Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201712074603 (P.T.A.B. Feb. 23, 2017) Copy Citation 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. 12/074,603 03/04/2008 Jun Yang 77109-PAT-US/RSM 8379 23432 7590 02/24/2017 COOPER & DUNHAM, LLP 30 Rockefeller Plaza 20th Floor NEW YORK, NY 10112 EXAMINER SHI, KATHERINE MENGLIN ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 02/24/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN YANG and AJIT KHUBANI Appeal 2014-0065141 Application 12/074,6032 Technology Center 3700 Before: MICHAEL C. ASTORINO, KEVIN W. CHERRY, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed October 24, 2013) and Reply Brief (“Reply Br.,” filed May 7, 2014), and the Examiner’s Answer (“Ans.,” mailed March 14, 2014) and Final Office Action (“Final Act.,” mailed May 2, 2013). Our decision also references Appellants first declaration submitted by Ajit Khubani (“Khubani Dec. 1,” filed February 1, 2010) and second declaration submitted by Ajit Khubani (“Khubani Dec. 2,” filed August 17, 2010). 2 Appellants identify International Edge Inc. and Telebrands Corp. as the real parties in interest (Appeal Br. 1). Appeal 2014-006514 Application 12/074,603 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 6, 7, 10, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED INVENTION Appellants’ invention “relates generally to the field of skin removing files and rasps” (Spec. 13). Claim 1 is the only independent claim on appeal. Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A device for removing skin, comprising: [a] a cartridge formed as a frame having a front side and a back side and a file supported by the frame at said front side, the file having a plurality of cutting edges for scraping skin from a person’s body at the front side of the frame, and respective proximate holes through which removed skin passes toward the back side of the frame; [b] a handle having a side wall, an end wall and an open end removably attachable to the cartridge with the open end of the handle facing the back side of the frame to form a chamber for storing removed skin, said handle being manually graspable for moving the file across a person’s skin, said end wall curving convexly outward in a direction away from said open end; and [c] a cover having an inner side and an outer side, removably connectable to the cartridge with said inner side facing the front side of the cartridge and cooperating with the handle to completely enclose the file on both the front and back sides of the frame, thereby to prevent stored removed skin from leaking out of the chamber. (Appeal Br. 24 (Claims App.)). 2 Appeal 2014-006514 Application 12/074,603 REJECTIONS Claims 1, 2, 6, 10, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Grace (WO 2006/068638 Al, pub. June 29, 2006), Yamanaka (US 2007/0119995 Al, pub. May 31, 2007), and Bocchino (US 2,746,461, iss. May 22, 1956). Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Grace, Yamanaka, Bocchino, and Bodum (US D447, 391 S, iss. Sept. 4, 2001). FACTUAL FINDINGS We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Additional facts may appear in the Analysis section. Specification 1. Appellants’ Specification discloses that the “invention relates generally to the field of skin removing files and rasps” (Spec. 13). 2. Appellants’ Specification discloses that prior art “devices are inconvenient because these devices do not capture the skin once skin removed from the person’s body, but instead allow the skin to fall to the ground thereby requiring the user to clean the entire area where the device was used” {id. 14). 3. Appellants’ Specification discloses [o]ne conventional foot file attempts to overcome these problems by placing the cutting surface at one end of a hollow chamber and sealing the other end of the chamber with a removable cover such that removed skin will be retained by the chamber. This 3 Appeal 2014-006514 Application 12/074,603 removable cover also can be placed over the cutting surface to shield a user or storage surface from the cutting surface. However, with this device the cutting surface cannot be covered without leaving the chamber open, thereby allowing removed skin pieces to fall out. (Id. 1 6). Grace 4. Grace is directed to “devices for removal of dead skin, callouses and other unsightly buildup of excess skin on the feet, elbows and other areas of the human body and, more particularly, to a manually operated device which painlessly removes such unsightly skin without damaging or unnecessarily abrading good skin” (Grace 11). 5. Grace discloses a “carrier 22 is adapted to be held in the palm of one’s hand, such that the blade body faces away from the palm and is movable against and across the area to be treated while in that position (id. 132j sec also id. 1133-35). 6. Grace identifies that [t]he number and type of products for removal of dead skin is voluminous, ranging from abrasives such as sandpaper, rasps and emery boards ... to blade type devices such as razors, knives and scrapers, which are prominent in the art, and which actually cut away unwanted skin, to pierced metal devices. (Id. 1 5). 7. Grace further discloses [i]n the pierced metal devices, holes are punched into a metal sheet, causing a series of raised, essentially conical, bumps, in which the continuous edge about the opening is the result of the tearing of the metal by the punch, but because of its macroscopic size, serves to remove unwanted skin by abrading or scraping it off. (Id. 1 6). 4 Appeal 2014-006514 Application 12/074,603 8. Grace further discloses that its skin care device which channels away removed epidermal remnants, dirt and bacteria that have been excised from an area of the body being treated, so that there will be no clogging or impairment of the ability of the cutting edge to achieve full contact with the area to be treated and, further, will not deposit grit, or the like, while providing exceptional cleaning characteristics. {Id. 116). 9. Grace also discloses that “the consumer continues to seek out a product which is affordable, yet very safe in its use, and easily cleaned and stored until next used” {id. 114). Yamanaka 10. Yamanaka is “directed to a grater and, more specifically, to a grater for a food item which enables a user to securely hold the grater against a support surface while grating the food item” (Yamanaka 18). 11. In the background of the invention, Yamanaka discloses “different types of utensils or appliances which cut, slice, grind, grate or process food items in a number of different ways” (id. 12). 12. In one example, Yamanaka discloses [a] user holds the grater in one hand and manually slides a food item, such as a block of cheese, on the top surface of the blade to cut or slice the food item into smaller pieces. The smaller food pieces or particles may drop from the bottom surface of the grater into a separate container, such as a bowl. {Id. 13). 13. In another example, Yamanaka discloses that “[ojther graters combine containers and blades into one device,” and 5 Appeal 2014-006514 Application 12/074,603 a user grasps the extended handle in one hand and slides or moves a food item over the blade using the other hand as described above to cut or slice the food item into smaller particles. The cut or sliced particles fall from the bottom surface of the blade into the container. The blade is removed to access the processed food in the container. {Id. 14). 14. Yamanaka identifies, however, deficiencies with these known graters, i.e., “it is difficult to hold the food grater in position using a side- extended handle while sliding or moving the food product along the blade” {id. 1 5) and “conventional container/blade type graters . . . often slip or move during use” {id. 1 6), are overcome by its improved food grater {id. 17). 15. Yamanaka also discloses that its grater 100 enables “[t]he cut, sliced or grated food item falls downwardly into the open-top receptacle 107 defined by the housing 101. The grated food item is stored in the container until a desired amount of the grated food item is in the receptacle” {id. 149). Bocchino 16. Bocchino is directed to a “device for treating corns and callouses” by “scrap [ing] off a part of the dead tissue or to remove the growth entirely” {see Bocchino, col. 1,11. 5—32). 17. Bocchino further discloses that “[t]he cover of Figures 7 and 8 includes a blade holder and a blade, with which the growth under treatment may be entirely removed in an obvious manner” {id. at col. 3,11. 27—29; see also id. at col. 2,11. 63—72). 6 Appeal 2014-006514 Application 12/074,603 Bodum 18. Bodum is a design patent which depicts “[t]he ornamental design for a parmesan grater” (Bodum, Claim). ANALYSIS Independent claim 1 and dependent claims 2, 6, 10, and 16 In rejecting independent claim 1 under § 103(a), the Examiner cites Grace as disclosing substantially all of the limitations of independent claim 1 (see Ans. 2) except the Examiner acknowledges that Grace fails to disclose or suggest “a handle,” as recited by limitation [b] of independent claim 1 (id. at 2—3). The Examiner finds that Yamanaka discloses the “handle” (id.), but acknowledges that “[t]he combination of Grace et al and Yamanaka et al further fails to disclose [that] the [handle’s] end wall curves convexly outward in a direction away from said open end” (id.), and cites Bocchino to address this missing feature (id.). Appellants argue that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Grace, Yamanaka, and Bocchino because “the rejection is based on a combination of features of dissimilar structure and function . . . from non-analogous arts, with no showing of any suggestion of motivation for the combination” (Appeal Br. 15; see also Reply Br. 1—6). However, Appellants’ argument is at least not persuasive because a proper application of the analogous art test is not between applied references. Instead, “[t]he analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In 7 Appeal 2014-006514 Application 12/074,603 re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). Here, we note that Appellants’ Specification states that the claimed “invention relates generally to the field of skin removing files and rasps” (Spec. 13). Grace is directed to “devices for removal of dead skin, callouses and other unsightly buildup of excess skin on the feet” (Grace 11), and as such, is directed to same field of the Appellants’ endeavor. Yamanaka “is directed to a grater and, more specifically, to a grater for a food item which enables a user to securely hold the grater against a support surface while grating the food item” (Yamanaka | 8). Although Yamanaka is not directly related to “to the field of skin removing files and rasps” (Spec. 1 3), we agree with the Examiner that “the ultimate function of both devices[, i.e., Grace, Yamanaka,] is to remove scraped pieces from an item (foot or food item)” (Ans. 6; see also id. at 7—8). We also find that Yamanaka “is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” See Kahn, 441 F.3d at 986—87. Appellants’ Specification identifies that prior art “devices are inconvenient because these devices do not capture the skin once skin removed from the person’s body, but instead allow the skin to fall to the ground thereby requiring the user to clean the entire area where the device was used” (Spec. 14). Thus, Appellants appear to be concerned with “captur[ing] the skin once removed from the person’s body” (id.). Here, although Yamanaka is not concerned with capturing skin, Yamanaka is concerned with capturing “pieces or particles . . . drop[ping] from the bottom surface of [a] grater” (id. 13). And, to address this problem, Yamanaka discloses that its grater, as well as 8 Appeal 2014-006514 Application 12/074,603 graters known in the prior art, “combine containers and blades into one device” {id. H 4, 49). Thus, a skilled artisan seeking to prevent sliced, cut, or grated material from dropping—one of the particular problems dealt with by the instant application—would reasonably look to Yamanaka, which teaches solutions to this same problem, albeit with a different material. We acknowledge, as Appellants point out, that there are “differences in function, dimensions, structure and configuration between a base held stationary on a support surface (Yamanaka et al.) and a handle grasped and moved manually (Grace et al.)” (Reply Br. 2). However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425 (CCPA 1981). Moreover, while Appellants are correct that Yamanaka is directed to a stationary grater, Yamanaka discloses that its design is an improvement and solves problems with hand-held graters in the prior art which “combine containers and blades into one device” (see Yamanaka 14; see also id. 5—7). And to the extent Appellants seek an explicit suggestion or motivation in the references (Appeal Br. 12—15; see also Reply Br. 4—7), this is not the law. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We find that the Examiner has provided an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (see id. (citing Kahn, 441 F.3d at 988)). Here, the Examiner reasons it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Grace et al with a handle configuration for forming a chamber and cooperating 9 Appeal 2014-006514 Application 12/074,603 with the cover to enclose the file as taught by Yamanaka et al to provide a receptacle for catching the cut pieces of skin to be removed later (Yamanaka et al: [0049], i.e. as opposed to letting the pieces of skin drop freely outwardly, making it more difficult for cleanup). (Final Act. 3^4; see also Ans. 3). The Examiner further identifies that “[o]ne of ordinary skill in the art at the time the invention was made would have recognized that ultimately a chamber for collecting the scraped material would have achieved the advantage of assisting the user in moving the scraped material to the desired location” (Ans. 5—6). We also are not persuaded by Appellants’ argument that [t]he Examiner offers another motivation: “to assist in the cleanup.” But the final Office Action does not say where in the cited references, or indeed “in the knowledge generally available to one of ordinary skill in the art,” support for the latter motivation applicable to skin removal is to be found. (Appeal Br. 14—15; see also Reply Br. 3—5). Initially, we note that Appellants’ Specification provides some indication as to “the knowledge generally available to one of ordinary skill in the art.” In this regard, Appellants’ Specification discloses that at least “[o]ne conventional foot file” was known at the time of the invention which “plac[ed] the cutting surface at one end of a hollow chamber and seal[ed] the other end of the chamber with a removable cover such that removed skin will be retained by the chamber” (Spec. 1 6 (emphasis added)). We also note that Grace discloses that “the consumer continues to seek out a product which is affordable, yet very safe in its use, and easily cleaned and stored until next used” {id. 114). Thus, Grace identifies that consumers are conscious of clean-up, and given the predictable nature of this art, we find a person of ordinary skill in the art would have been motivated 10 Appeal 2014-006514 Application 12/074,603 to look to Yamanaka’s disclosure regarding the “combin[ation of] containers and blades into one device” (Yamanaka 4, 49) to achieve the predictable result of “storing the removed skin,” as called for by limitation [b]. See KSR, 550 U.S. at 401 (“[I]f 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 that person’s skill. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Appellants also argue that it would not have been obvious to modify Yamanaka to include the “outward convexity” taught by Bocchino because “[t]he resulting structure must seat stably on a planar support surface under the teaching of Yamanaka” and “[a] convex curvature would cause the grating device to rock on the support surface” (Appeal Br. 16; see also Reply Br. 6—7). However, Appellants’ argument is not persuasive at least because independent claim 1 is rejected as unpatentable over the combination Grace, Yamanaka, and Bocchino, and not over either Grace, Yamanaka, or Bocchino alone. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.”). Here, as the Examiner points out, “the Examiner has not cited Bocchino to modify the Yamanaka et al reference alone;” but rather, “the Examiner is modifying the combination of Grace et al and Yamanaka et al, and not Yamanaka et al alone” (Ans. 8). For these reasons above, we consider that the Examiner to have established a prima facie case of obviousness. 11 Appeal 2014-006514 Application 12/074,603 Secondary Considerations In a response dated February 1, 2010, co-inventor Ajit Kubani submitted a “Declaration Under 37 CFR 1.132” (the “first Dec.”), as evidence of commercial success and copying. In a response dated August 17, 2010, co-inventor Ajit Kubani submitted another “Declaration Under 37 CFR 1.132” (the “second Dec.”), as evidence of commercial success, and more particularly, market share. Based on these declarations, Appellants argue “commercial success has been shown and the evidence of commercial success should be given great weight in determining the non-obviousness and patentability of the appealed claims over the asserted combination of Grace et al., Yamanaka et al. and Bocchino” (Appeal Br. 18; see also Reply Br. 7-8). After carefully evaluating and weighing the evidence relied on by the Examiner and Appellants’ rebuttal evidence in the first and second Kubani declarations, as we must, see In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984), we are not persuaded that the Kubani declarations provide sufficient evidence of copying and commercial success that outweighs the evidence supporting the Examiner’s rejection of claims 1, 2, 6, 7, 10, and 16. The first declaration shows that “[sjince the introduction of the PEDEGG product in 2007, more than 22 million units of the PEDEGG product have been sold in the United States” (first Dec. 14). The first declaration also states “[t]he PEDEGG product has been copied by over 11 competitors” {id. 1 5), and more particularly, states that competitors copied three of the key features of the PEDEGG product which make the PEDEGG product unique, that is: (a) the use of two covers to prevent removed skin from falling out of the device; 12 Appeal 2014-006514 Application 12/074,603 (b) the ergonomic shape of the PEDEGG product including a “domed shape” cover; and (c) the easily grasped sidewalls of the removable cartridge. (Id. | 6). The first declaration provides numerous “reports in the media” which Kubani asserts “confirm that these key features are a significant contributor to the success of the PEDEGG product” (id. 17). The second declaration asserts that “from January 1, 2009 to July 23, 2010, Telebrands market share in the key US grocery, drugstore and specialty store market for foot files was over 70%” (second Dec. 11 (emphasis added)). The second declaration also asserts that “this market share of over 70% exemplifies overwhelming commercial success in the long-established commercial market for foot files” (id. 12). Commercial success is relevant in the obviousness context only if it is established that the sales were a direct result of the unique characteristics of the claimed invention, as opposed to other economic and commercial factors unrelated to the quality of the claimed subject matter. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citing Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985)). We acknowledge that Appellants’ first declaration provides some connection between “key features” found in independent claim 1 and sales of Appellants’ product (see first Dec. Tflf 1,2, 6, 7). We also acknowledge that Appellants provide some indication as to gross sales figures of their product (see id. 14) in the context of a market share (see second Dec. 11). However, an appellant asserting commercial success bears the burden of establishing a factually and legally sufficient connection, i.e., a nexus, between the evidence of commercial success and the claimed subject matter. See In re Huang, 100 F.3d at 139. And, “[a] prima facie case of nexus is 13 Appeal 2014-006514 Application 12/074,603 generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Here, Appellants have provided evidence of sales and market share in the form of testimony from a co-inventor Ajit Kubani, but mere testimony about reported sales is a “fairly minimal” indication of commercial success (see e.g., Cable Elec. Products, 770 F.2d at 1026). Furthermore, Appellants have failed to provide any evidence necessary to determine that the commercial success alleged is directly derived from the invention claimed, as opposed to the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention. In reMageli, 470 F.2d 1380 (CCPA 1973) (conclusory statements or opinions that increased sales were due to the merits of the invention are entitled to little weight). Thus, Appellants’ declarations fail to provide the necessary factually and legally sufficient “nexus” to justify giving weight to the declaration in reaching a conclusion on obviousness. As to evidence of purported competitor copying, Appellants’ first declaration states that “[t]he PEDEGG product has been copied by over 11 competitors including counterfeiters who have produced virtually identical copies of the PEDEGG product” (first Dec. | 5 (referring to Exhibit 2)). Appellants’ declaration further points out that “[i]n addition to the counterfeiters, certain competitors have copied three of the key features of the PEDEGG product which make the PEDEGG product unique” (first Dec. 14 Appeal 2014-006514 Application 12/074,603 1 6). However, Appellants’ declaration fails to provide sufficient detail to determine whether the alleged copies are identical. Here, the evidence submitted is insubstantial evidence of non-obviousness because the Appellants have not adequately shown that the competitors or counterfeiters copied Appellants’ PEDEGG product despite the failure of protracted efforts by the copyists to design a similar device, or that the competitors’ decision to copy was not simply out of a general lack of concern for patent property on the part of the competitor companies. See Cable Electric Prods., 770 F.2d 1028. Thus, Appellants have failed to show a nexus between the claimed invention and alleged copying. Because Appellant’s evidence of secondary considerations fails to establish commercial success and copying, or any other recognized consideration, we conclude that the evidence relied upon by the Examiner outweighs Appellants’ evidence of secondary considerations, and thus, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Grace, Yamanaka, and Bocchino. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2, 6, 10, and 16 which depend from independent claim 1. Dependent claim 7 We are persuaded by Appellants’ argument that the Examiner erred in rejecting claim 7 under 35 U.S.C. § 103(a) because Bodum, on which the Examiner relies, fails to disclose or suggest “a rim raised on the cover above the abrasive surface such that the abrasive surface will not contact a storage surface when the cover is placed on the storage surface,” as recited in claim 7 (Appeal Br. 20-22; see also Reply Br. 9-11). 15 Appeal 2014-006514 Application 12/074,603 The Examiner cites Figure 1 of Bodum as disclosing the claimed subject matter (see Final Act. 5; see also Ans. 4—5, 10-11). However, we agree with Appellants that “the ‘rim’ feature of Bodum on which the Examiner relies is not on a cover at all, let alone on the outer side of a cover, but is instead a part of the grater body and is arranged to engage the inner side of the cover” (Reply Br. 10; see also Appeal Br. 22). Thus, Bodum fails to disclose or suggest “a rim raised on the cover above the abrasive surface,” as required by claim 7. Accordingly, we do not sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 1, 2, 6, 10, and 16 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation