Ex Parte Zhuk et al

Board of Patent Appeals and Interferences

Feb 27, 2012

11231218 (B.P.A.I. Feb. 27, 2012)

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.
11/231,218 09/19/2005 Andrew Zhuk 8122/Z-03426 5484
27752 7590 02/27/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
PAYER, HWEI SIU CHOU
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
02/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW ZHUK and NEVILLE SONNENBERG
____________

Appeal 2009-014563
Application 11/231,218
Technology Center 3700
____________

Before GAY ANN SPAHN, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andrew Zhuk and Neville Sonnenberg (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 11, 16,
19-22, 24-26, and 29-32. Appellants cancelled claims 2-10, 12-15, 17, 18,
23, 27, 28, and 33-43. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-014563
Application 11/231,218

2
The Claimed Subject Matter
The claimed subject matter is directed to a razor blade and a razor
including a razor blade. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A razor blade comprising;
a first surface comprising a body and a blade edge;
a second surface, wherein the first surface and the
second surface meet at a tip, and wherein a portion
of the blade edge of the first surface is coated by a
discontinuous polymer film, said discontinuous
polymer film is in the form of an array of bumps,
circles, polygons or ellipses; and further
comprising a coating between the blade edge and
the discontinuous polymer film.

Br. 10.

The Rejections
The following Examiner’s rejections are before us for review.
1. Claims 1, 11, 16, 19, 21, 22, and 25 are rejected under 35
U.S.C. § 103(a) as unpatentable over Hensel (US 2,703,451, issued Mar. 8,
1955), Denes (US 3,802,078, issued Apr. 9. 1974), and Doroodian-Shoja
Siamak (US 5,388,331, issued Feb. 14, 1995). Ans. 4-5.
2. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hensel, Denes, Doroodian-Shoja Siamak, and Hahn (US 5,048,191,
issued Sep. 17, 1991). Ans. 5-6.
3. Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hensel, Denes, Doroodian-Shoja Siamak, and Clipstone
(US 6,684,513 B1, issued Feb. 3, 2004). Ans. 6.
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Application 11/231,218

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4. Claims 29-31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hensel, Denes, Doroodian-Shoja Siamak, and
Hulverscheidt (US 2,741,839, Apr. 17, 1956). Ans. 6-7.
5. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hensel, Denes, Doroodian-Shoja Siamak, Hulverscheidt, and Pelizzola
(US 1,920,711, issued Aug. 1, 1933). Ans. 7-8.

OPINION
Obviousness based on Hensel, Denes, and Doroodian-Shoja Siamak
Appellants argue claims 1, 11, 16, 19, 21, 22, and 25 as a group. See
Br. 3-6. We select independent claim 1 as the representative claim, and
claims 11, 16, 19, 21, 22, and 25 stand or fall with claim 1. See 37 C.F.R.
§41.37(c)(1)(vii) (2011).
The Examiner finds that Hensel discloses the subject matter of
independent claim 1 substantially as claimed, “except [that] the razor blade
lacks a coating between the blade edge (12a) and the discontinuous film
(13a, 13b), and the material of the discontinuous wear-indicator film is not
of the claimed type.” Ans. 4. The Examiner also finds that Denes discloses
“a razor blade (10) having a metal base (11) and a hard coating (12)
comprising chromium (see column 3, line 4) over the metal base (11)” and
Doroodian-Shoja Siamak discloses “the use of polymer film such as PTFE
(i.e.[,] polytetrafluoroethylene, see column 4, lines 3-7) as a blade wear-
indicator film.” Ans. 4, 5.
Appellants contend that since Hensel’s wear-indicator strips have
coatings that are worn off or removed after the first and second shaves as
disclosed at column 4, lines 61-65, Hensel “appears to run counter to
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Appellant[s’] purpose of providing a way to manage skin bulge as the blade
passes over the skin of a user and [improving] glide over the skin of the
user.” Br. 4, 5. We disagree. First, we note that managing skin bulge and
improving glide are not recited in the claims. Second, even if Hensel’s
wear-indicator strip 13a is worn off or removed after the first and second
shaves as suggested by Appellants, Appellants’ purpose of managing skin
bulge and improving glide would not be defeated prior to the time that the
coatings are worn off or removed from the blade. Thus, we are not
persuaded that Hensel runs counter to Appellants’ purpose.
Appellants also contend that Hensel teaches two different types of
coatings 13a and 13b and thus, teaches away from providing one type of
coating in instant claim 1 wherein it states “a first surface coated by a . . .
film.” Br. 4. We disagree. Appellants’ contention is not commensurate
with the scope of claim 1 because claim 1’s recitation that “the first surface
is coated by a discontinuous polymer film” does not require that the polymer
film be only one type of coating. This is particularly true in view of
independent claim 1’s use of the open-ended transitional term “comprising”
which does not preclude the use of multiple coating types. In addition,
Hensel does not teach away from providing one type of coating because in
order to teach away, a reference must “criticize, discredit, or otherwise
discourage the solution claimed.” See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). As Appellants do not identify any disclosure in Hensel that
criticizes, discredits, or otherwise discourages from the claimed solution of
providing a first surface of the blade edge with a discontinuous film in the
form of an array of bumps, circles, polygons or ellipses, we are not
persuaded that Hensel teaches away.
Appeal 2009-014563
Application 11/231,218

5
Appellants also contend that Denes and Doroodian-Shoja Siamak fail
to provide the elements which the Examiner acknowledges are missing from
Hensel because: (1) Doroodian-Shoja Siamak’s polymer film is not located
on the blades; and(2) both Doroodian-Shoja Siamak and Denes fail to teach
or suggest “a portion of the first surface coated by a discontinuous polymer
film . . . in the form of an array of bumps, circles, polygons or ellipses . . .
and a coating between the blade edge and the discontinuous polymer film.”
Br. 4, 5. We disagree. With respect to Doroodian-Shoja Siamak’s polymer
film not being on the blade, the Examiner’s modification of Hensel by the
teachings of Doroodian-Shoja Siamak simply substitutes the polymer
material of Doroodian-Shoja Siamak’s wear indicator strips for the material
of Hensel’s wear-indicator strips. The location of Hensel’s discontinuous
wear-indicator films on the blade edges is not being modified. With respect
to Doroodian-Shoja Siamak and Denes’ alleged failure to teach or suggest
claim 1’s above-quoted language, we note that Appellants appear to be
arguing the references individually and not addressing the Examiner’s
combination of the references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot
show nonobviousness by attacking references individually where the
rejections are based on a combination of references). Indeed, the
Examiner’s modification of Hensel by the teachings of Denes results in the
blade have a coating located between the blade edge and the discontinuous
film and by the teachings of Doroodian-Shoja Siamak results in the wear-
indicator strip located on the blade edge be comprised of a polymer material.
Thus, the combined teachings of Hensel, Denes, and Doroodian-Shoja
Siamak disclose the subject matter of claim 1.
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Application 11/231,218

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Appellants also contend that Doroodian-Shoja Siamak’s polymer film
would not easily adhere to Hensel’s blade metal and thus, the Examiner’s
combination is not a predictable variation. We disagree. Whether
Doroodian-Shoja Siamak’s polymer film would adhere “easily” to Hensel’s
metal blade is not determinative, because if Doroodian-Shoja Siamak’s
polymer film adheres at all to Hensel’s metal blade, claim 1’s language is
met. Here, the Examiner’s proposed modification of Hensel by the
teachings of Denes and Doroodian-Shoja Siamak has the metal of Hensel’s
blade being coated by a chromium metal or alloy so that the polymer film
would be adhered to the chromium metal or alloy coating, not the metal of
Hensel’s blade. One of ordinary skill in the art would be aware that
chromium or chromium alloys are compatible with polytetrafluoroethylene.
In addition, Appellants’ Specification discloses that the coating may be
made of chromium (Spec. 2) and the discontinuous polymer film may be
made of polytetrafluoroethylene (Spec. 4). Finally, Appellants have failed to
present any evidence that the modification of Hensel by Doroodian-Shoja
Siamak’s teaching of a polymer film would not be a predictable variation.
Appellants also contend that there is no suggestion or teaching in
either Hensel or Doroodian-Shoja Siamak “pointing to the need for another
coating at the strip location other than coatings 13a, 13b, nor for another
coating in between blade edge and film.” Br. 5. We disagree. First,
Appellants’ reference to “another coating in between blade edge and film” is
not the Examiner’s proposed modification. Second, the rigid application of
a “teaching, suggestion, motivation” test for nonobviousness is incompatible
with Supreme Court precedent. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007). The Examiner thus need not establish the existence of a
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teaching, suggestion, and motivation in combining teachings from prior art
references. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to modify Hensel “by using a well-known and commercially
available polymer coating film such as Doroodian-Shoja Siamak’s
polytetrafluoroethylene for the wear-indicator film (13a, 13b) of Hensel.”
Ans. 5. The modifications proposed by the Examiner are nothing more than
the simple substitution of one known element for another to perform the
same function. See KSR at 416. Thus, we are not persuaded by Appellants’
contention that the Examiner failed to support the legal conclusion of
obviousness.
Appellants also contend that the Examiner’s combination of Hensel,
Denes, and Doroodian-Shoja Siamak is a hindsight reconstruction. Br. 5.
We disagree. In order to establish a prima facie case of obviousness, an
examiner must undertake the factual inquiries listed in Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). In addition, the examiner must
articulate some “reasoning with some rational underpinning to support the
legal conclusion of obviousness.” See Kahn at 988. This reasoning must
show that “there was an apparent reason to combine the known elements in
the fashion claimed.” See KSR at 418. Here, the Examiner has articulated a
reason with some rational underpinning for modifying Hensel by the hard
chromium coating of Denes (i.e., “to improve the strength and corrosion
resistance of the blade”) and the modification of Hensel by the teachings of
Doroodian-Shoja Siamak is a simple substitution of one known wear-
indicator strip material for another. Accordingly, we are not persuaded of
hindsight.
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Appellants also contend that none of cited prior art teaches or suggests
the placement of a polymer film on a blade edge so that Appellants’
invention is contrary to accepted wisdom and is thus, non-obvious. Br. 5.
We disagree. Hensel teaches the placement of a film or wear-indicator strip
on a blade edge. See Hensel, Figs 1 and 4. The Examiner’s modification of
Hensel simply substitutes the polymer material of Doroodian-Shoja
Siamak’s wear-indicator strip for the material of the wear-indicator strip
located on the blade edge of Hensel. As such, we are not persuaded that
Appellants’ invention is contrary to accepted wisdom and is non-obvious.
Obviousness based on
Hensel, Denes, Doroodian-Shoja Siamak, and Hahn

Appellants set forth a separate heading for the rejection of claim 20,
but rely on the same unpersuasive arguments as set forth for independent
claim 1. For the reasons discussed supra, we sustain the Examiner’s
rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Hensel,
Denes, Doroodian-Shoja Siamak, and Hahn.
Obviousness based on
Hensel, Denes, Doroodian-Shoja Siamak, and Clipstone

Appellants set forth a separate heading for the rejection of claims 24
and 26, but rely on the same unpersuasive arguments as set forth for
independent claim 1. For the reasons discussed supra, we sustain the
Examiner’s rejection of claims 24 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Hensel, Denes, Doroodian-Shoja Siamak, and Clipstone.

Appeal 2009-014563
Application 11/231,218

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Obviousness based on
Hensel, Denes, Doroodian-Shoja Siamak, and Hulverscheidt

Independent claim 29 is directed to a razor including, inter alia, a
blade having the same subject matter as recited in independent claim 1
supra. Br. 11. Appellants set forth a separate heading for the rejection of
claims 29-31, but rely on the same unpersuasive arguments as set forth for
independent claim 1. For the reasons discussed supra, we sustain the
Examiner’s rejection of claims 29-31 under 35 U.S.C. § 103(a) as
unpatentable over Hensel, Denes, Doroodian-Shoja Siamak, and
Hulverscheidt.
Obviousness based on
Hensel, Denes, Doroodian-Shoja Siamak, Hulverscheidt, and Pelizzola

Appellants set forth a separate heading for the rejection of claim 32,
but rely on the same unpersuasive arguments as set forth for independent
claim 1. For the reasons discussed supra, we sustain the Examiner’s
rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Hensel,
Denes, Doroodian-Shoja Siamak, Hulverscheidt, and Pelizzola.

DECISION
We affirm the Examiner’s rejections of claims 1, 11, 16, 19-22, 24-26,
and 29-32.
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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