Ex Parte Gilder et al

Board of Patent Appeals and Interferences

Aug 9, 2012

11217985 (B.P.A.I. Aug. 9, 2012)

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.
11/217,985 09/01/2005 Bernard Gilder 4257C / Z-03655C4 9444
27752 7590 08/09/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
08/09/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte BERNARD GILDER and IAN SAKER
____________________

Appeal 2010-005066
Application 11/217,985
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005066
Application 11/217,985

2
STATEMENT OF THE CASE
Bernard Gilder and Ian Saker (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 21, 25, 27, and 29.
Specifically, the Examiner rejected under 35 U.S.C. § 103(a) claims 21 and
29 as unpatentable over Gilder (WO 95/09071, pub. Apr. 6, 1995,
hereinafter “Gilder ‘071), Pelizzola (US 1,920,711, iss. Aug. 1, 1933), and
Genero (US 5,335,417, iss. Aug. 9, 1994); claim 25 as unpatentable over
Gilder ‘071, Pelizzola, Genero, and Ferraro (US 4,774,765, iss. Oct. 4,
1988); and claim 27 as unpatentable over Gilder, Pelizzola, Genero, and
Andrews (US 6,434,828 B1, iss. Aug. 20, 2002). We have jurisdiction
under 35 U.S.C. § 6(b).
This is the second appeal in the present application. In the prior
appeal, this panel held that claims 21, 23, and 29 were unpatentable over
Gilder ‘071, Pelizzola, and Genero; claim 25 was unpatentable over
Gilder ‘071, Pelizzola, Genero, and Ferraro; and claim 27 was unpatentable
over Gilder ‘071, Pelizzola, Genero, and Andrews. Ex parte Gilder, Appeal
2009-000720 slip op. at 19 (BPAI Mar. 30, 2009) (hereinafter “our prior
Decision”). Subsequent to the decision in the earlier appeal, Appellants
canceled dependent claim 23 and amended independent claim 21 to recite
that “the blade unit has an average inter-blade span from 0.70 mm to 1.20
mm” (emphasis added).1
We AFFIRM.

1 Claim 21 before us in the earlier appeal recited that “the blade unit has an
average inter-blade span of less than 1.20 mm.”
Appeal 2010-005066
Application 11/217,985

3
The Claimed Subject Matter
Claim 21, reproduced below, is illustrative of the claimed subject
matter.
21. A safety razor blade unit comprising:
a plastic frame including a front member comprising a
guard with a skin contacting surface and a rear member
comprising a cap with a skin contacting surface;
at least four razor blades, each having a blade edge and
being positioned between the guard and cap, said blade edges
lying in a common plane with substantially equal inter-blade
spans between adjacent blade edges;
wherein the blade unit has an average inter-blade span
from 0.70 mm to 1.20 mm and a wash through index for the
blade unit is not less than 0.25[.]
ISSUE
The issue presented in this appeal is:
Did the Examiner err in concluding that the combined teachings of
Gilder ‘071, Pelizzola, and Genero render obvious the subject matter of
claim 21, and particularly a safety razor blade unit, wherein the blade unit
has an average inter-blade span of from 0.70 mm to 1.20 mm and a wash
through index for the blade unit of not less than 0.25?
PRINCIPLES OF LAW
Discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. . . . These cases have consistently
held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
Appeal 2010-005066
Application 11/217,985

4
claimed range achieves unexpected results relative to the prior
art range [citations omitted].
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
[E]ven though applicant's modification results in great
improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges “produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art.”
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
ANALYSIS
In rejecting claim 21 as unpatentable over Gilder ‘071, Pelizzola, and
Genero, the Examiner essentially relied on the analysis set forth on pages
14-16 of our prior Decision. Ans. 3.
We incorporate herein findings FF1 through FF21 set forth on pages
5-10 of our prior Decision. We also incorporate the analysis on pages 14-16
of our Decision, which applies to the subject matter of claim 21 before us in
the present appeal (i.e., as amended subsequent to our prior Decision) in the
same manner that it applied to the subject matter of claim 21 as presented in
the prior appeal.
The attributes of drag reduction for shaving comfort and adequate
spacing of the blades for good rinsing properties were well appreciated by
those of ordinary skill in the art at the time of Appellants’ invention. FF2,
FF3, FF9, FF15, FF16. Gilder ‘071 discloses that the frictional drag forces
with a blade unit comprising three blades can be kept to an acceptable level,
while allowing improved shaving efficiency, “by setting the blades relative
to each other and to guard and cap surfaces positioned in front of and behind
the blade edges, according to a particular geometrical disposition.” Gilder
Appeal 2010-005066
Application 11/217,985

5
‘071, p. 2, ll. 13-20; FF10. Additionally, as pointed out on page 16 of our
prior Decision, “there is nothing unexpected or unpredictable about the
relationship between inter-blade span and wash through index” or the
relationship between wash through index and rinsability. Based on our
findings with respect to the teachings of Gilder ‘071 and Genero (FF9
through FF16), we determine that the combined teachings of Gilder ‘071 and
Genero would have prompted a person of ordinary skill in the art to select
the inter-blade spans and span exposures of a blade unit having three or
more blades to optimize both comfort and rinsability.
Further, Gilder ‘071 discloses blade units having an inter-blade span
of from 1.0 to 2.0 mm (which overlaps Appellants’ claimed range of from
0.70 mm to 1.20 mm), with an exemplary embodiment having inter-blade
spans of 1.50 mm. FF12. As admitted by Appellants, Figure 1 of the
present application provides a very strong indication that very acceptable
comfort can be expected for an inter-blade span over the entire range of
about 0.6 mm to about 1.5 mm (the exemplary inter-blade span of Gilder
‘071). FF4; see Spec. 3 (stating “the graph provides a very strong indication
that very acceptable shave comfort can be expected if the blade span is in the
range of about 0.6 mm to about 1.5mm and that a blade span around 0.7mm
is likely to be most beneficial”). Thus, by Appellants’ own admission, there
is no critical difference in performance between a blade unit with the inter-
blade span disclosed by Gilder ‘071 and a blade unit with the average inter-
blade span recited in claim 21. Although Appellants depict what they have
“stipulated” as the best compromise between rinsability and comfort during
shaving by dashed lines in Figure 3, and select in accordance with their
invention an average inter-blade span of not greater than 1.25 mm and a
Appeal 2010-005066
Application 11/217,985

6
wash through index of the blade unit of not less than 0.20 (FF8; Spec. 7),
they do not show any criticality to these values, much less to the ranges
recited in claim 21, over any other values. While these values may yield
what Appellants deem to be acceptable results for both comfort (drag) and
rinsability, Appellants provide no showing that their selected values produce
a new and unexpected result which is different in kind and not merely in
degree from the results of the prior art. Accordingly, Appellants fail to show
a patentable distinction between the claimed subject matter and the prior art.
Appellants assert that, if anything, Genero suggests increasing, not
reducing, the average inter-blade span of the blades of Gilder ‘071 “to
ensure no impediment to the proper flushing of the blades.” App. Br. 4.
Appellants do not point to anything in the record that supports this assertion.
While Genero indicates that some minimum spacing between blades is
desirable to permit proper flushing of the blades, Genero does not specify
what spacing is required to achieve that objective, or otherwise indicate that
an average inter-blade spacing of, for example, 1.0 mm (i.e., the lower end
of the inter-blade span disclosed by Gilder ‘071) would be insufficient.
Appellants argue that there has been a long-felt but unsolved need to
provide a razor blade unit having the claimed range of average inter-blade
span and wash through index. App. Br. 4.
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In particular, first, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967). Second, the long-felt need must
not have been satisfied by another before the invention by applicant. Newell
Appeal 2010-005066
Application 11/217,985

7
Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce
another supplied the key element, there was no long-felt need or, indeed, a
problem to be solved.”) Third, the invention must in fact satisfy the long-
felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). “[L]ong-felt
need is analyzed as of the date of an articulated identified problem and
evidence of efforts to solve that problem.” Texas Instr., Inc. v. U.S. Int'l
Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993).
An argument based upon long-felt need must be accompanied by
evidence that demonstrates the existence of a problem which was of concern
in the industry and has remained unsolved over a long period of time. See
Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984).
This can be accomplished, for example, by the testimony of experts in the
industry, or publications and the like, which speak to the duration and extent
of the problem, and of the substantial effort and resources which had been
expended during that time in attempts to solve the problem. See Railroad
Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363 (E.D. Pa. 1983), aff'd 727
F.2d 1506 (Fed. Cir. 1984). Once the long-felt need has been established, it
must further be shown that the invention satisfied that need. See Cavanagh,
436 F.2d at 496. This can be demonstrated, for example, by evidence
establishing commercial success and that the industry purchased the claimed
invention because it satisfied the long-felt need. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983).
Appellants point to five prior art blade unit products, namely, the GII,
ATRA, Sensor, Sensor Excel, and Mach3, introduced at different times from
1971 to 1998, having average inter-blade spans of about 1.5 mm, which is
outside the claimed range, and additional prior art blade unit products listed
Appeal 2010-005066
Application 11/217,985

8
in figure 3 of Appellants’ Specification including the Kai 3, having an
average inter-blade span within the claimed range, but having a wash
through index of only 0.12, which is outside the claimed range. App. Br. 4-
5. The introduction of these products is unavailing, by itself, to show that
there was a persistent need recognized by those of ordinary skill in the art,
much less that others tried without success to satisfy such need. Appellants’
statements as to the time and resources expended to develop these prior art
products also are unavailing to show long-felt and unsolved need. First,
these statements are nothing more than attorney argument, unsupported by
factual evidence. Attorney's arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Furthermore,
Appellants have not asserted, much less shown, that any research and
development efforts related to those products were expended with a view
toward providing a razor blade unit having the claimed range of average
inter-blade span and wash through index.
Appellants further assert that Gillette’s Fusion and Fusion Power
razors, which fall within the claimed average inter-blade span and wash
through index, have obtained large commercial success, citing a 14 percent
share of the United States razor market for the Fusion razor and a 7 percent
share of the United States razor market for the Fusion Power razor. App. Br.
5. These assertions are insufficient to establish commercial success, because
they are not supported by evidence. See Pearson, 494 F.2d at 1405.
(attorney’s arguments cannot take the place of evidence). Moreover, even
assuming Appellants had sufficiently demonstrated commercial success, that
success is relevant in the obviousness context only if it is established that the
sales were a direct result of the unique characteristics of the claimed
Appeal 2010-005066
Application 11/217,985

9
invention, as opposed to other economic and commercial factors unrelated to
the quality of the claimed subject matter. In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996). Appellants have presented no evidence showing a nexus
between any commercial success of the Fusion and Fusion Power products
and the claimed subject matter.
CONCLUSION
For the above reasons, we conclude that the Examiner did not err in
concluding that the combined teachings of Gilder ‘071, Pelizzola, and
Genero render obvious the subject matter of claim 21, and particularly a
safety razor blade unit, wherein the blade unit has an average inter-blade
span of from 0.70 mm to 1.20 mm and a wash through index for the blade
unit of not less than 0.25.
We sustain the rejection of claim 21 and of claim 29, for which
Appellants do not assert any separate arguments and which thus falls with
claim 21, as unpatentable over Gilder ‘071, Pelizzola, and Genero.
In contesting the rejections of claims 25 and 27, Appellants merely
rely on the arguments asserted for claim 21 and assert that Ferraro and
Andrews fail to “provide the elements of average inter-blade span and wash
through index of independent claim 21 absent in Gilder ‘071, Pelizzola and
Genero.” App. Br. 6. These arguments are unpersuasive for the reasons set
forth above. Thus, we also sustain the rejection of claim 25 as unpatentable
over Gilder ‘071, Pelizzola, Genero, and Ferraro, and the rejection of claim
27 as unpatentable over Gilder ‘071, Pelizzola, Genero, and Andrews.
DECISION
The Examiner’s decision rejecting claims 21, 25, 27, and 29 is
affirmed.
Appeal 2010-005066
Application 11/217,985

10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

hh