Ex Parte White et al

Board of Patent Appeals and Interferences

Nov 18, 2009

10692136 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT WHITE, GRAHAM JOHN SIMMS, and
KEVIN L. POWELL
____________

Appeal 2009-000650
Application 10/692,136
Technology Center 3700
____________

Decided: November 19, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Robert White et al. (Appellants) appeal under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 17-24 and 26. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellants’ claimed invention is directed to a method of making a
cutting element for a blade unit of a safety razor. Spec. 1:2-4. “A safety
razor generally comprises a blade unit having at least one blade with a
cutting edge which is moved across the surface of the skin being shaved by
means of a handle to which the blade unit is attached.” Id., 1:4-6.
According to Appellants, “[t]he shaving performance of a razor blade unit is
dependent not only on the sharpness of the blade(s), but on the disposition of
the blade(s) in relation to other parts of the blade unit which normally
contact the skin during shaving.” Id., 1:12-14.
Claim 17, reproduced below, is representative of the claimed subject
matter.
17. A method of making a cutting element for a
safety razor blade unit comprising the steps of
providing a wafer of single crystal material having
a surface lying in a predetermined plane of the
crystallographic structure, selectively removing
crystal material at the surface by employing an
etching process to form a planar cutting element
inclined at an acute angle to the surface plane and
having a sharp cutting edge substantially at the
surface plane, and forming a guard element from
the wafer of single crystal material by the etching
process, said guard element being disposed
substantially parallel to the cutting edge and
spaced forwardly therefrom and being integrally
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connected to the cutting element by
interconnecting elements.
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Trotta US 5,018,274 May 28, 1991
Marcus US 5,842,387 Dec. 1, 1998
Erdmann (as translated) DE 35 26 951 A1 Jan. 29, 1987
Appellants’ Admitted Prior Art (AAPA), Spec. 3:30 to 4:23 (admitting that
dry etching and isotropic etching are well known).
Appellants seek review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 17, 18, 20-22, 24, and 26 as being unpatentable over
Trotta and Erdmann; claims 19 and 23 as being unpatentable over Trotta,
Erdmann, and AAPA; and claims 17-24 and 26 as being unpatentable over
Trotta and Marcus.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
In rejecting claims 17, 18, 20-22, 24, and 26 as being unpatentable
over Trotta and Erdmann, the Examiner concluded that it would have been
obvious to use an etching process on a wafer of single crystal material, as
taught by Erdmann, for forming cutting elements to make a cutting blade as
described by Trotta. See Ans. 4.
Appellants contest the Examiner’s finding (Ans. 4) that Trotta’s blade
includes a guard element 21. App. Br. 6.
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Appellants argue that combination of Trotta and Erdmann would not
result in the method of claim 17 because Erdmann’s cutting edges 12 are not
positioned at the surface plane (the top surface) of Erdmann’s blade. App.
Br. 6. According to Appellants, because Erdmann’s shearing blades
function differently from the wet shaving blades of Trotta, there is no reason
to include a sharp edge at the surface plane. App. Br. 6 and 9. Appellants
further argue that replacing the blades of Trotta with the shearing foil of
Erdmann would drastically alter the structure of Trotta’s blade, thus
rendering the cutting elements non-acute. App. Br. 9.
Appellants additionally argue that a person of ordinary skill in the art
would not have had a reasonable expectation that the Erdmann etching
process would provide adequate sharpness to the cutting edge for use in
Trotta’s wet shaving blade. App. Br. 10.
Finally, Appellants argue that, even if Trotta and Erdmann could be
combined as proposed by the Examiner, there is no motivation or suggestion
to combine them, because, based on Trotta’s teachings, the artisan would
have believed Trotta’s process to be economical, and would have seen no
reason to attempt to simplify it. App. Br. 7-8.
Appellants do not present any separate arguments for the patentability
of claims 18, 20-22, 24, and 26 apart from claim 17. Accordingly, for
purposes of our review of the rejection based on Trotta and Erdmann, these
claims stand or fall with claim 17. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants rely on their arguments directed to claim 17 in contesting
the rejection of claims 19 and 23 as being unpatentable over Trotta,
Erdmann, and AAPA. App. Br. 10. Accordingly, our conclusion with
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respect to the rejection of claim 17 as being unpatentable over Trotta and
Erdmann will likewise be dispositive as to the rejection of claims 19 and 23.
In rejecting claims 17-24 and 26 as being unpatentable over Trotta
and Marcus, the Examiner concluded that it would have been obvious to
form a safety razor blade cutting element of the type described by Trotta
using an etching process for making a cutting element from a wafer of single
crystal material as taught by Marcus. Ans. 5.
In contesting the rejection, Appellants argue, inter alia, that the blade
embodiments disclosed by Marcus do not provide for cutting blades with
planar blade surfaces, as disclosed by Trotta, and as required in claim 17.
App. Br. 14. Thus, according to Appellants, “Marcus does not disclose or
even suggest that this etching process could be used to create a
honeycombed structure having angled and [planar] cutting elements as
disclosed by Trotta.” Id.
Accordingly, the following issues are presented for our consideration:
1. Have Appellants demonstrated that the Examiner erred in finding that
Trotta’s blade 14 includes a guard element, as called for in claim 17?
2. Have Appellants demonstrated that the Examiner failed to articulate a
reason with rational underpinning for combining the etching technique
of Erdmann with the cutting blade unit of Trotta?
3. Have Appellants demonstrated that a person of ordinary skill in the art
would not have had a reasonable expectation that an etching technique
of the type taught by Erdmann could be used to form the cutting
elements of a wet shaving blade as described by Trotta with cutting
edges of adequate sharpness, and thus would not have been prompted
to make the combination proposed by the Examiner?
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4. Have Appellants demonstrated that a person of ordinary skill in the art
would not have had a reasonable expectation that the etching process
of Marcus could be used to create the honeycombed structure having
angled, planar cutting elements as disclosed by Trotta, and thus would
not have been prompted to make the combination proposed by the
Examiner?

FACTS PERTINENT TO THE ISSUES
FF1 Appellants disclose that their unitary blade structure includes a
guard element 15 “which is parallel to the blades and lies
between the first blade 11 and the guard member 3 of the frame
in the assembled blade unit so that this guard element 15
determines the span and the exposure of first blade 11.” Spec.
7:4-7. See figs. 2 and 3.
FF2 The bottom strip of blade material, the bottom face of which is
designated with the reference numeral 21 in figure 4 of Trotta,
lies parallel to the blades and is positioned to lie between the
first blade (defined between the bottom two rows of cells 18 in
figure 4) and a guard member of the frame of the assembled
razor head. Further, this strip of material determines the span
and exposure of the first blade, in much the same manner as
Appellants’ disclosed guard element 15 (see FF1).
FF3 Trotta discloses a safety razor blade 14 that is manufactured by
providing a honeycombed block 16 of ceramic material capable
of being extruded into the shape shown in figure 3 in its green
or uncured condition, slicing a portion P from the block at an
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acute angle to form blade 14, curing the blade, grinding and
polishing the blade to form a plurality of sharpened edges 30,
and coating the blade with a coating of platinum chrome and a
telomer coating to produce a blade having cutting edges 30
“which are adequately sharp” and have the necessary
wearability for a durable shaving instrument. Trotta, col. 2, l.
63 to col. 3, l. 35.
FF4 Trotta characterizes the invention disclosed therein as providing
a safety razor blade that is simple to manufacture and lends
itself to mass production techniques. Trotta, col. 3, ll. 56-58.
FF5 As pointed out by the Examiner (see Ans. 6), Erdmann teaches
that the technique of forming a blade by etching a single crystal
silicon disk produces a blade with improved cutting quality and
longer life expectancy by means of a single etching process.
Erdmann 2.
FF6 The Examiner concluded that Erdmann’s teaching that the
etching technique produces a blade with improved cutting
quality and longer life expectancy (see FF5) would have
motivated a person of ordinary skill in the art to replace the
blade forming process described by Trotta with the etching
process taught by Erdmann. Ans. 6.
FF7 Erdmann’s etching process involves etching both upwardly
from the bottom surface, and downwardly from the top surface,
using photoresist 3 to form etch-masks defining the windows 4
and 5. Erdmann 3, fig. 1a. Erdmann’s etching process causes
the edges of the hole formed by the etching to run toward each
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other in such a way that the hole narrows, as depicted by
displayed directions 6, 7, and 8 in figure 1a. Erdmann 3.
FF8 Erdmann alludes to “cutting edges 12” formed on a lower
surface of the blade removed from the top surface. Erdmann 3,
fig. 1b. Erdmann makes no reference to any cutting edges
disposed at the top surface of the blade. Indeed, the particular
etching pattern utilized by Erdmann results in acute angle
structures (cutting edges 12) only on the bottom surface, and in
obtuse angle structures on the top surface, at the edges of
window 4.
FF9 As correctly noted by the Examiner, given the narrowing hole-
forming effect of Erdmann’s etching process (see FF7), and the
two-sided etch application (see id.), a person of ordinary skill in
the art would have readily appreciated that parallel, angular
cutting element surfaces, such as along depicted directions 6
and 8 in figure 1a, can be formed using Erdmann’s etching
process by applying photoresist masking in appropriate
locations. Such a process would produce sharp, acutely angled,
cutting edges at both the top and bottom surfaces of the blade.
FF10 Erdmann characterizes the cutting edges produced by the
etching technique as being “sharp” and “of diamond-like
quality.” Erdmann 2, 3.
FF11 The declaration of Uwe Sievers relied upon by Appellants
states that Trotta's wet shaving blade and Erdmann's shearing
blade have different types of edges intended for different
purposes (para. 3), and that the Erdmann edge could be quite
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blunt (para. 5). The Sievers declaration, however, notably does
not state that Erdmann's etching process is incapable of
producing cutting edges of adequate sharpness for use in
forming a blade as described by Trotta.
FF12 All of the etched knife blade structures disclosed and illustrated
by Marcus have non-planar surfaces. See, e.g., Marcus, figs.
11-13, 15, 17, 22, 31-33, 39, 42, 43, 50, 51, and 54. The
Examiner has not pointed to any teaching in Marcus that
indicates or suggests that the etching process of Marcus is
capable of producing inclined, planar cutting elements, as
disclosed by Trotta (fig. 4), and required by claim 17.

PRINCIPLES OF LAW
Claim Construction
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Obviousness
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, “the analysis need not
seek out precise teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.
While the demonstration of a teaching, suggestion, or motivation (the
TSM test established by the Court of Customs and Patent Appeals) to
combine known elements in order to show that the combination is obvious
may be “a helpful insight,” it cannot be used as a rigid and mandatory
formula. Id. at 418-19.
Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Likewise, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
An expert’s opinion on the legal conclusion of obviousness is neither
necessary nor controlling. Avia Group Intern., Inc. v. L.A. Gear Inc., Calif.,
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853 F.2d 1557, 1564 (Fed. Cir. 1988). While it is proper to give some
weight to a persuasively supported statement of one skilled in the art on
what was not obvious to him, obviousness is a question of law which we
must decide. See In re Weber, 341 F.2d 143, 145 (CCPA 1965); In re
Vamco Machine and Tool, Inc., 752 F.2d 1564, 1574-75 (Fed. Cir. 1985).

ANALYSIS
Consistent with Appellants’ Specification (see FF1), we construe
“guard element,” as used in Appellants’ claim 17, to be a unitary part of the
blade structure which lies parallel to the blades at one end of the unitary
blade structure so that, when assembled into the frame, the guard element
lies between the first blade and the guard member of the frame and thus
determines the span and exposure of the first blade.
Like the “guard element 15” described in Appellants’ Specification
(see FF1), the bottom strip of blade material, the bottom face of which is
designated with the reference numeral 21 in figure 4 of Trotta, lies parallel
to the blades and is positioned to lie between the first blade (defined between
the bottom two rows of cells 18 in figure 4) and a guard member of the
frame of the assembled razor head. FF2. Further, this strip of material
determines the span and exposure of the first blade, in much the same
manner as Appellants’ disclosed guard element 15 (see FF1). FF2.
Accordingly, the Examiner did not err in finding that this strip of blade
material of Trotta’s blade is a “guard element” as called for in claim 17.
Appellants’ argument that there is no motivation or suggestion to
combine the etching technique of Erdmann with the cutting blade unit of
Trotta is not convincing. First, as noted above, the Supreme Court has stated
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that a rigid insistence on teaching, suggestion, or motivation is incompatible
with its precedent concerning obviousness. KSR, 550 U.S. at 419.
Moreover, while Trotta characterizes the safety razor blade disclosed therein
as being simple to manufacture and lending itself to mass production
techniques (see FF4), that fact alone would not have discouraged a person of
ordinary skill in the art from attempting to improve either the blade or the
process of making the blade. Erdmann teaches that the technique of forming
a blade by etching a single crystal silicon disk produces a blade with
improved cutting quality and longer life expectancy by means of a single
etching process. FF5. The Examiner concluded that this teaching by
Erdmann would have motivated a person of ordinary skill in the art to
replace the blade forming process described by Trotta with the etching
process taught by Erdmann. FF6.
The Examiner’s conclusion is well reasoned. Despite the recognized
differences in structure and operation between Trotta’s wet shaving blade
and the shearing blade of Erdmann (see FF11), a person of ordinary skill in
the art would have readily appreciated that the benefits of improved cutting
quality and longer life expectancy offered by Erdmann’s etching technique
would likewise improve the shaving blade of Trotta, while still affording the
simplicity of a single etching process. Accordingly, the Examiner has
articulated a reason with rational underpinning for combining the etching
technique of Erdmann with the shaving blade of Trotta.
We likewise are not persuaded that, because of the positioning of
Erdmann’s cutting edges 12, combination of Trotta and Erdmann, as
proposed by the Examiner, would not result in the method of claim 17. This
argument is directed to the teachings of Erdmann alone, and not in
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combination with Trotta, as proposed by the Examiner. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner has
not proposed replacing the blade of Trotta with the shearing blade of
Erdmann. Rather, the Examiner’s rejection proposes using an etching
process, as described by Erdmann, to form the blade of Trotta. Erdmann
alludes to “cutting edges 12” formed on a lower surface of the blade
removed from the top surface, and makes no reference to any cutting edges
disposed at the top surface of the blade. FF8. Indeed, the particular etching
pattern utilized by Erdmann results in acute angle structures (cutting edges
12) only on the bottom surface, and in obtuse angle structures on the top
surface, at the edges of window 4. Id. As correctly noted by the Examiner,
however, given the two-sided etch application and the narrowing hole-
forming effect of Erdmann’s etching process (see FF7), a person of ordinary
skill in the art would have readily appreciated that parallel, angular cutting
element surfaces, such as along depicted directions 6 and 8 of figure 1a, can
be formed using Erdmann’s etching process by applying photoresist masking
in appropriate locations. FF9. Such a process would produce sharp, acutely
angled, cutting edges at both the top and bottom surfaces of the blade. Id.
Appellants’ argument that a person of ordinary skill in the art would
not have had a reasonable expectation that an etching technique as taught by
Erdmann could be used to form sufficiently sharp cutting elements is not
persuasive. While the declaration of Uwe Sievers relied upon by Appellants
states that Trotta's wet shaving blade and Erdmann's shearing blade have
different types of edges intended for different purposes, and that the
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Erdmann edge could be quite blunt, the Sievers declaration notably does not
state that Erdmann's etching process is incapable of producing cutting edges
of adequate sharpness for use in forming a blade as described by Trotta.
FF11. Erdmann’s description of the cutting edges produced by the etching
technique as being “sharp” and “of diamond-like quality” (see FF10), in the
absence of evidence to the contrary, is sufficient to support the Examiner’s
finding that a person of ordinary skill in the art would have had a reasonable
expectation of success in using such a technique to form a safety razor blade
as described by Trotta. Moreover, to the extent that the etching process
itself produced cutting edges that were not adequately sharp to suit the
purposes of Trotta’s blade, a person of ordinary skill in the art could impart
the necessary sharpness by applying the known grinding, polishing, and
coating steps described by Trotta (see FF3).
The Examiner’s rejection of claim 17 as being unpatentable over
Trotta and Marcus is grounded on the conclusion that the combined
teachings of Trotta and Marcus would have prompted a person of ordinary
skill in the art to form a safety razor blade cutting element of the type
described by Trotta using an etching process for making a cutting element
from a wafer of single crystal material as taught by Marcus. Appellants’
argument that Marcus does not disclose or suggest that the etching process
could be used to form the type of honeycombed structure having angled and
planar cutting elements disclosed by Trotta is convincing. All of the etched
knife blade structures disclosed and illustrated by Marcus have non-planar
surfaces. FF12. The Examiner has not pointed to any teaching in Marcus
that indicates or suggests that the etching process of Marcus is capable of
producing inclined, planar cutting elements, as disclosed by Trotta (fig. 4),
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and required by claim 17. Id. Accordingly, the combined teachings of
Trotta and Marcus are insufficient to establish that a person of ordinary skill
in the art would have had a reasonable expectation that the etching process
of Marcus could be used to create the honeycombed structure having angled,
planar cutting elements as disclosed by Trotta, and thus would have been
prompted to make the combination proposed by the Examiner.

CONCLUSIONS
1. Appellants have not demonstrated that the Examiner erred in finding
that Trotta’s blade 14 includes a guard element, as called for in claim
17.
2. Appellants have not demonstrated that the Examiner failed to
articulate a reason with rational underpinning for combining the
etching technique of Erdmann with the cutting blade unit of Trotta.
3. Appellants have not demonstrated that a person of ordinary skill in the
art would not have had a reasonable expectation that an etching
technique of the type taught by Erdmann could be used to form the
cutting elements of a wet shaving blade as described by Trotta with
cutting edges of adequate sharpness, and thus would not have been
prompted to make the combination proposed by the Examiner.
4. Appellants have demonstrated that, based on the record before us, a
person of ordinary skill in the art would not have had a reasonable
expectation that the etching process of Marcus could be used to create
the honeycombed structure having angled, planar cutting elements as
disclosed by Trotta, and thus would not have been prompted to make
the combination proposed by the Examiner.
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Accordingly, we sustain the rejections of claims 17, 18, 20-22, 24, and
26 as being unpatentable over Trotta and Erdmann; and claims 19 and 23 as
being unpatentable over Trotta, Erdmann, and AAPA. We do not sustain the
rejection of claims 17-24 and 26 as being unpatentable over Trotta and
Marcus.
DECISION
The Examiner’s decision 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)(1)(iv) (2007).
AFFIRMED

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