Ex parte Wonderley

Board of Patent Appeals and Interferences

Nov 27, 2001

09059699 (B.P.A.I. Nov. 27, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFF WONDERLEY
____________
Appeal No. 2001-1772
Application No. 09/059,699
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-14, 16-
22 and 24-26. Claims 15, 23 and 27-29 have been allowed, and claim 30 has been
indicated as containing allowable subject matter.
We REVERSE.
Appeal No. 2001-1772 Page 2
Application No. 09/059,699
BACKGROUND
The appellant's invention relates to a razor cartridge. An understanding of the
invention can be derived from a reading of exemplary claim 1, which appears in the
appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Booth 4,170,821 Oct. 16, 1979
Ferraro 5,666,729 Sep. 16, 1997
Claims 1-14, 17-22 and 24-26 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ferraro.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ferraro in view of Booth.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 21) and the final rejection (Paper No. 17) for the examiner's complete reasoning in
support of the rejections, and to the Brief (Paper No. 20) and Reply Brief (Paper No. 23)
for the appellant's arguments thereagainst.
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Application No. 09/059,699
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
In the opening pages of the specification, the appellant explains that in multiple
blade wet shavers a plurality of small razor blades are mounted within a small cartridge,
and that these blades must be mounted in such a fashion as to give firm support to the
blades while providing flow channels through the blade cartridge to allow debris to be
flushed therefrom. According to the appellant, the blades must be resiliently mounted in
order to provide a close shave while minimizing injury to the person shaving. The
appellant’s invention is directed to improvements in such razor cartridges and comprises a
platform member supporting a first blade and a spacer member supporting second and
third blades above the first blade, with spaces being provided between the three blades.
Throughout the specification, and with regard to all of the embodiments, the appellant has
explained the invention in terms of comprising a platform member that is separate from the
spacer member.
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Application No. 09/059,699
The Rejection Under Section 102
The guidance provided by our reviewing court with regard to the matter of
anticipation is as follows: Anticipation is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and every element of
the claimed invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference does not
require either the inventive concept of the claimed subject matter or recognition of inherent
properties that may be possessed by the reference. See Verdegaal Brothers Inc. v. Union
Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor
does it require that the reference teach what the applicant is claiming, but only that the
claim on appeal "read on" something disclosed in the reference, i.e., all limitations of the
claim are found in the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772,
218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
The appellant’s claim 1 reads as follows:
1. A razor cartridge comprising:
a platform member;
a first blade placed on said platform member;
a spacer having a base portion with an upper surface and a lower surface;
Appeal No. 2001-1772 Page 5
Application No. 09/059,699
a second blade; and
a third blade,
wherein said base portion of said spacer is positioned between said first
blade and said second blade such that said lower surface is disposed on
said first blade and said upper surface supports said second blade, said
spacer having at least one protrusion member extending above said upper
surface supporting said third blade, said spacer being in a fixed relationship
to said platform member.
The examiner is of the view that all of the subject matter of claim 1 finds correspondence in
the Ferraro razor cartridge which, as shown in Figure 3, comprises three blades that are
held in place by a plurality of support members 80. In order to arrive at this conclusion, the
examiner has taken the position that the appellant’s claims do not require that the platform
member and the spacer be separate elements, and has carved the Ferraro support
members into portions and labeled these portions as the “platform member” and the
“spacer” recited in the claims (see Paper No. 17, page 2). The appellant argues that the
claim should not be interpreted in such a manner, and that Ferraro fails to disclose all of
the subject matter recited in the claim in that it does not have a separate platform member
and support. We agree with the appellant’s conclusion that Ferraro does not anticipate
claim 1. Our reasoning follows.
We first note that Ferraro was cited on page 3 of the appellant’s specification as
an example of the prior art over which the appellant considered his invention to be an
improvement. Ferraro is described as disclosing a plurality of resilient supports each of
Appeal No. 2001-1772 Page 6
Application No. 09/059,699
which support all of the three blades, an arrangement that the appellant considers to be
disadvantageous because either a large number of supports must be used to achieve
adequate stability or the supports must themselves be large, both of which limit the size of
flow paths through the cartridge. From our perspective, since the appellant acknowledges
the existence of the Ferraro cartridge, it is reasonable to presume at the outset that he
intends for his claims not to read upon it.
While claim 1 does not explicitly state that the platform member is “separate” from
the spacer, it is our opinion that the language of the claim 1 is such that, when considered
in the light of the appellant’s disclosure, it should be interpreted to limit the claim to a
cartridge in which the platform member is an element separate from the spacer. This is
the interpretation that the appellant intended to be applied to the claims, as is evident from
the arguments in the Briefs. Moreover, as also is pointed out by the appellant, such an
interpretation is consistent with the manner in which these elements are presented in claim
1. In this regard, claim 1 recites “a platform member and a first blade placed on said
platform member” (emphasis added), which we agree indicates that the platform member
is a separate element, in and of itself. The claim goes on to recite “a spacer having a
base portion . . . positioned between said first blade and said second blade . . . said
spacer having at least one protrusion . . .” (emphasis added), which we agree supports the
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Application No. 09/059,699
conclusion that the spacer is separate from the platform member, and it is a portion of the
spacer that is positioned between the first and second blades.
It therefore is our opinion that a fair reading of claim 1 on the basis of the explicit
language recited therein taken in the light of the specification leads to the conclusion that
claim 1 requires the presence of platform member that is separate from the spacer. This
being the case, the structure disclosed by Ferraro does not meet the terms of the claim,
and we will not sustain the anticipation rejection of claim 1 or, it follows, of dependent
claims 2-9.
Independent claim 10 sets forth the invention in more detail, but still contains the
language we focused on above regarding the platform member and the spacer. The
rejection of this claim and of dependent claims 11-14,17-22 and 24-26 is not sustained for
the same reasons as were expressed above with regard to claim 1 et.al.
The Rejection Under Section 103
Claim 16, which depends from claim 10, stands rejected as being unpatentable
over Ferraro in view of Booth, the latter being cited for its teaching of providing a
lubricating applicator on the cap member of a shaving cartridge.
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller,
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Application No. 09/059,699
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Considering Ferraro in this light
does not alter our conclusion that it does not disclose or teach the subject matter recited in
claim 10, in that we fail to perceive any teaching, suggestion or incentive which would have
led one of ordinary skill in the art to modify Ferraro by providing a separate platform
member and spacer. Further consideration of Booth does not overcome this deficiency.
The combined teachings of Ferraro and Booth fail to establish a prima facie case
of obviousness with regard to the subject matter of claim 16, and we will not sustain the
rejection.
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Application No. 09/059,699
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2001-1772 Page 10
Application No. 09/059,699
MCDERMOTT WILL & EMERY
600 13TH STREET, N.W.
WASHINGTON , DC 20005-3096
APPEAL NO. 2001-1772 - JUDGE ABRAMS
APPLICATION NO. 09/059,699
APJ ABRAMS
APJ FRANKFORT
APJ McQUADE
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 20 Sep 02
FINAL TYPED: