Ex parte Ferraro

Board of Patent Appeals and Interferences

Jun 15, 1998

08137530 (B.P.A.I. Jun. 15, 1998)

Application for patent filed October 15, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANK A. FERRARO

_____________
Appeal No. 96-2612
Application 08/137,5301
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and FRANKFORT, Administrative Patent
Judges.
Appeal No. 96-2612
Application 08/137,530
The examiner did not set forth these rejections in a2
“Grounds of Rejection” section in the examiner’s answer (see
MPEP § 1208, including form paragraph 12.59 and the notes
following it), but from his remarks in the “Response to Argu-
2
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1, 3, 5 to 12, 14, 16, 18 and 19, all the claims remaining in
the application.
The claims in issue are drawn to a disposable razor
unit (claims 1, 3, 5 to 11 and 18), a handle for a disposable
razor unit (claims 12, 14 and 19), and a razor head for a dis-
posable razor unit (claim 16). The appealed claims are repro-
duced in the Corrected Appellant’s Appendix, filed September
15, 1997.
The reference applied in the final rejection is:
Iten 4,599,793 July 15, 1986
The claims stand finally rejected as follows:2
Appeal No. 96-2612
Application 08/137,530
ment” section it is clear that he did not thereby intend to
withdraw either of them.
3
(1) Claims 1, 3, 5 to 9, 12, 14, 16, 18 and 19, anticipated by
Iten, under 35 U.S.C. § 102(b);
(2) Claims 10 and 11, unpatentable over Iten, under 35 U.S.C.
§ 103.
Rejection (1)
In order to anticipate a claim, a prior art refer-
ence must disclose every limitation of the claimed invention,
either explicitly or inherently. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In the
present case, appellant argues that the Iten patent does not
anticipate the claims because it does not disclose certain
claimed limitations, as follows (brief, page 2; numerals in
brackets added for convenience of reference to arguments):
In contrast to Iten, [I] the present
invention has three prongs and the at rest
alignments of those prongs is not identi-
cal. Specifically, the center prong is
aligned differently than the end prongs in
order to facilitate attachment and removal
of the cartridge. As previously noted,
Iten contains only two members which have
Appeal No. 96-2612
Application 08/137,530
4
identical at rest alignments. Further,
[II] the present invention discloses a
retention means consisting of a clearance
slot and a locking shoulder, not a bar as
in Iten. Still further, [III] Iten con-
tains two members on its handle to facili-
tate the removal of the razor head. In
contrast, the present invention provides
for removal of the cartridge via the exer-
tion of force directly on the cartridge,
not on the razor handle as required by
Iten. Consequently, the cartridge of the
present invention is not only attached to
the handle in a different manner than is
Iten’s, but it is also removed from the
handle in a different manner.
Considering first claim 1, only argument [I] would
appear to be applicable, since this claim does not recite a
retention means (as specified in argument [II]) or removal of
the cartridge by force (argument [III]). In comparing the
language of the claim with the reference, we find that Iten
discloses a handle-to-cartridge attachment means which com-
prises a plurality of resilient, independently movable end
prongs 36, and a resilient, independently movable center prong
Appeal No. 96-2612
Application 08/137,530
While Iten also discloses another center prong 20, use3
of the term “comprises” in line 8 of the claim leaves the
attachment means open to inclusion of such a second prong.
Webster’s Third New International Dictionary (1971).4
Claim 1 does not specifically recite that the “first at5
rest alignment” of the end prongs is different from the “sec-
ond at rest alignment” of the center prong, but we have read
5
20. Appellant’s argument that Iten has only two prongs while3
he has three seems to assume that Iten’s members 36 are not
prongs which are part of the attachment means. However,
Iten’s members 36 meet the definition of “prong,” i.e., “a
slender pointed or projecting part,” and they participate in4
the function of attaching the cartridge 12 to the handle 10.
See, e.g., col. 4, lines 10 to 14. Iten’s end prongs 36
also have a first at rest align- ment which is different from
the at rest alignment of center
prongs 20, in that they extend in different directions, as
shown in Fig. 2.5
Appeal No. 96-2612
Application 08/137,530
it as such.
We note that claim 19 recites a “disposable razor,”6
while its parent claim 14 is drawn to a “handle.” This dis-
crepancy should be corrected in the event of any further
prosecution.
Although appellant argues concerning a retention means7
“consisting of” certain items, the claims use the open-ended
term “comprise.”
6
Iten therefore anticipates claim 1, since it dis-
closes all the limitations recited therein. Since appellant
does not explain why any of the limitations recited in claims
3, 5 to 7, 12, 14 and 19 would impart separate patentability
to those claims in relation to claim 1, those claims will fall
with claim 1. 37 CFR § 1.192(c)(7).6
Appellant’s argument [II] would seem to be applica-
ble to claims 8, 16 and 19. We do not agree with appellant
that Iten does not disclose a retention means comprising a7
clearance slot and a locking shoulder. In Iten, there is a
clearance slot at 38, and locking shoulders at the upper
corners of bar 40, which are engaged by the teeth 24 on center
prongs 20, as shown in
Appeal No. 96-2612
Application 08/137,530
7
Fig. 1. Appellant’s contention that Iten’s bar is not a
locking shoulder is not well taken, since there is nothing in
these claims to preclude the locking shoulder from being the
corner of a bar.
Argument [III] relates to claim 9, the only claim
rejected under § 102(b) which contains any recitation concern-
ing the exertion of force. We find that this claim is read-
able on Iten. While Iten’s center prongs 20 are released from
the locking shoulders on bar 40 by squeezing the handle at A
(Fig. 2), it would then be necessary to remove the head
(cartridge) from the handle by exerting a force on the car-
tridge in a direction to move it in a direction away from the
handle (as well as a corresponding force on the handle to move
it away from the cartridge). That is all that claim 9 re-
quires.
The rejection of claims 1, 3, 5 to 9, 12, 14, 16, 18
and 19 will accordingly be sustained.
Rejection (2)
Appeal No. 96-2612
Application 08/137,530
Nor does it appear that appellant could reasonably8
dispute this finding, in view of the disclosure of razors with
shaving aids in such references as PCT Application WO
92/15430, filed with appellant’s Information Disclosure
Statement on March 9, 1995.
8
Claim 10 will fall with claim 9, since appellant
does not present any reasons as to why he believes claim 10
would be separately patentable from claim 9.
As for claim 11, the examiner has consistently main-
tained (answer, pp. 3 to 4):
The use of shaving aids with disposable
cartridges and there [sic: their] associ-
ated advantages is old and well known in
the shaving art. Applying such a teaching
to Iten to improve shaving quality would
appear to be obvious since one would want
to improve the shaving quality of Iten as
much as is reasonably possible.
Appellant argues that Iten “does not teach or suggest the
inclusion of a shaving aid on a razor” (brief, page 3), but
does not dispute the examiner’s finding, supra, that the use
of such aids is old and well known. The finding thus stands8
unrebutted, and in view thereof we consider that it would have
Appeal No. 96-2612
Application 08/137,530
We note that “the razor head” in claim 11 has no9
antecedent basis, and have construed it as “the cartridge.”
9
been obvious to incorporate a shaving aid in the razor head
(cartridge) 12 of Iten.9
The rejection of claims 10 and 11 under 35 U.S.C.
§ 103 will be sustained.
Conclusion
The examiner’s decision to reject claims 1, 3, 5 to
12, 14, 16, 18 and 19 is affirmed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 96-2612
Application 08/137,530
10
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2612
Application 08/137,530
11
Charles W. Almer, III
Warner-Lambert Company
Patent Department
201 Tabor Road
Morris Plains, NJ 07950