KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Oct 29, 2020

2020001173 (P.T.A.B. Oct. 29, 2020)

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.
14/772,158 09/02/2015 Josty Winters 2014P00053WOUS 2207
24737 7590 10/29/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
DAVIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSTY WINTERS and FOKKE VOORHORST
__________

Appeal 2020-001173
Application 14/772,158
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Koninklijke Philips N.V. Appeal Br. 3.
Appeal 2020-001173
Application 14/772,158

2
STATEMENT OF THE CASE
The claims are directed to a rotary shaver. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A rotary shaver, comprising:
an external cutting element including a passage; and
a disc-shaped element covering at least part of the
external cutting element,
wherein the disc-shaped element includes a pen having a
length,
wherein the pen includes at least three ribs longitudinally
extending parallel to the length of the pen, and
wherein the at least three ribs are press-fitted in the
passage to form at least three vents [],
wherein each vent is formed by a different area of the
wall of the passage and a different pair of adjacent ribs.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gilman US 3,722,929 Mar. 27, 1973
Cooksey US 5,017,068 May 21, 1991
Shimizu US 2009/0320295 A1 Dec. 31, 2009

REJECTIONS2
Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Shimizu and Cooksey. Final Act. 3.

2 The drawings are objected to under 37 C.F.R. § 1.83(a). See Final Act. 2.
However, the objection is not within the jurisdiction of the Board. See 37
C.F.R. § 1.181.

Appeal 2020-001173
Application 14/772,158

3
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Shimizu, Cooksey, and Gilman. Final Act. 7.

OPINION
Claim 1 requires, among other limitations, a rotary shaver comprising
an external cutting element that has a passage and a disc-shaped element that
has a pen with at least three ribs. Appeal Br. 18 (Claims App.). Claim 1
recites that “the at least three ribs are press-fitted in the passage to form at
least three vents,” “wherein each vent is formed by a different area of [a]
wall of the passage and a different pair of adjacent ribs.” Id.; emphasis
added. The Examiner finds that Shimizu discloses a rotary shaver having “at
least three ribs [that] are press-fitted in the passage and at least one vent is
formed (annotated fig. 4).” Final Act. 3. Appellant argues that Shimizu does
not disclose a vent as required by claim 1. See Appeal Br. 10–14.
We agree with Appellant that Shimizu does not disclose the required
vent. The Examiner’s annotated Figure 4 of Shimizu is reproduced below.

Figure 4 of Shimizu “is an exploded perspective view of one cutter assembly
which has been disassembled.” Shimizu ¶ 26.
Appeal 2020-001173
Application 14/772,158

4
Annotated Figure 4 is a partial and modified Figure 4 of Shimizu in
which the Examiner identifies portions of the figure as “pen of disc-shaped
element,” “ribs,” “wall of passage,” and “first vent.” Final Act. 4. “[I]t is
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). At the same
time, we have been instructed by our reviewing court that they “did not
mean that things patent drawings show clearly are to be disregarded.” In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis in original). The key
term here being “clearly.” In this case, the Examiner does not direct us to
any passage in Shimizu’s written description that discloses a vent formed
between a pen of a disc-shaped element and an external cutting element, and
Figure 4 of Shimizu does not clearly disclose such a vent.
Further, the Examiner acknowledges that “Shimizu fails to disclose
the at least three ribs form at least three vents, wherein each vent is formed
by a different area of the wall of the passage and a different pair of adjacent
ribs when the pen is press fitted into the passage;” the Examiner relies on
Cooksey for this missing limitation. Final Act. 5. The Examiner reasons that
it would have been obvious to modify the rotary shaver of Shimizu
with the teaching of Cooksey such that the ribs of Shimizu
press against a smooth inner wall of Cooksey that circumscribes
the outer portion of each rib to create a press-fit therebetween
since Cooksey teaches an obvious variant in the art and the
selection of any of these known equivalents would be within
the level of ordinary skill in the art.
Id.; emphases added. Appellant contends that “Cooksey fails to describe,
teach or suggest a modification of Shimizu to incorporate vents as
Appeal 2020-001173
Application 14/772,158

5
encompassed by the aforementioned limitations of independent claim 1 on
appeal.” Appeal Br. 14; see also Reply Br. 14 (arguing that the Examiner’s
assertion that Cooksey’s ribs 22, 24, 26 “supports a modification of Shimizu
to incorporate vents” “is erroneous”).
We also agree with Appellant that the Examiner errs in proposing the
modification of Shimizu’s rotary shaver in view of Cooksey’s disclosure, in
the manner explained in the Final Office Action.
[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall
be entitled to a patent unless,’ concerning novelty and
unobviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its
rejection of an application under sections 102 and 103.
In re Warner 379 F.2d 1011, 1016 (CCPA 1967). During prosecution, the
United States Patent and Trademark Office (“PTO”) bears the initial burden
of establishing a prima facie case of obviousness. In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, the
Examiner relies on the three vents of Cooksey as a variant or equivalent of
the vent of Shimizu, yet––as explained above––we do not agree with the
Examiner that Shimizu discloses a vent. Absent such a vent, it is unclear
what structure of Shimizu is a “variant” or an “equivalent” of Cooksey’s
three vents, for the sake of simple substitution. It is also unclear how any
structure of Shimizu could be considered a “variant” or an “equivalent” of
Cooksey’s three vents, and vice versa. Thus, the Examiner has not
articulated adequate reasoning, including a rational underpinning drawn
Appeal 2020-001173
Application 14/772,158

6
from the cited references, for the combination of Shimizu and Cooksey, and
has not carried the burden of establishing obviousness.
The Examiner’s rejections are predicated on the incorrect findings and
lack of rational underpinnings discussed above. Thus, the obviousness
rejections are not sustained.
CONCLUSION
The Examiner’s rejections of claims 1–4 are reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4 103 Shimizu, Cooksey 1, 2, 4
3 103 Shimizu, Cooksey,
Gilman
3
Overall
Outcome
1–4

REVERSED