The Gillette Company

Patent Trials and Appeals Board

May 1, 2020

15086336 - (D) (P.T.A.B. May. 1, 2020)

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.
15/086,336 03/31/2016 John Madeira Z-4893D 3800
27752 7590 05/01/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
05/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN MADEIRA and NEVILLE SONNENBERG
__________

Appeal 2019-006110
Application 15/086,336
Technology Center 3700
____________

Before HUBERT C. LORIN, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “The Gillette
Company.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to coating components, and more
particularly to improved coatings on razor components, such as razor blades.”
Spec. 1:4–5. Claims 1 and 15, reproduced below, are the only independent
claims on appeal.
1. A razor blade comprising a first coating of a first material
and a second coating of a second material, at least one of
said first and second coatings deposited using an atomic
layer deposition (ALD) process wherein said second
coating is deposited on a top surface of said first coating.

15. A razor component comprising at least one coating of at
least one layer of one or more materials formed using an
atomic layer deposition (ALD) process.

Appeal Br., Claims App. (emphasis added).

REFERENCES
The prior art relied upon by the Examiner:
Name Reference Date
Goel et al. (“Goel”) US 5,795,648 Aug. 18, 1998
Teeuw et al. (“Teeuw”) US 2004/0177516 A1 Sept. 16, 2004
Yamada et al.
(“Yamada”)
US 7,060,367 B2 June 13, 2006

REJECTIONS
Claims 1–8, 11, 14–18, and 20 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Teeuw. Ans. 3.
Claims 1, 9, 10, 15, and 19 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Goel. Id. at 7.
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Claims 1, 12, and 13 are rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Yamada. Id. at 9.
OPINION
We are persuaded the Examiner has not established that product-by-
process claims 1 and 15 are anticipated by or, in the alternative, obvious
over Teeuw, Goel, or Yamada. We agree that the Examiner “erred in the
rejections herein because the structure implied by the process steps was not
considered when assessing the patentability of product-by-process claims
over the prior art.” Appeal Br. 4.
“In determining validity of a product-by-process claim, the focus is on
the product and not on the process of making it.” Amgen Inc. v. F. Hoff
mania Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009). “That is because
of the . . . long-standing rule that an old product is not patentable even if it is
made by a new process.” Id. at 1370. There is, however, “an exception to
this general rule that the process by which the product is made is irrelevant.”
Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). If
the process by which a product is made imparts “structural and functional
differences” distinguishing the claimed product from the prior art, those
differences are relevant, even if not explicitly part of the claim. Id. (citing
Amgen, 580 F.3d at 1370). Where a process limitation in a product claim is
capable of construction as a structural limitation, the correct inquiry is
whether the product defined by the claim is patentably distinguished over the
prior art in view of that structural limitation. See In re Garnero, 412 F.2d
276, 279 (CCPA 1969).

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In rejecting claims 1 and 15 as anticipated by or, in the alternative,
obvious over Teeuw, Goel, or Yamada, the Examiner acknowledges that
none of these references disclose or suggest depositing a coating using an
ALD process, as claimed. To cure this deficiency, the Examiner relies on
the Federal Circuit decision In re Thorpe, 777 F.2d 695, 698 (Fed. Cir.
1985), which held that “[t]he patentability of a product does not depend on
its method of production. If the product in the product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” Ans. 11; see also Final Act. 3, 6, 7. The Examiner reasons:
From In re Thorpe, it is understood that product of the
coating is not defined by the process of how it is formed or its
method of production. Therefore the limitations that set forth
that the coatings were applied via an ALD process have no
relevance on the structure of the coating(s) as claimed and do
not define over and are anticipated by the prior art.
Ans. 11. However, this reasoning misapplies the holding in Thorpe by
failing to first consider if the product in product-by-process claims 1 and 15
is the same as or obvious from the product of Teeuw, Goel, or Yamada,
before concluding the claims are unpatentable even though each prior art
product was made by a different process.
Appellant argues structure should be considered, especially where the
manufacturing process steps would be expected to impart distinctive
structural characteristics to the final product; “[t]hose of skill in the art
readily understand that a coating on a product produced by CVD or PVD on
the one hand and a coating produced by ALD on the other hand are quite
dissimilar” because “[t]he final coating on a product produced by ALD
would be different in morphological structure and characteristics.” Appeal
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Br. 4 (citing Spec. 5:28–32). “For instance, in the present invention, every
layer is deposited as a single monolayer and unique multi-layered structures
are deposited one atomic layer at a time.” Id. at 8. According to Appellant,
the “distinctive structural characteristics provided by ALD on a razor
coating are nowhere found in the prior art.” Id. at 12.
The Examiner dismisses this argument and contends “Appellant has
provided no evidence of these differences, other than a generic statement of
assertion that they are present and that one of ordinary skill looking under a
microscope would be able to ascertain them.” Ans. 13. As a result, the
Examiner declines to accord “using an ALD process” any patentable weight
after concluding that Appellant failed to provide evidence of the structural
differences imparted by “using an ALD process.” In doing so, the Examiner
first prematurely presumed “using an ALD process” to be a process
limitation in a product-by-process claim, then required Appellant to rebut its
presumption by providing evidence of the specific structural limitation
provided by “using an ALD process.”
Contrary to the Examiner’s contention, we find the structural nature of
“using an ALD process” can be gleaned from Appellant’s Specification. In
the Background Section of the Specification, Appellant indicates “uniformly
coating razor blade edges has become challenging in the prior art. With an
angle of incidence oftentimes being small (e.g., 15 degrees or less), even
with an applied high bias, the prior art coatings on blade edges are generally
still columnar with low density having compromised mechanical properties
and film roughness.” Spec. 2:12–15. According to Appellant, “there is a
need to better develop the process of coating razor blades to improve the
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quality (e.g., uniformity and denseness) and coverage of the coating while
maintaining shave-ability.” Id. 3:11–12.
Appellant solves this problem by using an ALD coating process and
describes the “many advantages of applying the ALD process or the ALD
process with etching (ALD/etch) to razor blade substrates over prior art
processes.” Spec. 15:21–24.
One key advantage of ALD is that it is generally possible
to coat an exposed surface of a substrate uniformly, a single
atomic layer at a time, and since it is not a “line-of-sight”
technique as the prior art PVD process, ALD is capable of
coating surfaces regardless of their shape(s), structure or
position. Thus, when the ALD process is used for coating razor
blades, the entire bevel of the blade flank and any exposed
portions of the blade body may be uniformly coated one
monolayer at a time. Since it deposits or produces one
monolayer at a time, coatings or films with optimum density
may be achieved. It is generally known that denser films or
coatings are advantageous because they are less apt to corrode
and have better wear-resistance.
Id. 6:12–19; id. 16:1–4 (“A further advantage is that the resulting
coating is dense, both because it is applied using an atomic layering
process, which requires the deposition of one monolayer at a time, and
because each subsequent atomic layer is nested or closely packed with
the previous atomic layer, providing a coating with substantially zero
porosity.”). Thus, at a minimum the Specification demonstrates that
“using an ALD process” imparts distinctive structural characteristics
to a razor blade (component) with a coating having a conformal nature
thereby allowing the entire blade surface to be uniformly and densely
coated, which produces a stronger and harder coating.
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The preponderance of the evidence supports Appellant’s position that
the Examiner erred by failing to consider the structure implied by “using an
ALD process” when assessing the patentability of claims 1 and 15 over the
prior art. In failing to do so, the Examiner failed to establish that the coated
prior art product in Teeuw, Goel, or Yamada and the product of claims 1 and
15 are the same. As such, the Examiner failed to establish a prima facie case
of anticipation by Teeuw, Goel, or Yamada. Therefore, we do not sustain
the Examiner’s anticipation rejections.
We also do not sustain the new grounds of rejection issued in the
alternative under 35 U.S.C. § 103(a) over Teeuw, Goel, or Yamada (see
Ans. 3–10) because “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
find the Examiner’s rationale to modify the teachings of each reference, if
provided, is predicated upon a conclusory statement that lacks articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. In each obviousness rejection, the Examiner acknowledges
that the cited reference does not teach “using an ALD process,” but the
Examiner fails to adequately support why an artisan would be motivated to
modify its coating process to the claimed ALD process. For example, the
Examiner fails to provide a reasoned rationale in rejecting the claims as
obvious over Teeuw or Goel. See Ans. 4, 8. For the rejection over Yamada,
the Examiner states “it would have been prima facie obvious at the time of
the invention was made to have tried an alternative coating application
process” (Ans. 10) as claimed; yet, there is no evidence that any of the
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coating processes mentioned in Yamada are similar or the same as the
claimed ALD process. Absent hindsight, we fail to see why one of ordinary
skill in the art would have been led by the teachings of Teeuw, Goel, or
Yamada to modify their coating method in the manner claimed.

CONCLUSION
The rejections under 35 U.S.C. § 102(b) are reversed.
The rejections under 35 U.S.C. § 103(a) are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 11, 14–
18, 20
102(b) Teeuw 1–8, 11, 14–
18, 20
1, 9, 10, 15,
19
102(b) Goel 1, 9, 10, 15,
19
1, 12, 13 102(b) Yamada 1, 12, 13
1–8, 11, 14–
18, 20
103(a) Teeuw 1–8, 11, 14–
18, 20
1, 9, 10, 15,
19
103(a) Goel 1, 9, 10, 15,
19
1, 12, 13 103(a) Yamada 1, 12, 13
Overall
Outcome
1–20

REVERSED