Ex Parte Winter et al

Patent Trial and Appeal Board

Aug 15, 2016

13551109 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/551,109 07/17/2012
27752 7590 08/17/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Florina Winter
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.
Z-4807DQ 5692
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORINA WINTER, CHUNF ANG SONG,
DONGFANG, RANMIN WANG,
BRIAN WILLIAM CATALDO, and JING JUN XIA
Appeal2014-008697
Application 13/551,109
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Florina Winter et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1-3 and 5-18. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
None of rejections I-V, noted below, includes claim 6 in either the
rejection heading, or in the discussion of the claims. As such, there is no
outstanding rejection of claim 6, and thus, claim 6 is not part of the present
Appeal.
Appeal2014-008697
Application 13/551,109
CLAIMED SUBJECT MATTER
The claims are directed to a razor handle. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of making a razor handle comprising:
(a) providing an at least partially hollow elongated
structure, the elongated structure having an interior surface, an
exterior surface, a first opening at a proximate end, and a second
opening along a length of the elongated structure, the second
opening extending from the interior surface to the exterior
surface; and
(b) providing, within said elongated structure, an at least
partially hollow sleeve having an interior surface and an exterior
surface comprising a protrusion, wherein the protrusion extends
through the second opening to the exterior surface of the
elongated structure thereby forming a gripping member,
wherein, at the first opening, the proximate end of the elongated
structure is adapted to separably engage a proximate end of a
cartridge support structure.
Appeal Br. 20.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Burout
Miller
Hardin
Gyllerstrom
Dansreau
Kludjian
us 4,949,457
us 5,027 ,511
us 5,070,614
US 6,880,253 B 1
US 2004/0103545 Al
US 2005/0066532 Al
2
Aug.21, 1990
July 2, 1991
Dec. 10, 1991
Apr. 19, 2005
June 3, 2004
Mar. 31, 2005
Appeal2014-008697
Application 13/551,109
REJECTIONS
I. Claims 1 and 3 are rejected under 35 U.S.C. § 102(b) as anticipated by
Kludjian.
II. Claims 1-3, 7, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Burout.
III. Claims 1, 9-13, and 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Miller and Gyllerstrom.
IV. Claims 1, 5, 9, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Miller and Hardin.
V. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller, Gyllerstrom, and Dansreau.
ANALYSIS
Rejection I
Claim 1 recites, in part, "wherein, at the first opening, the proximate
end of the elongated structure is adapted to separably engage a proximate
end of a cartridge support structure." Appeal Br. 20.
The Examiner finds that Kludjian meets this limitation because at the
first opening (opening that allows the input of sleeve 106), (i) "[b ]oth sides
of the elongated structure 101 engage the cartridge support structure" and
(ii) "alternatively, the side is capable of engaging another cartridge support
from another razor, etc." Final Act. 3.
Appellants assert that the finger opening of Kludjian "is configured to
receive a finger of the razor user," and "nowhere in Kludjian is there
discussion of separably engaging a cartridge support structure to a proximate
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Application 13/551,109
end of an elongated structure." Br. 5 (emphasis added). Appellants argue
that the only element of Kludjian "that could be considered a cartridge
support structure is the 'short neck,'" which is described and illustrated in
Kludjian as "integrally formed with the ring shaped handle," and thus, "there
is no disclosure (because there is no need) for a first opening at the
proximate end adapted to separably engage a proximate end of a cartridge
support structure." Id. (citing Kludjian, reference numeral 102; Fig. 10).
In the Answer, the Examiner responds that the "limitation of being
'adapted to separately engage a proximate end of a cartridge support
structure,"' is "a recitation of the intended use of the claimed invention" and
that the opening of Kludjian "is clearly capable of engaging a proximate end
of a cartridge support structure in the same manner that the entire handle is
capable of engaging another structure." Ans. 11. The Examiner takes the
position that "[t]here is no recitation of a structural feature that engages the
cartridge support structure or a method step of performing the engagement,"
that distinguishes over Kludjian. Id.
Although the Examiner correctly identifies the limitation "adapted to
separably engage" as a recitation of an intended use, the Examiner does not
adequately explain how the opening at the proximate end of the elongated
structure of Kludjian is capable of separably engaging a proximate end of a
cartridge support structure. A person of ordinary skill in the art would
understand Kludjian to disclose a cartridge support structure at neck 102 to
support blade assemblies 114, 118. See Kludjian i-fi-138, 41, and 42; Figs. 9
and 10; see also Final Act. 3. A proximate end of neck 102 of Kludjian does
not separably engage the elongated structure at the first opening (opening
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Appeal2014-008697
Application 13/551,109
that allows the input of sleeve 106), because the neck is an extension of, i.e.,
integral with, the body of the elongated structure. See, e.g., Kludjian, Fig. 9.
Regarding whether the ring handle in Kludjian meets the above-noted
limitation, the phrase "separably engage" in claim 1 must have a meaning
consistent with Appellants' Specification. Appellants' Detailed Description
explains that "[p ]roximate end 302 is adapted to engagably mate with the
proximate end 112 of the elongated structure 104, as shown in FIG. 4," and
that, for example, "the cartridge support structure 300 includes rib 312 for
engagably mating with groove 118." Spec. 5, 11. 19-24; Figs. 3 and 4.
Although the entirety of the disclosed structure is not required, one of
ordinary skill in the art would understand claim 1 to require structure that is
adapted specifically to engage the cartridge support structure. Contrary to
the Examiner's finding, mere contact, or incidental contact as may occur if
cartridge support structure were placed within the ring handle of Kludjian,
does not satisfy this requirement. See Ans. 10-11. In view of this, the
Examiner has not established a prima facie case of anticipation and, thus, the
rejection of claim 1 and claim 3 depending therefrom as anticipated by
Kludjian is not sustained.
Rejection II
Appellants argue Burout is not anticipatory because Burout "does not
disclose, inter alia, providing an at least partially hollow elongated structure
.... and, providing, within said elongated structure, an at least partially
hollow sleeve," as required by claim 1. Br. 8. Appellants assert that by
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Appeal2014-008697
Application 13/551,109
contrast, "Burout discloses a hollow sleeve (outer layer 19) wrapped around
an elongated structure (rigid core 10)." Id.
In the Answer, the Examiner replies:
Although Burout discloses that the covering/partially hollow
elongated structure 19 is moldably formed about the core 10, (see
col. 2, lines 21-25), the end result is []an at least partially hollow
elongated structure (19), the elongated structure having an
interior surface (against the core 10), an exterior surface (that can
be gripped), a first opening (as shown in fig. 6 that surrounds the
core 10) at a proximate end, and a second opening (formed from
flowing under the raised area 14) along a length of the elongated
structure, the second opening extending from the interior surface
(against the core) to the exterior surface (gripping surface) that
has been "provided".
Ans. 12-13. The Examiner notes that "[t]he claims do not specify how these
features are arrived at, provided for, or in what order they are provided," and
the Examiner declines to import limitations from the Specification into the
claims. Id. at 13 (citing Irz re Van Geuns; 988 F.2d 1181 (Fed. Cir. 1993)).
Although the Examiner's reasoning may be correct for a device claim,
here, as a matter of logic or grammar, the language of the method claims
impose a specific order on the performance of the method steps. As
Appellants point out, the sleeve must be provided within the elongate
structure. In the context of method claim 1, in order to provide a sleeve
within another structure, the structure must already exist. See Spec. 4, 1. 29-
5, 1. 5. As such, we agree with Appellants that wrapping or flowing resilient
portion 19 of Burout to form a covering layer over the sleeve (see Burout,
col. 2, 11. 8-15; cf Specification 4, 1. 29-5, 1. 1) does not correspond to
providing a sleeve within an elongated structure as required by the method
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Application 13/551,109
of claim 1. Accordingly, the rejection of claims 1-3, 7, and 8 as anticipated
by Burout is not sustained.
Rejection III
Claim 1 recites, in part, wherein, at the first opening, the proximate
end of the elongated structure is adapted to separably engage a proximate
end of a cartridge support structure. Appeal Br. 20. Independent claim 9
includes a similar recitation. See Appeal Br. 21.
The Examiner finds that Miller discloses a first opening (between 26
and 28), but that the razor handle of Miller "is integral with the cartridge
support structure and therefore is not capable of performing the intended use
of being separably engaged with the cartridge support structure at the first
opening." Final Act. 5. The Examiner takes the position that "constructing
a formerly integral structure in various elements involves only routine skill
in the art." Id. (citing Nerwin v. Erlichman, 168 USPQ 177, 179 (Bd. Pat.
Int. 1969) ). The Examiner also relies on Gyllerstrom as disclosing
"manufacturing the cartridge support and the elongated structure in two
pieces and then assembling them by any known means such as press fitting,
ultrasonically welding, friction fitting, adhesion, etc." Id.
Appellants assert that "Miller, however, does not disclose or suggest f!:.
first opening at a proximate end," and rather, "Miller discloses a unitary
handle and razor cartridge support" having an attachment "for the razor
cartridge and there is no first opening at the proximate end of the elongated
handle." Br. 11.
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Appeal2014-008697
Application 13/551,109
In the Answer, the Examiner clarifies that the grip assembly 26
including insert 42 and grip portions 48 and 50 forms a hollow sleeve. See
Ans. 14--15. The Examiner notes that "Gyllerstrom discloses that the handle
portion 25 of the razor need not be hollow in order to function with the insert
member 42 of the cartridge." Id. at 17 (citing Gyllerstrom, col. 4, 11. 29-
52)2. The Examiner finds that Gyllerstrom is "very open as to how to create
a separable cartridge and handle system that would allow for easier
manufacture and replacement of the handle component/razor parts and
incorporating those teachings onto the Miller handle would not be rendered
unobvious by any subsequent design modifications to the Miller handle." Id.
Although we appreciate that grip assembly 26 of Miller forms a
partially hollow sleeve, the Examiner does not adequately explain why the
hollow sleeve would necessarily extend the entire length of grip assembly 26
so as to include an opening at the proximate end of grip assembly 26. Miller
discloses handle structure 16 having a reduced diameter portion 28 to which
a cartridge 10 is attached "by depending extensions 18, 20 that have
inwardly extending arcuate rail surfaces" that engage opposed members 22,
24 of the handle. Miller, col. 1, 11. 62---68; col. 2, 11. 3--4; Figs. 1-3. Such a
structure does not suggest an opening, and the Examiner has not identified
any other portion of Miller that establishes that Miller includes an opening at
the proximate end of the handle. Nor has the Examiner provided any
technical reasoning why the proximate end of the handle of Miller would
necessarily include an opening. Indeed, there is at least some indication that
2 The Examiner's citation to column 2, lines 29-52, appears to be a
typographical error in that all the material relied on by the Examiner is in
column 4, lines 29-52 of Gyllerstrom.
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Appeal2014-008697
Application 13/551,109
Miller would not include an opening at the proximate end because the
handle of Miller is "for shaving systems of the wet shave type" that would
want to prevent water from going into the handle. See Miller, col. 1, 11. 4--6;
cf Spec. 5, 11. 23-24, which discloses a handle "impervious to liquid."
The Examiner's citation to Nerwin v. Erlichman (see Final Action 5)
does not address the deficiency of Miller noted above. Furthermore,
although Gyllerstrom discloses a hole in a handle, the Examiner does not
rely on Gyllerstrom's hole, and instead, explicitly notes that "the handle
portion 25 of the (Gyllerstrom) razor need not be hollow in order to function
with the insert member 42 of the cartridge." Ans. 17. As such, the
Examiner has not made sufficient findings with respect to each claim
limitation, and, therefore, has not established a prima facie case of
obviousness. Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Miller and Gyllerstrom is not sustained. For the same
reasons, the rejection of independent claim 9, and of claims 10-13 and 15-
1 7 which depend from claim 9, is likewise not sustained.
Rejection IV
Rejection IV is substantially the same as rejection III except that the
Examiner relies on Hardin instead of Gyllerstrom for teaching a separable
cartridge support structure and handle. See Final Act. 8. Appellants refer to
the arguments in Rejection III that Miller does not include an opening in the
proximate end of the elongated structure. See Br. 15. In the Answer, the
Examiner responds that "reply to those arguments can be also referenced as
set forth above." Ans. 17. However, as discussed supra, the Examiner's
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Application 13/551,109
findings with respect to Miller are not supported by a preponderance of the
evidence. The Examiner's citation to Nerwin v. Erlichman (see Final Action
8) does not address this deficiency of Miller. Furthermore, although Hardin
discloses a hole in a handle, the Examiner does not rely on Hardin for this
feature and does not adequately explain why one of ordinary skill would
have found it obvious to modify the elongated structure of Miller to include
a hole at the proximate end. As such, the Examiner has not made sufficient
findings with respect to each claim limitation, and, therefore, has not
established a prima facie case of obviousness. Accordingly, the rejection
under 35 U.S.C. § 103(a) of claim 1, and of claim 5 depending therefrom, as
being unpatentable over Miller and Hardin is not sustained. For the same
reasons, the rejection of independent claim 9, and of claim 14 which
depends from claim 9, is not sustained.
Rejection V
We do not sustain the rejection of claim 18 as unpatentable over
Miller, Gyllerstrom, and Dansreau inasmuch as claim 18 depends from
claim 9 and the Examiner does not rely on Dansreau in any way that would
remedy the deficiency of the rejection of claim 9.
DECISION
The decision of the Examiner to reject claims 1-3, 5, and 7-18 is
reversed.
REVERSED
10