Ex Parte Wang et al

Patent Trial and Appeal Board

Jan 23, 2015

12174317 (P.T.A.B. Jan. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XIANDONG WANG, NEVILLE SONNENBERG,
JOSEPH DEPUYDT, MICHAEL J. KWIECIEN, and
WILLIAM JOLLEY
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Appeal 2013-0006391
Application 12/174,317
Technology Center 3700
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Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1–3, 5–8, 10–14, 16–20, 22, and 24–26.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify The Gillette Company as the real party in interest. See
Appeal Br. 1.
2 Our decision references Appellants’ Specification (“Spec.,” filed July 16,
2008), Appeal Brief (“Appeal Br.,” filed Feb. 21, 2012), and Reply Brief
(“Reply Br.,” filed Oct. 5, 2012), as well as the Examiner’s Answer
(“Answer,” mailed Aug. 17, 2012).
Appeal 2013-000639
Application 12/174,317

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According to the Specification, Appellants’ “invention relates to razor
cartridges, and more particularly to a lubricating strip or cap composed of
shaving aids for a razor cartridge.” Spec. 1, ll. 3–4. Claims 1, 12, and 26
are the only independent claims on appeal. We reproduce below claim 1 as
representative of the appealed claims.
1. A razor cartridge comprising:
a plurality of blades and at least one lubricating
body in the dry state, said body having a maximum
height greater than a maximum blade plane height
of said plurality of blades.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
Appellants appeal the following rejections made by the Examiner:
claims 1–3, 5–8, 10–13, 17–20, 22, and 24–26 under 35 U.S.C.
§ 102(b) as anticipated by Prochaska (US 6,473,970 B1, iss. Nov. 5, 2002);
and
claims 14 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Prochaska.
ANALYSIS
Appellants argue together each of independent claims 1, 12, and 26, as
well as claims 2, 3, 5–8, 10, 11, 13, 17–20, 22, 24, and 25 dependent
therefrom. See Appeal Br. 3–5. We choose claim 1 as representative of the
group of claims, and each of claims 2, 3, 5–8, 10–13, 17–20, 22, and 24–26
stands or falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Inasmuch as
we sustain the rejection of claim 1 for the following reasons, we also sustain
the rejection of claims 2, 3, 5–8, 10–13, 17–20, 22, and 24–26.
Appeal 2013-000639
Application 12/174,317

3

Claim 1 requires a “[lubricating] body having a maximum height
greater than a maximum blade plane height of said plurality of blades.”
Appeal Br., Claims App. Appellants argue the rejection is in error, because
“Prochaska’s lubricating strip 152 does not have a height which is greater
than the maximum blade plane height. Prochaska neither teaches nor
suggests a height differentiation between the lubricating strip and the blade
plane.” Appeal Br. 3. In response, the Examiner states, “the claim cites a
blade plane height but doesn’t establish relative to which plane is located.
This means the blade plane height could be located at any point or plane of
the blade.” Answer 7. Appellants respond to the Examiner’s statement,
arguing:
Firstly, the Examiner has erred in that all
reasonable interpretations of the claims are
analyzed in light of the specification, which
nowhere has disclosed a blade plane height
location as set forth by the Examiner. During
patent examination, claims must be given their
broadest reasonable interpretation consistent with
the specification.
….
Secondly, it is noted that this broadest
reasonable construction of the claims in light of the
specification is determined as it would be
interpreted by one of ordinary skill in the art. . . .
In this case, Appellant asserts that no person of
ordinary skill in the art would deem the blade
plane height in the purported locations set forth by
the Examiner.
Reply Br. 2–3. Despite Appellants’ arguments, we are not persuaded the
Examiner errs in rejecting claim 1. Appellants do not demonstrate, such as
by reference to the Specification, that the Examiner’s interpretation is
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Application 12/174,317

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unduly broad and inconsistent with the Specification. Further, Appellants do
not demonstrate why one of ordinary skill would not interpret the claims as
does the Examiner, and Appellants do not provide an interpretation that
would have been held by one of ordinary skill, supported by any evidence.
Rather, Appellants submit only attorney argument. For these reasons, we
are not persuaded the Examiner errs in rejecting claim 1, and we sustain the
rejection.
Based on the foregoing, we also sustain the rejection of claims 2, 3, 5–
8, 10–13, 17–20, 22, and 24–263.
With respect to claims 14 and 16, dependent from independent claim
12, Appellants argue claims 14 and 16 together. See Appeal Br. 5–7. We
choose claim 14 as representative of the claim group. We are not persuaded
by Appellants’ argument that the Examiner erred in rejecting the claims
because “nothing in Prochaska teaches or suggests that [the strip exposure]
could, or should, be manipulated.” Id. at 6. We note that the discovery of an
optimum value of a result effective variable (in this case, the strip exposure)
is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276

3 We note that even if we considered Appellants’ remarks directed to
independent claim 26’s limitation of a “strip angle greater than zero
degrees,” Appellants’ arguments would not be persuasive. See Appeal Br.
3–5. The Examiner finds that Prochaska discloses the claimed strip angle
(see, e.g., Answer 5), but Appellants do not explain sufficiently why the
Examiner is incorrect and Prochaska does not disclose the claimed strip
angle, or even what strip angle is believed to be disclosed by Prochaska.
Further, the analysis of Appellants’ remarks directed to independent claim
12’s and 26’s “strip exposure greater than zero millimeters” would be
substantially the same as the analysis for claim 1’s “[lubricating] body
having a maximum height greater than a maximum blade plane height of
said plurality of blades.”
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Application 12/174,317

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(CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955). As stated in
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996):
This court and its predecessors have long
held, however, that even though applicant’s
modification results in great improvement and
utility over the prior art, it may still not be
patentable if the modification was within the
capabilities of one skilled in the art, unless the
claimed ranges “produce a new and unexpected
result which is different in kind and not merely in
degree from the results of the prior art.”
Additionally, as stated in In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. . . . These cases have consistently held that
in such a situation, 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
[citations omitted].
In the present case, however, Appellant has not established that the
claimed strip exposure produce unexpected results. On the contrary, it is
expected that the strip exposure may be varied to change characteristics of
the shave given by the razor cartridge. See Answer 6, 8. Therefore, we
conclude it would have been obvious to one of ordinary skill in the art at the
time of Appellants’ invention to optimize the strip exposure. We are not
persuaded the Examiner errs in rejecting claim 14, and thus we sustain the
rejection of claims 14 and 16.
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Application 12/174,317

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DECISION
For the above reasons, we AFFIRM the Examiner’s rejections of the
claims.
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

Ssc