Ex Parte Wain et alDownload PDFPatent Trial and Appeal BoardMay 23, 201713006816 (P.T.A.B. May. 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. 13/006,816 01/14/2011 Kevin James Wain Z-8504 5345 27752 7590 05/25/2017 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER PAYER, HWEI-SIU C ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 05/25/2017 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 KEVIN JAMES WAIN, LEE BURRO WES, and BARRY KEITH ROCKELL1 Appeal 2015-003505 Application 13/006,816 Technology Center 3700 Before JAMES P. CALVE, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kevin James Wain et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is The Procter & Gamble Company. Appeal Br. 1 (filed May 19, 2014). Appeal 2015-003505 Application 13/006,816 CLAIMED SUBJECT MATTER The invention concerns “hair removal devices having mechanisms for providing one or more flowable shaving aid materials.” Spec. 1:5—6. Claim 1, the sole independent claim, is illustrative of the subject matter on appeal, and recites: 1. A liquid dispensing unit for a hair removal device comprising: a reservoir containing a liquid; an applicator in liquid communication with the reservoir; first and second connectors in liquid communication with the reservoir, the first and second connectors each having a respective one of first and second valves; a resilient tube having an outer surface, the resilient tube disposed between the first and second connectors; and an actuator aligned with the resilient tube, the actuator having an inner surface contacting the outer surface of the resilient tube, wherein the resilient tube has a neutral position with both valves closed and a second position with one valve open and one valve closed, wherein the first valve opens and the second valve is closed upon depressing the actuator radially to compress the resilient tube and the second valve opens and the first valve is closed upon releasing the actuator to allow the resilient tube to return to a non[-]compressed state. Appeal Br. 10 (Claims App.). 2 Appeal 2015-003505 Application 13/006,816 REJECTIONS The claims stand rejected as follows: I. Claims 1, 5/1,2 6/1, 7/1, 9/1, and 10/1 under 35 U.S.C. § 103(a) as unpatentable over Mock (US 5,168,628, iss. Dec. 8, 1992) and Sugahara (US 2009/0318883 Al, pub. Dec. 24, 2009). II. Claims 1 and 10/1 under 35 U.S.C. § 103(a) as unpatentable over Mock and Hammett (US 4,222,501, iss. Sept. 16, 1980). III. Claims 2, 6/2/1, and 10/2/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, and Jauch (US 2,772,817, iss. Dec. 4, 1956). IV. Claims 3, 4/1, 4/3/1, 6/3/1, 9/1, 9/3/1, and 10/3/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, and Hofte (US 7,172,099 B2, iss. Feb. 6, 2007). V. Claims 4/2/1 and 9/2/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, Jauch, and Hofte. VI. Claim 5/2/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, Jauch, and Sugahara. VII. Claim 5/3/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, Hofte, and Sugahara. 2 Claims 4—7, 9, and 10 are written in multiple dependent form, wherein each claim depends, alternatively, from claim 1, 2, or 3. Appeal Br. 10—11 (Claims App.). We reproduce the Examiner’s identification of the claims subject to each rejection, for which the designation of “claim 5/1,” for example, refers to claim 5 when it depends from claim 1. 3 Appeal 2015-003505 Application 13/006,816 VIII. Claims 7/1 and 8/7/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, and Freund (US 6,685,691 Bl, iss. Feb. 3, 2004). IX. Claims 7/2/1 and 8/7/2/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, Jauch, and Freund. X. Claims 7/3/1 and 8/7/3/1 under 35 U.S.C. § 103(a) as unpatentable over Mock, Hammett, Hofte, and Freund. ANALYSIS Rejection I— Obviousness over Mock and Sugahara The Examiner finds that Mock discloses a liquid dispensing unit substantially as required by claim 1, comprising tube 44 and actuator 5. Final Act. 3 (mailed Dec. 18, 2013). The Examiner finds that “Mock’s actuator (5) is resilient rather than the tube (44).” Id. The Examiner finds that Sugahara teaches a dispensing unit with resilient tube 6 and actuator 7, wherein the actuator is more rigid than the tube. Id. at 3^4; Ans. 3 (mailed Aug. 1, 2014). According to the Examiner, “it would have been obvious to one skilled in the art to modify Mock’s dispensing unit by having tube (44) formed of a resilient material and the actuator (5) of a more rigid material to achieve the predictable result of dispensing as taught by Sugahara.” Ans. 4; Final Act. 4. Appellants contend that “replacing the miniature pump in Mock with the flexible tube described in Sugahara would not provide all the necessary functions required of the miniature pump” because Mock’s pump also serves as a handle. Appeal Br. 4. Therefore, according to Appellants, “[Replacing the miniature pump in Mock with the flexible tube disclosed in Sugahara 4 Appeal 2015-003505 Application 13/006,816 would result in a miniature pump having too little stability to function as a handle.” Id. at 5. Appellants also contend that the Examiner fails to articulate a sufficient reason why a person of ordinary skill in the art would have made the proposed combination, arguing that “the fact that Mock and Sugahara both concern miniature pumps is not itself sufficient rationale for making the combination.” Id. The Examiner responds that “it is Mack’s inner tube (44) not the handle (4.1) that is to be modified by using a flexible/resilient material,” which “would not affect the rigidity/stability of the handle (4.1) to function as desired.” Ans. 14. Mock’s Figure 4a is reproduced below. Figure 4a presents a side elevation view of “the pump, reservoir and handle structure” of Mock’s device. Mock, 3:44-45. Mock explains that the device includes “a small or miniature pump 5 and a reservoir 6, which together 5 Appeal 2015-003505 Application 13/006,816 form the handle 4 of the applicator.” Id. at 8:4—8, Fig. 4a. Mock explains that “[t]he main components of the miniature pump are a bellows 41, whose internal volume can be reduced, as one-way valve 42, which functions as the outlet [valve] for the reservoir 6 and a second one-way valve 43, which functions as the inlet valve in the applicator.” Id. at 8:19—24. Mock explains that because bellows 41 “has too little stability” to function as a handle, it “is fitted [with] an internal pump body 44, which in the embodiment shown is shaped like a tube, [and] is fixed to the handle reservoir part 4.1 and is connected to the connecting part 4.3.” Id. at 8:44— 49. We agree with Appellants that the Examiner has not explained sufficiently why a person of ordinary skill in the art would have been motivated to modify Mock such that tube 44 would be resilient, while actuator 5 would be more rigid. Ans. 4, 14. The Examiner has not explained how a modified, more rigid actuator 5 would be capable of compressing modified resilient tube 44, as claimed. For example, the actuator disclosed by Sugahara includes pressing members 7 that contact the resilient tube, such that it is capable of being compressed. Sugahara ^fl[ 87— 89. The Examiner’s modification of Mock, however, does not purport to modify Mock’s actuator 5 to include any such structure that would contact the modified, resilient tube 44. See Final Act. 3^4 (modifying only the material of Mock’s tube and actuator); Ans. 3^4 (same). As such, the Examiner’s modification of Mock in view of Sugahara appears to result in an inoperative device. 6 Appeal 2015-003505 Application 13/006,816 Accordingly, we do not sustain the Examiner’s rejection of claim 1, or claims 5/1, 6/1, 7/1, 9/1, and 10/1, which depend from claim 1. Rejection II— Obviousness over Mock and Hammett With respect to this rejection, Appellants present the same arguments as discussed above regarding Rejection I. Appeal Br. 5—6. For the same reasons discussed above, we find these arguments persuasive. See Final Act. 5—6; Ans.5—6, 14. The Examiner’s reliance on Hammett in lieu of Sugahara does not cure the defects discussed above. Accordingly, we do not sustain the Examiner’s rejection of claims 1 and 10/1. Rejections III—X With respect to Rejections III—X, Appellants rely on the arguments presented regarding Rejection II. Appeal Br. 6—8. For the same reasons discussed above, we find these arguments persuasive. The Examiner’s further reliance on Jauch, Hofte, and Freund does not cure the defects discussed above. Accordingly, we do not sustain the Examiner’s rejection of claims 2, 3, 4/1, 4/2/1, 4/3/1, 5/2/1, 5/3/1, 6/2/1, 6/3/1, 7/1, 7/2/1, 7/3/1, 8/7/1, 8/7/2/1, 8/7/3/1, 9/1, 9/2/1, 9/3/1, 10/2/1, and 10/3/1. DECISION The Examiner’s decision to reject claims 1—10 is REVERSED. REVERSED 7 Copy with citationCopy as parenthetical citation