The Gillette CompanyDownload PDFPatent Trials and Appeals BoardMay 1, 20202019006110 (P.T.A.B. May. 1, 2020) 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. 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. Appeal 2019-006110 Application 15/086,336 2 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. Appeal 2019-006110 Application 15/086,336 3 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). Appeal 2019-006110 Application 15/086,336 4 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 Appeal 2019-006110 Application 15/086,336 5 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 Appeal 2019-006110 Application 15/086,336 6 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. Appeal 2019-006110 Application 15/086,336 7 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 Appeal 2019-006110 Application 15/086,336 8 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 Copy with citationCopy as parenthetical citation