Ex Parte Schnak et al

Board of Patent Appeals and Interferences

Aug 23, 2012

11220072 (B.P.A.I. Aug. 23, 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.
11/220,072 09/06/2005 Fred Schnak 8194/Z-03537Q 3415
27752 7590 08/24/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
08/24/2012 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 FRED SCHNAK, LUIS BURREL, STEFAN REHBEIN,
GERRIT RONNEBERG, UWE SCHAAF, and KLAUS AMSEL
____________

Appeal 2010-005892
Application 11/220,072
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM V. SAINDON and MICHAEL C.
ASTORINO, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-005892
Application 11/220,072

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STATEMENT OF THE CASE
Fred Schnak et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1, 3-7, 11, and 12. Claims 8-10
and 13-21 have been withdrawn from consideration. Claim 2 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
The Appellants’ invention is directed to a razor handle. Independent
claim 1 is illustrative:
1. A razor handle comprising:

a housing constructed to hold a battery;

an aperture in the housing;

a microporous membrane covering the aperture and
sealed against surface of the housing surrounding the aperture;

a cover disposed over the membrane and aperture; and

a space provided between the cover and the surface of the
housing, the space being configured to allow gas exiting the
aperture to escape from under the cover.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 3-7, 11, and 12 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement;
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(ii) claims 1, 3-7, 11, and 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention;
(iii) claims 1, 3, 11, and 12 under 35 U.S.C. § 102(a and e) as being
anticipated by Fischer (US 2005/0172493 A1, published Aug. 11, 2005);
(iv) claims 1, 3-7, 11, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Fischer in view of Hoagland (US 6,367,646 B1, issued
Apr. 9, 2002);
(v) claims 1, 3-7, 11, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Lowery (US 4,744,144, issued May 17, 1988) in view of
Pedicini (US 5,362,577, issued Nov. 8, 1994) and Hoagland.

ISSUES
Did the Examiner err in rejecting the claims as failing to meet the
enablement requirement and as being indefinite?
Did the Examiner err in finding that the subject matter of claim 1
would have been anticipated by Fischer?
Did the Examiner err in concluding that the subject matter of claim 1
would have been obvious over Fischer and Hoagland?
Did the Examiner err in concluding that the subject matter of claim 1
would have been obvious over Lowery, Pedicini, and Hoagland?

ANALYSIS
Enablement/Indefiniteness--Claims 1, 3-7, 11, and 12
The Examiner takes exception to the presence in independent claim 1
of the phrase “the space being configured to allow gas exiting the aperture to
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Application 11/220,072

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escape from under the cover,” maintaining that a person of ordinary skill in
the art would not be able to make and use the Appellants’ invention. Ans. 3-
5 and 13-15. The Examiner states that the Appellants’ disclosure does not
show or describe a hole or space for gasses to exit from under the cover and
into the ambient air. Ans. 4-5.
The Appellants counter that the Examiner has not established a
reasonable basis to question enablement. Appeal Br. 4. In particular, the
Appellants argue that the “specification and/or drawings contain a teaching
of the manner and process of making and using the invention in terms which
correspond in scope to those used describing and defining the subject matter
sought to be patented.” Id. Finally, the Appellants contend that the
disclosure “support[s] that gas can escape from under the cover 94 by having
an open area between the cover and the housing for venting to allow gas to
escape from under the cover.” Appeal Br. 5.
Insofar as the enablement requirement is concerned, the dispositive
issue is whether the Appellants’ disclosure, considering the level of ordinary
skill in the art as of the date of the Appellants’ application, would have
enabled a person of such skill to make and use the Appellants’ invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). We agree with the Appellants that persons of ordinary skill
in the art could make and use the Appellants’ invention without undue
experimentation1.

1 Factors to be considered include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
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Despite the Examiner’s assertions, the Examiner has not sufficiently
shown how the disclosure lacks sufficient information to enable persons of
ordinary skill in the art to make and use the invention. The Appellants’
claims describe a “space [between the cover and the surface of the housing]
being configured to allow gas exiting the aperture to escape from under the
cover.” Claim 1, ll. 7-8. The Appellants’ claim language is buttressed by
the Appellants’ Specification that describes venting channels designed “[s]o
that gas can escape from under the cover 94.” Spec. 11, l. 11. The
Appellants additionally disclose that “the cover or housing may include a
recessed groove defining a venting channel. The space may include a single
venting channel, or a plurality of venting channels . . . .” Spec. 2, ll. 8-10.
Further, the Appellants’ Figure 13 shows ribs 96 formed on the battery shell
16 that ostensibly serve no purpose other than to move gas from under the
shell towards the outside of the shell. Figure 13. We additionally note that
designing and constructing vents in a polymer shell or cover would likely
require little if any experimentation - the nature of the invention and relative
level of skill in the art appear to require no more than technician-level
assistance.
In addition, the Fischer reference cited by the Examiner in rejecting
the claims on prior art grounds shows that venting gases from a battery
chamber in a razor is known in the art. The Examiner, in one of the § 103
rejections on appeal, states that “[g]asses may be vented in any of a thousand
different styles, just by the selection of the shape of the exit path. Creating a
differently shaped path is well within the level of ordinary skill . . . .” Ans.

In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

Appeal 2010-005892
Application 11/220,072

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8. As such, persons of ordinary skill in the art, working from the
Appellants’ disclosure, would be able to make and use the claimed
invention, including providing a space configured to allow gas to escape
from under the cover, without undue experimentation.
Accordingly, we do not agree with the Examiner that the claim term
lacks enablement under 35 U.S.C. § 112, first paragraph. The rejection of
the claims as failing to meet the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is not sustained.
The rationale employed by the Examiner in rejecting the claims as
indefinite under the second paragraph of that statutory section is the same as
that given for the enablement rejection. Ans. 5. This rejection is therefore
also not sustained.

Anticipation--Claims 1, 3, 11, and 12--Fischer
The Examiner found that Fischer discloses all the elements in claim 1
including a razor handle with “a cover disposed over the membrane and
aperture.” Ans. 6-7. The Examiner relies upon a magnified view of a
portion of Fisher’s Figure 9a (shown below) and annotates the figure to
relabel portions of the cover 70 as a “cover,” an “aperture in the housing,”
and a “space between the cover and the surface of the housing.” Ans. 7.

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Appeal 2010-005892
Application 11/220,072

8
a single conveyor held to not meet claim element requiring at least two
conveyors); In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring
three separate means not anticipated by structure containing two means
where one of the two means was argued to meet two of the three claimed
means). The Examiner improperly diminished the meaning of the elements
in claim 1 by labeling Fischer’s cover 70 as a cover, a housing, and a space
between the housing and cover. Ans. 5-7; Fischer, Figure 9a. Moreover,
even if Fischer’s monolithic cover 70 could properly be construed as having
separate housing and cover portions (possibly based on the portions having
the larger and smaller bores), the Examiner’s designation of the “space
between the cover and the surface of the housing” appears completely
arbitrary and not supported by the drawing. Accordingly, we find that the
Examiner improperly construed Fischer’s cover 70 as a housing, a cover,
and a space between the surface of the housing and the cover. The rejection
of claim 1, and of claims 3 and 11-12 depending therefrom, as anticipated by
Fischer is not sustained.

Obviousness--Claims 1, 3-7, 11, and 12—Fischer/Hoagland
The Appellants argue claims 1, 3-7, 11, and 12 as a group. We will
take claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner takes the position that Fischer teaches all limitations of
the claimed invention with the exception of a cover disposed over the
membrane and aperture. Ans. 7-9. The Examiner cites to Hoagland as
teaching a vent cover 42 disposed over a gas venting aperture 40. Hoagland,
Figure 8; col. 5, ll. 9-14; Ans. 8. The Examiner concludes that it would have
been obvious to provide the Fischer apparatus, which already includes a
Appeal 2010-005892
Application 11/220,072

9
membrane over a gas venting aperture, with a cover over the venting
aperture, as disclosed in Hoagland, to provide additional protection against
water ingress into the battery compartment. Id.; Hoagland, col. 5, ll. 9-14.
The Appellants contend that, in Hoagland, the cover is not disposed
over a membrane. Appeal Br. 9. The Examiner, however, relies on Fischer
for the disclosure of the membrane covering the aperture. Ans. 8. The
Appellants further argue that a person having ordinary skill in the art would
prevent the ingress of water into a venting aperture by using either the
membrane as disclosed by Fischer or the cover as taught by Hoagland, but
not both together. Appeal Br. 9. The Examiner counters that the cover as
taught by Hoagland is properly combinable with the membrane as disclosed
by Fischer because, even though they each separately function to keep out
water, when together they have an additive effect in protecting the battery
compartment.
The Appellants have not contested the Examiner’s position that the
proposed modification to Fischer would have an additive effect, and we find
the Examiner’s reasoning sound. As suggested by the Appellants, the
membrane and the cover function differently. Appeal Br. 9. This appears to
support the Examiner’s position regarding the additive effect – for example,
a membrane can prevent smaller objects, such as individual water molecules,
from entering the battery compartment and a cover can prevent larger
objects, such as a stream of water or particulate matter, from reaching the
membrane.
The Examiner’s conclusion that it would have been obvious to modify
the Fischer device to include a cover as taught by Hoagland over the
membrane and gas venting aperture disclosed by Fischer, to provide
Appeal 2010-005892
Application 11/220,072

10
additional protection against water ingress into the battery compartment, has
not been persuasively shown to be unreasonable or lacking in rational
underpinnings. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The rejection of claim 1, and of claims 3-7, 11, and 12 grouped
therewith, as being unpatentable over Fischer in view of Hoagland is
sustained.

Obviousness--Rejection of remaining claims--Lowery/Pedicini/Hoagland
The Appellants argue claims 1, 3-7, 11, and 12 as a group. We will
take claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner takes the position that Lowery and Pedicini disclose all
the limitations of the claimed invention with the exception of a cover
disposed over the membrane and aperture.2 Ans. 10-11 and 18-19. To meet
the missing limitation, the Examiner again cites to Hoagland as teaching a
vent cover 42 disposed over a gas venting aperture 40, and concludes that it
would have been obvious to provide the Lowery device, as modified by
Pedicini to include a membrane over a gas venting aperture, with
Hoagland’s cover 42, to provide additional protection against water ingress
into the battery compartment. Ans. 11; Hoagland, Figure 8; col. 5, ll. 9-14.
The Appellants have not contested the Examiner’s combination of
Lowery and Pedicini. The Appellants, as they did in contesting the rejection
over Fischer and Hoagland, argue that a person having ordinary skill in the

2 In particular, the Examiner relies on Lowery as disclosing a razor handle
with a sealed battery compartment, and Pedicini as teaching the membrane
covering an aperture for venting gas from a battery compartment. Ans. 11.
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11
art would prevent the ingress of water into a venting aperture by using either
the membrane as disclosed by the Lowery and Pedicini combination, or the
cover as taught by Hoagland, but not both together. Appeal Br. 11. The
Examiner again counters that the cover taught by Hoagland is properly
combinable with the membrane as disclosed by the Lowery and Pedicini
combination because, even though they each separately function to keep out
water, when together they have an additive effect in protecting the battery
compartment.
For the same reasons noted above, we are not persuaded that the
Examiner erred in combining Hoagland with Lowery and Pedicini. The
rejection of claim 1, and of claims 3-7, 11, and 12 grouped therewith, as
being unpatentable over Lowery in view of Pedicini and Hoagland is
sustained.

CONCLUSIONS
The Examiner erred in rejecting the claims as failing to meet the
enablement requirement and as being indefinite.
The Examiner erred in concluding that the subject matter of claim 1
would have been anticipated by Fischer.
The Examiner did not err in concluding that the subject matter of
claim 1 would have been obvious over Fischer and Hoagland.
The Examiner did not err in concluding that the subject matter of
claim 1 would have been obvious over Lowery, Pedicini, and Hoagland.

DECISION
Appeal 2010-005892
Application 11/220,072

12
The rejections of claims 1, 3-7, 11, and 12 under the first and second
paragraphs of 35 U.S.C. § 112 are reversed.
The rejection of claims 1, 3, 11, and 12 as being anticipated by
Fischer is reversed.
The rejections of claims 1, 3-7, 11, and 12 as being obvious over
Fischer and Hoagland are affirmed.
The rejections of claims 1, 3-7, 11, and 12 as being obvious over
Lowery, Pedicini, and Hoagland are 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)(1)(iv).

AFFIRMED

JRG