect to” the external cutting member,
which is not driven). Thus, we determine that the claims are not sufficiently
clear to pass muster under 35 U.S.C. § 112(b). Accordingly, we reject the
claims as indefinite.
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Appeal 2016-000224
Application 13/466,650
REJECTIONS UNDER 35 U.S.C. §§ 102(b), 103(a)
Claims 1, 2, 4—9, and 11—16 are rejected as being indefinite under 35
U.S.C. § 112(b), discussed above. In view of the indefiniteness of these
claims, we find that it is not possible to ascertain the scope of these claims.
Accordingly, we find that the Examiner’s rejections of claims 1, 2, 4—9, and
11—16 under 35 U.S.C. §§ 102(b) and 103(a) are necessarily based on
speculation and assumptions. See In re Steele, 305 F.3d 859, 862 (CCPA
1962) (“We do not think a rejection under 35 U.S.C. § 103 should be based
on . . . speculations and assumptions . . . [I]t is essential to know what the
claims do in fact cover.”). Therefore, we summarily decline to sustain the
rejections of claims 1, 2, 4—9, and 11—16.
It should be understood, however, that our decision in this regard is
based solely on the indefmiteness of the claimed subject matter and does not
reflect the adequacy of the prior art evidence applied in support of the
rejection before us. Once definite claims are presented, the Examiner is free
to apply the same, different, or additional prior art as the Examiner so
chooses.
DECISION
For the above reasons, we REVERSE the Examiner’s rejections of
claims 1, 2, 4—9, and 11—16 under 35 U.S.C. §§ 102(b) and 103(a). We
enter a NEW GROUND OF REJECTION for claims 1, 2, 4-9, and 11-16
under 35 U.S.C. § 112(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
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Appeal 2016-000224
Application 13/466,650
When the Board enters such a non-final decision, [Appellants],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the prosecution will be remanded to
the Examiner. The new ground of rejection is binding upon the
Examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the Examiner,
overcomes the new ground of rejection designated in the
decision. Should the Examiner reject the claims, Appellants]
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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