Ex Parte Bykowski et al

Patent Trial and Appeal Board

Aug 11, 2016

13354812 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/354,812 01/20/2012
20875 7590 08/15/2016
Robert F Rosasco, III
Edgewell Personal Care Brands, LLC
6 Research Drive
Shelton, CT 06484
FIRST NAMED INVENTOR
Henryk Bykowski
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.
SWS-0681-2 4344
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
patents@edgewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRYK BYKOWSKI, STEPHAN FISCHER, and
JOCHEN THOENE
Appeal2014-007603
Application 13/354,812
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007603
Application 13/354,812
THE INVENTION
Appellants' invention relates to razor blades. Spec. i-f 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of making a razor blade having a bent portion,
comprising the steps of:
a) providing an elongated strip of stainless steel having a front
edge portion and a back edge portion, the stainless steel having
a carbon content less than 0.60% by weight;
b) hardening the strip to a first hardness;
c) providing a cutting edge extending along the front edge
portion of the elongated strip;
d) cutting a lengthwise extending portion from the strip, the
lengthwise extending portion providing a discrete razor blade
having a length suitable for use in a razor cartridge housing,
each discrete razor blade including a cutting edge, a back edge
portion and a body portion therebetween; and
e) forming a region of the body portion by swivel bending to
provide the bent portion in the body portion;
wherein the razor blade thus formed includes a first generally
planar portion between the cutting edge and the bent portion
and a second generally planar portion between the bent portion
and the back edge portion.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Perry
Schmitz
Kwiecien
Masek
Eggers
us 3,938,250
us 4,391,119
us 5,985,459
US 2007 /0234576 Al
US 2009/0112200 Al
2
Feb. 17, 1976
July 5, 1983
Nov. 16, 1999
Oct. 11, 2007
April 30, 2009
Appeal2014-007603
Application 13/354,812
The following rejections are before us for review:
1. Claims 1, 4, 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Masek and Schmitz.
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Masek, Schmitz, and Perry.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Masek, Schmitz, and Eggers.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Masek, Schmitz, Eggers, and Kwiecien.
OPINION
Unpatentability of Claims 1, 4, 5, 6, and 9
over Masek and Schmitz
Claims 1, 5, 6, and 9
Appellants argue claims 1, 5, 6, and 9 as a group. Appeal Br. 3---6.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Masek discloses all of the limitations of
claim 1 except for using swivel bending and performing the bending step
after cutting an elongated strip into discrete razor blades. Final Action 2-3.
The Examiner relies on Schmitz as disclosing swivel bending. Id. at 3.
With respect to the order of steps, the Examiner finds that Masek discloses
that the order of the process steps can be altered. Id. at 4 (citing Masek
i-f 54). The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to use swivel bending
in Masek's process. Id. at 3. According to the Examiner, a person of
ordinary skill in the art would have done this because it merely involves
substituting one known element for another with predictable results. Id. In
3
Appeal2014-007603
Application 13/354,812
addition, the Examiner concludes that it would have been obvious to reorder
the steps of Masek as a matter of design choice. Id at 4.
Appellants traverse the Examiner's rejection by first arguing that
Masek should be construed as limited to the process taught therein. Appeal
Br. 4. In particular, Appellants point out that Masek teaches bending
strip 350, which is a continuous strip of blade. Id. Appellants argue that
Masek fails to disclose performing the bending step after the elongated strip
has been cut into discrete razor blades. Id.
Appellants' arguments regarding the ordering of steps in Masek are
not persuasive. Masek teaches a process of forming bent razor blades.
Masek, Abstract.
FIG. 4 shows a method and apparatus 300 for forming
cutting members 100. A continuous strip of blade steel 350 is
conveyed (e.g., pulled by a rotating roll from a roll 305 of blade
steel to a heat-treating device 310, where strip 350 is heat-
treated to increase the hardness of the blade steel. Strip 350 is
then re-coiled into a roll 305 of hardened blade steel, and
subsequently unwound and conveyed to a sharpening device
315, where the hardened edge region of the strip is sharpened to
form a cutting edge 352. Strip 350 is again re-coiled into a roll
305 of hardened and sharpened blade steel, after which it is
coated with hard and lubricious coatings using a coating
device 325. Strip 350 is then unwound and conveyed to a
cutting/stamping station which includes a cutting device 320.
Cutting device 320 creates transverse slots 355 and adjoining
slits 357 (FIG. 5) across longitudinally spaced apart regions of
strip 350 (as shown in FIG. 5). Strip 350 is then conveyed to a
bending device 330, within the cutting/stamping station, that
creates a longitudinal bend 360 in the regions of strip 350
between transverse slots 355 (shown in FIGS. 6 and 7). After
being bent, strip 350 is separated into multiple, discrete cutting
members 100 by a separating device 335, also within the
cutting/stamping station ...
4
Appeal2014-007603
Application 13/354,812
~v1asek lf 44. Thus, ~vfasek teaches essentially the identical process of
claim 1 (except for swivel bending) with the steps ordered in the same
sequence as in claim 1, except for the sequence of the bending step and the
step of cutting a strip into discrete blades. In Appellants' claim 1, the
elongated strip is first cut into discrete blades, then the blade is bent. Claims
App., claim 1. In Masek, the elongated strip is first cut into transverse slots,
then bent, and then separated into discrete blades. Masek i-f 44. Masek
expressly teaches that the order of many of its process steps can be altered.
Id. i-f 54. We view Appellants' reordering of the bending and cutting steps as
nothing more than a predictable variation of Masek' s process. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (design incentives and other
market forces can prompt variations of a work, and, if a person of ordinary
skill can implement a predictable variation, 35 U.S.C. § 103 likely bars its
patentability). In this regard, the Examiner states, "it would have been
obvious to one skilled in the art (even without Masek's statement) to have
experimented with a different step order to possibly achieve a different
output or because the manufacturing plant is setup in a way that better suits a
different order of steps." Final Act. 10. Appellants present no persuasive
evidence that re-ordering the sequence of steps taught in paragraph 44 of
Masek requires more than ordinary skill or results in any new, unexpected,
or non-obvious results. Accordingly, we find the Examiner's rationale for
modifying the order of steps in the process disclosed by Masek to be
adequate.
Next, Appellants argue that Schmitz fails to disclose that it is suitable
for bending a discrete razor blade comprising hardened stainless steel having
a carbon content less than 0.060%. Appeal Br. 4. Appellants contend that it
5
Appeal2014-007603
Application 13/354,812
is generally preferred in the art to process work-pieces in a soft state and not
after a hardening step. Id. Appellants essentially argue that a person of
ordinary skill in the art would not have considered it obvious to bend
hardened steel. Id. at 4--5.
In response, the Examiner states that Schmitz is merely used to teach
that swivel bending is an old and well known bending process. Appeal
Br. 9. The Examiner relies on Masek as teaching that the bending device
can be "any device" that is capable of forming a bend in strip 350. Id., see
also Masek i-f 48.
We think the Examiner has stated the better position. As in
Appellants' process, Masek discloses hardening the blade material before it
is bent. See Masek i-f 44. Although Masek uses a curved punch and die to
bend strip 350, it also expressly states that "[b ]ending device 330 can be any
device capable of forming a longitudinal bend in strip 350." Masek i-f 48.
Appellants present neither evidence nor persuasive technical reasoning that
tends to show that a person of ordinary skill in the art would not consider a
swivel bending device as falling within Masek's disclosure of "any device"
that is capable of bending a strip of razor blade steel.
Finally, Appellants accuse the Examiner of engaging in impermissible
hindsight. Appeal Br. 5. This argument is without merit. Masek expressly
contemplates reordering its process steps and specifically teaches that "any"
capable bending device can be used. Masek i-fi-144, 48. Thus, Masek's
foresight disposes of Appellants' hindsight argument.
In view of the foregoing discussion, we determine that the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
6
Appeal2014-007603
Application 13/354,812
Accordingly, we sustain the Examiner's unpatentability rejection of claims
1, 5, 6, and 9.
Claim 4
Claim 4 depends from claim 1 and adds the limitation: "wherein the
carbon content is between 0.45% and 0.55% carbon by weight." Claims
App. The Examiner concedes that the combination of Masek and Schmitz
fails to disclose the claimed carbon content. Final Action 5. However,
Masek discloses that its cutting member can be formed of any suitable
material such as a material comprised of "about 0.35 to about 0.43 percent
carbon" and stainless steel with a carbon content of "about 0.4 percent."
Masek i-f 42. In view thereof, the Examiner concludes that it would have
been obvious to have made the carbon content range between 0.45% and
0.55%. Id. at 5-6. The Examiner cites In re Aller, 220 F.2d 454 (CCPA
1955) for the proposition that, where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable range
involves only routine skill. In addition, the Examiner cites In re Leshin, 125
USPQ 284 (CCPA 1954) for the proposition that selection of suitable
materials is within the general skill in the art as a matter of design choice.
Final Action 6. The Examiner further concludes that claim 4 would have
been obvious because a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp and if such leads to the
anticipated success, it is likely the product is not of innovation but of
ordinary skill and common sense. Id.
Appellants traverse the rejection by arguing that a person of ordinary
skill in the art would understand that there is a "significant difference"
between the about 0.43% carbon content of Masek and the 0.45% carbon
7
Appeal2014-007603
Application 13/354,812
content of claim 4. Appeal Br. 6. Appellants express their "belief' that it
would not be an obvious matter of design choice to modify the carbon
content to the claimed range. Id. Appellants allege to have discovered a
"synergistic effect" that permits a strip of relatively high carbon content
hardened steel to be successful deformed. Id.
Appellants' arguments do not apprise us of Examiner error. Masek
discloses an upper limit of "about" 0.43 percent carbon. Words of
approximation, such as "about," are descriptive terms commonly used in
patent claims to avoid a strict numerical boundary to the specified
parameter. See Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340
F.3d 1298, 1311 (Fed. Cir. 2003). Thus, we view there to be little, if any,
difference between the upper limit to the carbon content range in Masek and
lower limit of the carbon content range in claim 4. It is well established that
a prima facie case of obviousness exists where the claimed ranges do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties. See Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Moreover, Appellants fail to
provide persuasive evidence of the criticality of the claimed 0.45% carbon
content. Thus, a person of ordinary skill in the art would have expected the
blade of Masek with a 0.43% carbon content to have the same properties as
the blade of claim 4 with a 0.45% carbon content. See In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990).
Furthermore, there is no issue here that Appellants (and the Examiner)
consider carbon content to be a result effective variable. Under the facts
presented, the Examiner correctly applied the legal principle enunciated by
the court in Aller.
8
Appeal2014-007603
Application 13/354,812
[\V]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.
Aller, 220 F.2d at 456; see also In re Applied Materials, Inc., 692 F.3d 1298,
1295 (Fed. Cir. 2012).
Thus, the Examiner did not err in concluding that discovering the
optimum or workable range of carbon content in a bent, hardened razor
blade involves only routine skill in the art. Consequently, we sustain the
rejection of claim 4.
Claim 2
Unpatentability of Claims 2 and 3
over Masek, Schmitz, and Perry
Claim 2 depends from claim 1 and adds the limitation: "wherein the
method further includes a step of perforating one or more apertures."
Claims App. The Examiner relies on Perry as disclosing perforating a razor
blade with apertures. Final Action 4. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to perforate the blade of Masek/Schmitz as taught by
Perry. According to the Examiner, a person of ordinary skill in the art
would have done this as it merely entails combining elements by known
methods with no change in their respective function with predictable results.
Id.
In traversing the rejection, Appellants rely on the same arguments that
we considered and found unpersuasive with respect to claim 1 and which are
equally unpersuasive here. Appeal Br. 5. Accordingly, we sustain the
rejection of claim 2.
9
Appeal2014-007603
Application 13/354,812
Claim 3
Claim 3 depends from claim 2 and adds the limitation: "wherein the
step of perforation occurs before step e) and after step d). Claims App. The
Examiner acknowledges that the proposed combination fails to expressly
disclose that the perforation step occurs before the bending step and after the
cutting step. Final Action 5. However, the Examiner reiterates that Masek
discloses that the order of the process steps can be altered and the process
steps can be ordered in any of various combinations. Id. (citing Masek
i-f 54). The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to arrange the
sequence of steps so that the perforation step occurs before the bending step
and after cutting step. Id. According to the Examiner, a person of ordinary
skill in the art would have done this as it amounts to a mere matter of
obvious design choice. Id. The Examiner adds that the claim would have
been obvious because a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. Id.
In traversing the rejection, Appellants reiterate their previous
argument that in the broad field of metal fabrication, it is generally preferred
to process work-pieces in a soft state and not after a hardening step. Appeal
Br. 5. Appellants express a belief that one of skill would not provide
apertures after a hardening process. Id.
Appellants' arguments do not apprise us of error as they amount to
little more than unsubstantiated attorney argument. Attorney argument
cannot take the place of evidence in the record. Estee Lauder, Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.Cir. 1997); see also Invitrogen Corp.
v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005)
10
Appeal2014-007603
Application 13/354,812
(unsubstantiated attorney argument is no substitute for competent evidence).
Furthermore, Appellants' arguments and expressions of "belief' are belied
by evidence in the record. Masek teaches that blades are first hardened
before being worked with a cutting device to receive transverse slots, then
bent, and then cut into discrete blades. Masek i-fi-144, 48. We discern little or
no distinction between using a cutting device to cut transverse slots versus
perforating an interior area of the blade to create an aperture. Considering
that Masek establishes that it was known to cut transverse slots in hardened
razor blade steel, Appellants offer neither evidence nor persuasive technical
reasoning that tends to establish that the process step of perforating an
aperture in a hardened blade, as in claim 3, is patentably non-obvious. In
view of the foregoing, we sustain the rejection of claim 3.
Unpatentability of Claims 7 and 8
Claims 7 and 8 depend, directly or indirectly, from claim 1. Claims
App. Appellants argue that Eggers and/or Kwiecien fail to cure alleged
deficiencies in Masek and Schmitz with respect to the subject matter of
claim 1, however as previously discussed, we find no deficiencies. Appeal
Br. 6-7. Otherwise, Appellants do not argue for the separate patentability of
claims 7 and 8. Id.
Consequently, we sustain the rejection of claims 7 and 8.
DECISION
The decision of the Examiner to reject claims 1-9 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)(l )(iv).
AFFIRMED
11