Ex Parte Quigley et al

Patent Trial and Appeal Board

Mar 21, 2016

13331397 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/331,397 12/20/2011
27752 7590 03/23/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Steven Francis Quigley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Z-8543M 1240
EXAMINER
DA VIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN FRANCIS QUIGLEY and CHANDRASEN GAJRIA
Appeal2014-005990
Application 13/331,397
Technology Center 3700
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Ajbani3 and Kobe. 4 We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Nov. 12,
2013), and the Examiner's Answer ("Ans.," mailed Feb. 12, 2014).
2 Appellants identify the real party in interest as "The Gillette Company of
Boston, MA." Br. 1.
3 Ajbani et al., US 2006/0052535 Al, published March 9, 2006.
4 Kobe et al., US 6,610,382 Bl, issued August 26, 2003.
Appeal2014-005990
Application 13/331,397
"The invention generally relates to materials for hair removal devices,
more particularly to materials for hair removal devices that have a high
coefficient of friction when wet and low tack when dry." Spec. 1:8-10.
Independent claim 1 is representative of the subject matter on appeal.
1. A hair removal device comprising:
a thermoplastic elastomer disposed on a portion of the
hair removal device, said thermoplastic elastomer having a
coefficient of friction from about 2.0 to about 3.5 when wet
with water and a Shore A hardness from about 25 to about 50;
and
one or more projections extending from the thermoplastic
elastomer,
wherein the thermoplastic elastomer is polar and
hydrophilic.
Br. 5, Claims Appendix.
DISCUSSION
Obviousness over Ajbani and Kobe
As an initial matter, we note that independent claims 1 and 8 recite
substantially similar subject matter. Appellants argue claims 1 and 8 as a
group. Br. 2. We select claim 1 as being representative, and thus, claim 8
stands or falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Appellants contend that the combination of Ajbani and Kobe does not
establish a prima facie case of obviousness with respect to claim 1. Br. 3. In
particular, Appellants argue:
The Office Action relies on column 5, lines 43-51 for the alleged
teaching that the thermoplastic elastomer is hydrophilic. Kobe
teaches that the elastomeric stems are made of the elastomeric
material. (Col. 5, lines 26-30). Kobe also teaches that the stems
themselves are hydrophobic. (Col. 5, lines 51-56). Kobe also
teaches that the stems may have a hydrophilic area on them. (Col.
2
Appeal2014-005990
Application 13/331,397
Id.
5, lines 49-51). Kobe does not teach that the stem material itself
is hydrophilic. The clear teaching of Kobe is that the stems are
hydrophobic and not hydrophilic as suggested by the Office
Action.
The Examiner responds:
However, the Appellant is not actually claiming "the stems
are hydrophilic." Instead, the Appellant is claiming "a
thermoplastic elastomer disposed on a portion of the hair
removal device, ... , and one or more projections extending from
the thermoplastic elastomer, wherein the thermoplastic elastomer
is polar and hydrophilic" (claim 1, lines 2 & 5---6). The Appellant
is not specifically claiming the portion of the thermoplastic
elastomer that makes the projections is polar and hydrophilic .
. . . Kobe states "a backing layer 53' may provide structural
stability, hydrophobic/hydrophilic properties or a variety of other
functions" (col 5, lines 30-34). The backing layer is part of the
thermoplastic elastomer used to make the handle. If it has
hydrophilic properties then it must be made of, have a portion
made of, or be treated to become a hydrophilic material.
Ans. 7.
We agree with the Examiner that Appellants' argument is not
commensurate with the language of claim 1, because Appellants are
essentially arguing a limitation not recited in the claim, i.e. that the claimed
projections are hydrophilic. "[A] claim construction analysis must begin and
remain centered on the claim language itself. "5 Claim 1 requires, in part, "a
thermoplastic elastomer disposed on a portion of the hair removal
device ... wherein the thermoplastic elastomer is polar and hydrophilic."
5 Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
1111, 1116 (Fed. Cir. 2004).
3
Appeal2014-005990
Application 13/331,397
Kobe relates to an improved friction control or gripping surface with high
frictional properties and good gripping performance in both wet and dry
conditions. Kobe 1 :47-50. Kobe's "friction or slip control surface may
include micro-channels, an absorbent layer and hydrophilic/hydrophobic
regions all for directing fluids away from the upstanding stems, leaving them
dry and providing high frictional performance even in wet conditions." Id.
at 1 :58-62. As the Examiner finds, the backing layer may provide
hydrophilic properties. See supra. We note that Kobe also teaches that
"[ c ]onstructing the backing layer from hydrophilic material assists in
directing the water 60 away from the tips 62." Kobe 5:65---67. Claim 1 does
not require that the "one or more projections extending from the
thermoplastic elastomer" be made of hydrophilic material, but rather, that
"the thermoplastic elastomer is polar and hydrophilic." Therefore, we are
not persuaded by Appellants' arguments because limitations not appearing in
the claim cannot be relied upon for patentability.
Accordingly, we sustain the rejection of independent claim 1, and
independent claim 8, which falls with claim 1. Appellants do not separately
argue the rejection of dependent claims 2-7 and 9-15, but rather rely on
arguments presented with respect to claims 1 and 8. See Br. 4. As such, we
sustain the rejection of claims 2-7 and 9-15 for the reasons set forth above.
DECISION
The decision to reject claims 1-15 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
4