Ex Parte Wang et al

Patent Trial and Appeal Board

Dec 20, 2018

14136548 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/136,548 12/20/2013
27752 7590 12/25/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Xiandong Wang
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-4846D 6117
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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 XIANDONG WANG and
NEVILLE SONNENBERG 1
Appeal2018-008495
Application 14/136,548
Technology Center 3700
Before JENNIFERD. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-14 and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION of claims 2, 9-13, and 16.
1 The Gillette Company is the applicant as provided in 3 7 C.F .R. § 1.46 and
is identified as the real party in interest. Br. 1.
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Application 14/136,548
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
1. A razor blade comprising:
at least one polymeric material comprised of a sheet,
film, tape, or foil, said polymeric material having an upper
surface and a lower surface, said lower surface disposed on at
least one blade edge.
REJECTIONS
I. Claims 1-14 and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 3 and 6 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. 2
III. Claims 1, 3-5, and 14 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Appellant's Admitted Prior Art (Spec. 2:30-3: 18,
Fig. 1) (hereinafter "AAP A").
IV. Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over AAPA.
V. Claims 7 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over AAPA and Skrobis (US 2005/0268470 Al,
published Dec. 8, 2005).
2 The Examiner withdrew the rejection of claim 16 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, set forth on page 4 of the Final Action. See Ans. 9.
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VI. Claims 2, 9--13, and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over AAPA, Arnold (US 7,043,819 Bl, issued May
16, 2006), and Toumut (US 4,368,217, issued Jan. 11, 1983).
DISCUSSION
Rejection I-Indefiniteness
The Examiner determines that the limitation "polymeric material
having an upper surface and a lower surface" in claim 1 renders the claims
indefinite because "[i]t is unclear if this upper and lower surface represents
the same or a different structure than the sheet/film/tape/foil." Ans. 4; see
Br. 17 (Claims App.). We disagree with the Examiner that there is any
ambiguity in this regard. Claim 1 recites "said polymeric material having an
upper surface and a lower surface." Br. 17 (Claims App.) ( emphasis added).
The phrase "said polymeric material" clearly refers back to the "polymeric
material comprised of a sheet, film, tape, or foil" because this is the only
"polymeric material" recited in the claim. Id. Thus, it is clear that the
polymeric material comprised of a sheet, film, tape, or foil has an upper
surface and a lower surface. We do not sustain the rejection of claim 1, or
its dependent claims 2-14 and 16, on this basis. 3
The Examiner determines that claim 3 is indefinite because it is not
clear what structure allows the sheet (before being isostatically pressed and
converted to a coating) to be adhered to the blades. Ans. 4. Likewise, the
Examiner determines that claim 6 is indefinite because it is not clear what
3 The Examiner withdrew additional bases of rejection of claims 2-5, 9--14,
and 16 under 35 U.S.C. § 112, second paragraph, set forth on pages 5---6 of
the Final Action. See Ans. 9.
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structure allows the sheet (before being isostatically pressed and converted
to a coating) to have the molecular weight recited in claim 6. Id. The
Examiner explains that Appellant's "coating 38 appears to have these
qualities but the coating 3 8 is not the same thing as sheet 34 according to the
[S]pecification." Id. We do not sustain these rejections of claims 3 and 6.
Although Appellant's disclosed invention may not comprise a sheet adhered
to the blade or a sheet having the claimed molecular weight, the metes and
bounds of a sheet of polymeric material being adhered to at least one blade
edge and a sheet of polymeric material having the claimed molecular weight
are clear.
The Examiner determines that claim 7 is indefinite because "it is
unclear what can and cannot be considered modified." Ans. 4. The
Examiner queries "[ w ]hat structure allows for this modification function to
take place." Id. The Examiner also states that "[t]here is no support for the
structures disclosed being able to perform a modification function." Id.
Claim 7 recites "wherein said lower surface of said at least one
polymeric material is modified." Br. 18 (Claims App.). Appellant's
Specification describes this aspect of the rejection by stating, "the lower
surface of the polymeric material is modified by mechanical abrasion,
chemical etching or film application to enhance adhesion to the blade edge."
Spec. 4: 18-19. Claim 7 is broader than the disclosure, in that it does not
specify the manner in which the lower surface of the polymeric material is
modified. However, the limitation is not unclear; the lower surface is
modified, or changed, in some manner after it is formed. While this
limitation is so broad that it may not effectively narrow the scope of claim 1
from which claim 7 depends, it does not render the scope of the claim
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indefinite. Merely that a claim is broad does not mean that it is indefinite.
See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller,
441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA
1970). Thus, we do not sustain the rejection of claim 7, or claim 8, which
depends from claim 7, on this basis.
For the above reasons, we do not sustain the rejection of claims 1-14
and 16 under 35 U.S.C. § 112, second paragraph.
Rejection II-Written Description
Claims 3 and 6, by virtue of their dependence from claim 1, recite "at
least one polymeric material comprised of a sheet, film, tape, or foil." Br. 17
(Claims App.). Claim 3 further recites that "said lower surface of said at
least one polymeric material is adhered to said at least one blade edge," and
claim 6 recites that "said at least one polymeric material has an average
molecular weight in the range of about 10,000 Dalton to about 1,000,000
Dalton." Id. Thus, claim 3 recites a polymeric sheet, film, tape, or foil
adhered to the at least one blade edge, and claim 6 recites a polymeric sheet,
film, tape, or foil having an average molecular weight in the range of about
10,000 Dalton to about 1,000,000 Dalton. As the Examiner explains, the
sheet, film, tape, or foil (i.e., material 34) described in Appellant's
Specification is not adhered to the blade edge, and does not have the
molecular weight recited in claim 6. The hot isostatic pressing (HIP) of
step 35 of Appellant's process causes the polymeric material to creep, or
flow, and deform, thereby forming on the blade a thin, uniform, and dense
coating that is no longer in the form of a sheet, film, tape, or foil. Spec.
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8:19--21; 9:7-11. 4 The HIP step causes the high molecular weight recited in
claim 6 to be achieved, and causes the polymer material to be adhered to the
blade edge. Id. 8:6-12, 19-21. However, the polymeric material that is
adhered to the blade and that has the high molecular weight recited in
claim 6 is not comprised of a sheet, film, tape, or foil. See Br. 7
( distinguishing between a coating and a sheet, foil, etc.). Thus, the
Examiner is correct that Appellant's Specification does not convey that
Appellant was in possession of the subject matter recited in claims 3 and 6 at
the time the present application was filed, so as to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
For the above reasons, we sustain the rejection of claims 3 and 6
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection III-Anticipation
Claim 1 recites a polymeric sheet, film, tape, or foil having an upper
surface and a lower surface, with the lower surface disposed on at least one
blade edge. Br. 17 (Claims App.). In reading claim 1 on the AAPA product,
the Examiner finds that "the right portion of Figure 1 ... clearly shows a
blade with a sheet or at the very least a film ( 18) with an upper surface and a
lower surface disposed on a blade edge." Ans. 11. Appellant persuasively
argues that coating 18, formed on blade 12 by spraying
polytetrafluoroethylene (PTFE) particles on the blade, sintering the particles
at step 14 to form a sintered PTFE coating, and then applying solvents in the
4 Although we cite to the present version of the Specification, this disclosure
was present, verbatim, in the original specification submitted on December
20, 2013.
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FLUTEC® technology at step 17, is not a sheet or film having an upper
surface and a lower surface as described in Appellant's Specification. Br. 7;
see Spec. 2:30-3:11; Fig. 1. As the Examiner explains, in discussing
Appellant's invention, once the PTFE material is deformed, or caused to
flow, to form a coating on the blade, it is "no longer a sheet/film/tape/foil."
Ans. 3. Similarly, the AAPA coating formed on blade 12 is not a
sheet/film/tape/foil.
Thus, we do not sustain the rejection of claim 1, or its dependent
claims 3-5 and 14, as anticipated by AAP A.
Rejections IV and V-Obviousness (Claims 6-8)
The aforementioned deficiency in the rejection of claim 1 also
pervades the rejections of claims 6-8. See Ans. 5-7. In rejecting claim 6,
the Examiner reasons that it would have been obvious to use "any type of
sheet of polymeric material with any reasonable molecular weight including
the claimed range" because "it has been held to be within the general skill of
a worker in the art to select a known material on the basis of its suitability
for the intended use as a matter of obvious design choice." Ans. 6 (citing In
re Leshin, 277 F.2d 197, 199 (CCPA 1960). Application of the principle set
forth in Leshin does not make up for the deficiency in the finding that AAPA
coating 18 is a sheet or film, as discussed above. As for claims 7 and 8, the
application of an adhesion-promoting layer of non-oxidized metal by
physical vapor deposition, as taught by Skrobis, before the coating is applied
to the blade in the AAP A process (see id. at 7) likewise would not make up
for the aforementioned deficiency in the finding that AAP A coating 18 is a
sheet or film.
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Accordingly, we do not sustain the rejection of claim 6 as
unpatentable over AAP A or the rejection of claims 7 and 8 as unpatentable
over AAP A and Skrobis.
Rejection VJ-Obviousness (Claims 2, 9--13, and 16)
Claim 16 depends from claim 1, and further recites, "wherein said at
least one polymeric material is disposed by isostatic press (IP) to form an
isostatically-pressed coating onto said at least one blade edge." Br. 19
(Claims App.). For the reasons set forth below in the new ground of
rejection, claim 16 contains an ambiguity as to whether the claim is directed
to the blade with the polymeric material in the form of a sheet, film, tape, or
foil (i.e., prior to the isostatic pressing) or to the blade with the polymeric
material in the form of an isostatically pressed coating formed on the blade
edge. Claims 2 and 9--13, which depend from claim 16, inherit this
ambiguity.
If claims 2, 9--13, and 16 are construed as requiring the polymeric
material in the form of a sheet, film, tape, or foil, the aforementioned
deficiency in the finding that AAP A sheet 18 is a sheet or film pervades the
rejection of these claims as well. If these claims are construed as requiring
an isostatically pressed coating formed on the blade edge, the combination
of AAP A with either Arnold or Tournut is deficient for the reasons set forth
below.
The Examiner finds that AAP A "fails to disclose isostatically-pressing
the sheet." Ans. 8. The Examiner finds that "Arnold teaches it is old and
well known in the art of forming metal parts with coatings to incorporate an
isostatically-pressed polymeric material (Figure 1 (a) Step Five) and the
coating has substantially zero porosity ( column 20 line 49)." Id. The
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Examiner also finds that Tournut discloses a process for forming "a thin
coating of PTFE [having] excellent powers of adhesion to metal walls under
reduced pressure and even at elevated temperatures." Id. ( citing Tournut
1: 10-14, 19--22, 45--47). The Examiner determines it would have been
obvious to replace the FLUTEC® technology step of AAPA (step 17 in
Figure 1) with an isostatic pressing treatment as taught by Arnold or Tournut
because the substitution of one known element for another
would have yielded predictable results and all 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.
Ans. 9.
Appellant argues, among other things, that the combination of AAP A
and Arnold proposed by the Examiner would not have been obvious because
a person having ordinary skill in the art would not have looked to Arnold's
diffusion bonding technique either to provide a sheet of polymeric material
on a razor blade edge or to isostatically press the polymeric material onto a
razor blade edge. Br. 12.
Arnold discloses using a high density coating process and HIP
treatment to form a durable wear resistant coating on a metal part. See
Arnold 19:64--21:57. Arnold teaches forming a workpiece substrate to near-
finished dimensions for the part, and then selecting an appropriate coating
material composition. Id. 20: 19--23. Arnold emphasizes that "[t ]he
selection of both the substrate and coating composition ... depends on their
metallurgical compatibility with each other." Id. 20:29-31. Arnold teaches
that the high density coating process, such as the Hyper Velocity Oxyfuel
(HVOF) plasma thermal spray process, "results in extremely dense, well-
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bonded coatings" that are "nearly 100% dense," with "a porosity of
about 0.5%." Id. 20:46-49. Arnold also teaches that a diffusion bond is
created by subjecting the coated workpiece substrate to an HIP treatment.
Id. 20:64---66. According to Arnold, "HIP treatment is conventionally used
in the densification of cast metal components and as a diffusion bonding
technique for consolidating powder metals." Id.21:15-17. Arnold explains
that the HIP treatment converts the mechanical bond formed between the
substrate and the applied coating to a metallurgical bond by creating a
diffusion bond between the coating material and the substrate. Id. 22:32-36.
The diffusion bond eliminates the interface boundary, which is usually the
site of failure, and creates a product having "desired surface properties, such
as wear resistance, color, smoothness, texture, etc." Id. 22:36-39.
In light of the above teachings of Arnold, a person of ordinary skill in
the art would not have viewed the HIP diffusion bond-creating technique of
Arnold as applicable, as a substitute for the FLUTEC® technology, in the
process of coating polymeric material to razor blades in the AAP A process.
The teaching of creating a metallurgical bond between metal materials
would have no apparent applicability in bonding polymeric coating material
to razor blades and would not have prompted a person having ordinary skill
in the art to use HIP in the AAP A process.
Appellant argues that a person having ordinary skill in the art "would
not look to using Tournut's fairly complex process ... for treatment of razor
blade edges." Br. 13-14 (citing Tournut 2:40-66). Tournut teaches that
conventional processes of isostatically pressing and then sintering PTFE
onto metals, especially steel, are problematic because the PTFE expands
considerably at the moment it melts during sintering, thus becoming
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detached from the metal walls, and, after cooling, no longer adheres to the
metal. Tournut 2:36-50. To overcome this problem, Tournut teaches a
process, particularly adapted for applying PTFE coatings on the inner walls
of a hollow metal body, comprising inserting a rubber membrane inside the
hollow metal body (e.g., steel tube) to be coated, thereby forming a space
between the inner walls of the body and the membrane; filling the space with
PTFE powder and compacting the powder; subjecting the powder to isostatic
pressure in an enclosure; removing the body from the enclosure and
removing the membrane from inside the body; filling empty parts of the
internal diameter of the hollow body with a solid substance that has fluid
flow characteristics but is thermally stable and incompressible at sintering
temperatures (e.g., glass beads); sintering the PTFE; and then removing the
solid substance (e.g., glass beads). Id. 1:8-14; 2:51---60; 3:3--4; 3:29---60.
During the sintering process, a thin layer of the solid substance (e.g., glass
beads) may be impregnated into the PTFE and remain there after removal of
the solid substance from the space within the internal diameter. Id. 3:60---61.
Some light machining is required to remove the impregnated solid substance
(e.g., glass beads). Id. 3:61---62.
The process taught by Tournut seemingly presents many of the same
problems exhibited by the AAP A process using FLUTEC® technology-
namely, risk of removal of PTFE material along with the solid substance
( e.g., glass beads), and potentially surface roughness left behind after
removal of embedded substance. Moreover, as Appellants point out, the
Tournut process is relatively complicated in comparison to the AAPA
process, and appears particularly adapted for use in coating the inner walls
of hollow metal bodies, rather than exterior edges of razor blades. See
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Br. 13. Thus, it is not apparent, and the Examiner does not adequately
explain, why a person having ordinary skill in the art would have been
prompted to use the process taught by Toumut, in place of the FLUTEC®
technology, in the AAPA process to form a PTFE coating on a razor blade.
For the above reasons, the Examiner does not establish that the subject
matter of claim 16, or the claims depending from claim 16, would have been
obvious. Accordingly, we do not sustain the rejection of claims 2, 9--13, and
16 as unpatentable over AAP A and Arnold or Toumut.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we make the
following new ground of rejection.
Claims 2, 9--13, and 16 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
"As the statutory language of 'particular[ ity]' and 'distinct[ ness]'
indicates, claims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014) ( citation omitted). "It is the applicants' burden to precisely define the
invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." Packard, 751 F.3d at 1313.
Claim 16, by virtue of its dependence from claim 1, recites a
polymeric sheet, film, tape, or foil having an upper surface and a lower
surface, with the lower surface disposed on at least one blade edge. Br. 17,
19 (Claims App.). Claim 16 also recites, "wherein said at least one
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polymeric material is disposed by isostatic press (IP) to form an
isostatically-pressed coating onto said at least one blade edge." Id. at 19
(Claims App.). As discussed above, the isostatic pressing step described in
Appellant's Specification causes the polymeric material to creep, or flow,
and deform, thereby forming on the blade a thin, uniform, and dense coating
that is no longer in the form of a sheet, film, tape, or foil. Spec. 9:7-11;
7 :25-30 ( contemplating that any known isostatic pressing process "may be
used substantially interchangeably to generate the desired results with
plausibly some modifications in either temperature, pressure or added
processing"). Thus, claim 16 recites the polymeric material in the form of a
sheet, film, tape, or foil and also as an isostatically pressed coating onto the
blade edge. See Br. 7 ( distinguishing between a coating and a sheet, foil,
etc.). This presents an ambiguity, as it is not clear whether the claim covers
a blade having a polymeric sheet, film, tape, or foil disposed thereon or a
blade having an isostatically pressed polymeric coating formed thereon. It
may well have been Appellant's intention to claim a blade having an
isostatically pressed polymeric coating thereon in product-by-process
format-that is, a razor blade having an isostatically pressed coating of
polymeric material formed thereon, wherein the coating is formed by placing
a polymeric material comprised of a sheet, film, tape, or foil on at least one
blade edge and isostatically pressing said polymeric material by isostatic
press to form an isostatically pressed coating onto said at least one blade
edge. However, as discussed above, claim 16 is not drafted in this manner.
Claims 2 and 9-13 depend from claim 16 and, thus, inherit the
aforementioned ambiguity.
For the above reasons, claims 2, 9-13, and 16 are indefinite.
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DECISION
The Examiner's decision rejecting claims 1-14 and 16 under
35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner's decision rejecting claims 3 and 6 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, is AFFIRMED.
The Examiner's decision rejecting claims 1, 3-5, and 14 under
35 U.S.C. § 102(b) is REVERSED
The Examiner's decision rejecting claims 2, 6-13, and 16 under
35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 2, 9-13, and
16 under 35 U.S.C. § 112, second paragraph.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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
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of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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