Ex Parte Georgakis et al

Patent Trial and Appeal Board

Jun 20, 2018

14620404 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/620,404 02/12/2015
27148 7590 06/22/2018
POLSINELLI PC
900 WEST 48TH PLACE
SUITE 900
KANSAS CITY, MO 64112-1895
FIRST NAMED INVENTOR
Georgios Georgakis
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.
657001-512115 1459
EXAMINER
CROSBY JR, RICHARD D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGIOS GEORGAKIS and
DIMITRIOS EFTHIMIADIS
Appeal2017-009100
Application 14/620,404
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Georgios Georgakis and Dimitrios Efthimiadis ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office
Action (dated Sept. 16, 2015, hereinafter "Final Act.") rejecting claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 BIC-Violex SA is the applicant as provided in 37 C.F.R. § 1.46 and is
identified as the real party in interest in Appellants' Appeal Brief ( dated
June 8, 2016, hereinafter "Appeal Br."). Appeal Br. 3.
Appeal2017-009100
Application 14/620,404
INVENTION
Appellants' invention relates to "shaving blade cartridges." Spec.
para. 2.
Claims 1, 15, 16, and 18 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A shaving blade cartridge comprising:
a housing extending along a longitudinal axis (X-X)2,
having a top side, a bottom side opposite to the top side and first
and second longitudinal side, each extending longitudinally
along the longitudinal axis (X-X) between the top and bottom
side, the housing being provided with a through hole extending
transversally to the longitudinal axis (X-X) through the housing
between the top side and the bottom side, the first longitudinal
side having a cap member, the second longitudinal side having a
guard bar member, and a first and second vertical side extending
substantially transverse to the first and second longitudinal side,
at least one cutting blade mounted in the housing between
the first and second longitudinal side, and having a cutting edge
extending along the longitudinal axis (X-X),
a clip retaining the at least one cutting blade in the housing
and having a first leg, a second leg and a clip body extending
between the first and second legs,
wherein the first leg of the clip surrounds the first
longitudinal side and at least a portion of the bottom side of the
housing,
the second leg of the clip is received in the through hole,
and
a first groove formed on the first longitudinal side and
between the cap member and the first vertical side.
2 We interpret the limitation "along a longitudinal axis" to mean parallel to
the longitudinal axis. See Spec. para. 29; Fig. 1.
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Application 14/620,404
REJECTIONS 3
I. The Examiner provisionally rejects claims 1-18 under 35
U.S.C. § 101 for statutory double patenting as claiming the
same invention as that of claims 1-17 of co-pending U.S.
Application No. 14/037,863.
II. The Examiner rejects claims 5-8, 10, and 16-18 under 35
U.S.C. § 112(b) as being indefinite.
III. The Examiner rejects claims 1-18 under 35 U.S.C. § 103 as
being unpatentable over Worrick, III et al. (US 2005/0198840
Al, pub. Sept. 15, 2005, hereinafter "Worrick") and Anderson
et al. (US 5,761,814, iss. June 9, 1998, hereinafter "Anderson").
ANALYSIS
Rejection I
On October 25, 2016, U.S. Application No. 14/037,863 (including
claims 1-17), which formed the basis for the Examiner's provisional
rejection, issued as US Patent No. 9,475,201 B2. The issued patent includes
independent claims 1, 7, 12, and 16, and dependent claims 2---6, 8-11, 13-15,
and 17 that are not the same as claims 1-17 of U.S. Application No.
14/037,863 that were the basis for the instant rejection, at least because
issued claims 1, 7, 12, and 16 were further amended.
3 The Examiner's objection to claims 16 and 18 is a petitionable matter and
not an appealable matter and, thus, is not within the jurisdiction of the
Board. See Final Act. 4; see also In re Mindick, 371 F.2d 892, 894 (CCPA
1967).
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Application 14/620,404
As the claims relied on by the Examiner have been amended, we do
not reach the merits of the rejection, and, thus, we leave it to the Examiner to
determine whether the double patenting rejection is still appropriate.
Re} ection II
Appellants do not present any substantive arguments with respect to
the indefiniteness rejection of claims 5-8, 10, and 16-18. See Appeal Br. 7;
see also Final Act. 5---6. Therefore, we summarily sustain the rejection of
claims 5-8, 10, and 16-18 under 35 U.S.C. § 112(b) as being indefinite.
Rejection III
Claims 1-15
Each of independent claims 1 and 15 requires that "the first leg of the
clip surrounds the first longitudinal side and at least a portion of the bottom
side of the housing" (see Appeal Br., Claims App. i, iii), and the Examiner
finds that W orrick discloses this limitation. See Final Act. 7 ( citing Worrick,
para. 58); see also id., Examiner's annotated Figure 5 of Worrick.
Appellants argue that because both legs 50, 52 of Worrick's clip 32
extend through housing 20 via slots 40 and 42, respectively, it is not possible
for Worrick' s clip 32 to surround housing 20, as called for by claim 1.
Appeal Br. 7-8 (citing Worrick, Fig. 3).
The Examiner responds that Figure 3 of Worrick shows that "clip 32
surrounds a portion of the first longitudinal side, as the clip is unable to
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Application 14/620,404
surround the entire longitudinal side." Examiner's Answer 10 ( dated Sept.
22, 2016, hereinafter "Ans."). 4
The claimed housing is delineated by top and bottom sides, by first
and second longitudinal sides, and by first and second vertical sides located
transverse to the first and second longitudinal sides, respectively. See
Appeal Br., Claims App. i, iii. Hence, in order to satisfy the language of
claims 1 and 15, the first leg of the clip must "surround," that is, extend
around the margin or edge of a side of the housing, namely, the first
longitudinal side.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this
case, an ordinary and customary meaning of the term "surround" is "to
extend around the margin or edge of." www.merriam-
webster.com/dictionary/surround (last visited June 6, 2018). Consistent with
this definition, Appellants' Specification describes that first leg 59
"surrounds," that is, extends around, a side of the housing 9 when "a portion
of the clip 55 is wrapped around a portion of the housing 9." Spec. para. 40;
Fig. 3.
In contrast, legs 50 and 52 of Worrick's clip 32 are threaded "through
slots 40 and 42 in the housing 20." Worrick, paras. 57, 58 (emphasis added).
We, thus, agree with Appellants that as slot 40 is spaced from the
longitudinal side of Worrick's housing 20, and extends into the housing, first
leg 50 of Worrick's clip 32 extending through slot 40 does not extend
4 According to the Examiner, the phrase "clip surrounds" means "a thing that
forms a border or edging around an object." Id.
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Application 14/620,404
around an edge of housing 20. See Reply Brief 3 (dated Nov. 22, 2016,
hereinafter "Reply Br."). Therefore, first leg 50 of Worrick's clip 32 does
not surround the first longitudinal side of the housing, as called for by each
of independent claims 1 and 15. The Examiner's use of the Anderson
disclosure does not remedy the deficiency of Worrick discussed supra. See
Final Act. 12-13.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103 of
claims 1-15 as unpatentable over Worrick and Anderson.
Claims 16-18
Each of independent claims 16 and 18 requires, inter alia, that a first
leg of a clip is disposed in a groove in the first longitudinal side and a
portion of the bottom side of the housing, and a second leg of the clip is
received in a through hole. See Appeal Br., Claims App. iii-v.
The Examiner finds that Worrick discloses, inter alia, a clip 32 having
legs 50, 52, wherein second leg 52 is received within through hole 42. Final
Act. 11 (citing Worrick, Figs. 3, 3B, 5, and 6). The Examiner further finds
that Anderson discloses clips 50, 52, wherein each leg is received in a
respective groove 42 in a first longitudinal side and a portion of a bottom
side of a housing of a razor blade assembly. Id. at 12 ( citing Anderson, Figs.
1, 4, and 5). The Examiner concludes, that "[i]t would have been obvious to
a person of ordinary skill in the art to try the grooves of Anderson, in an
attempt to provide for an improved shaving blade cartridge, as a person with
ordinary skill in the art has good reason to pursue the known options within
his or her technical grasp." Id. at. 13.
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Application 14/620,404
Appellants argue that the Examiner's rejection is based on
impermissible hindsight as each of Worrick's clips 32 have both legs 50, 52
extending through holes 40, 42, respectively, whereas "Anderson is limited
to an opposite design" where clips 50, 52 "extend around grooves ( 42)."
Appeal Br. 1 O; Compare Worrick, Fig. 5, with Anderson, Fig. 1. Appellants
assert that it is improper, from the teachings of W orrick and Anderson, for
the Examiner to "extract just half of each of the Anderson grooves ( 42)" and
to "somehow replace each of Warrick's through holes (40) ... to arrive at a
new hypothetical housing and new hypothetical clips." Id. at 10-11. In
other words, Appellants assert that there is no adequate reasoning "to extract
a feature from Anderson ... and redesign just a portion of a feature of
Worrick simply because the feature is present in Anderson." Reply Br. 4.
The Examiner responds that "it would have been obvious to one of
ordinary skill in the art to incorporate grooves, through holes, or any
reasonable combination thereof, as both designs are well known within the
art." Ans. 13.
We are not persuaded by the Examiner's position because "a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). In other
words, the mere fact that elements can be combined is not, in itself, a reason
to combine them. Rather, an obviousness rejection further must explain the
reasoning by which those findings support the Examiner's conclusion of
obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328-30 (Fed. Cir. 2009).
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Application 14/620,404
In this case, citing to Apprille, Jr. et al. (US 6,035,537, issued Mar.
14, 2000, hereinafter "Apprille"), Worrick recognizes that positioning a clip
(metal clip 42) in a groove (raised edges of side walls 30) is known.
Worrick, para. 60. However, Worrick discloses that extending a leg of the
clip in a through hole "can provide several advantages," such as, to "provide
[a] very secure attachment of the clips 32 to the housing 20," and
"facilitate[] use of a longer and wider guard." Id.; see also Apprille, col. 2,
11. 62---63, Figs. 2, 4. Given that Worrick is familiar with Apprille's design
(which is similar to Anderson's design) of using grooves to receive clip legs,
but states that the use of through holes is a more advantageous design, the
reasoning proffered by the Examiner to modify the teachings of W orrick,
according to Anderson, namely, "to provide for an improved shaving blade
cartridge," does not support the conclusion of obviousness as it contradicts
Worrick's disclosure. See Final Act. 13.
Moreover, we note that even assuming arguendo that positioning the
leg of a clip in a groove, as taught by Anderson, is an improvement over
Worrick's attachment by placing the clip leg in a through hole, the Examiner
does not explain adequately why a person of ordinary skill in the art would
maintain one leg of the clip in a through hole and have the other leg
positioned in a groove.
Accordingly, the Examiner fails to articulate adequate reasoning, with
rational underpinnings, why, in the absence of hindsight gleaned improperly
from Appellants' underlying disclosure, a person having ordinary skill in the
art would have modified Worrick, according to Anderson, to arrive at the
subject matter of independent claims 16 and 18. See St. Jude Med., Inc. v.
Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013).
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Application 14/620,404
In conclusion, for the foregoing reasons, we also do not sustain the
Examiner's rejection of claims 16-18 as unpatentable over the combined
teachings of Worrick and Anderson.
SUMMARY
The Examiner's decision to reject claims 5-8, 10, and 16-18 under 35
U.S.C. § 112(b) as indefinite is affirmed.
The Examiner's decision to reject claims 1-18 under 35 U.S.C. § 103
as unpatentable over Worrick and Anderson is reversed.
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-IN-PART
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