KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Oct 5, 2020

2020000606 (P.T.A.B. Oct. 5, 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.
15/035,878 05/11/2016 JAN BENNIK 2013P01597WOUS 6985
24737 7590 10/05/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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 JAN BENNIK, ROBBERT FREERK JOHAN VAN DER SCHEER,
MARTINUS BERNARDUS STAPELBROEK, ALBERT JAN AITINK,
and EVERHARDUS JOHANNES HOEXUM
____________

Appeal 2020-000606
Application 15/035,878
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Koninklijke Philips N.V., as the
Applicant and real party in interest. Appeal Br. 1.
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Application 15/035,878
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THE INVENTION
Appellant’s invention is an electric hair trimmer. Spec. 1. Claim 1,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A blade set of a hair cutting appliance, said blade set being
arranged to be moved through hair in a moving direction to cut hair,
said blade set comprising:
a stationary blade comprising at least one toothed cutting edge, and
a lateral end, wherein the stationary blade further comprises a first
surface that is arranged, when in use for shaving purposes, as a skin-
contacting surface,
a movable blade comprising a toothed cutting edge, wherein the
stationary blade and the movable blade are arranged to be reciprocally
moved with respect to each other in a cutting or lateral direction (Y)
that is perpendicular to the moving direction, and
a lateral protecting element associated with the lateral end that
comprises a lateral end cap of the stationary blade,
wherein the lateral protecting element laterally shields a lateral
edge of the lateral end, such that, when in use, skin contact of the
lateral edge is prevented, and
wherein the lateral protecting element and the lateral end
cooperate so as to prevent hairs from being trapped there between,
wherein the lateral protecting element further comprises a recess
portion, and
wherein the stationary blade further includes a lateral opening at
the lateral end,
wherein the lateral opening comprises as an extension of a guide
slot in the stationary blade for the movable blade,
wherein (i) the recess portion of the lateral protecting element
and (ii) the lateral opening of the stationary blade at least partially
overlap each other, and
wherein the recess portion exposes at least a portion of the lateral
opening to enable a removal of hair cutting particles and debris
through the lateral end, further
wherein the recess portion in the lateral protecting element
comprises a hole portion provided at a side thereof facing away from
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the skin when in use, and wherein the lateral protecting element
further comprises, at a skin-facing side thereof, a bar portion
adjacent to the recess portion, and
wherein the stationary blade and the movable blade comprise at
least steel, and the lateral protecting element comprises a plastic
material.
THE REJECTIONS2
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Sussman US 2,242,405 May 20, 1941
Hanley US 2,246,586 June 24, 1941
Trichell US 4,899,444 Feb. 13, 1990
The following rejections are before us for review:
1. Claims 1–11 and 13–15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hanley and Sussman.
2. Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable
over Hanley, Sussman, and Trichell.
OPINION
NEW GROUND OF REJECTION
Indefiniteness Under 35 U.S.C. § 112(b)
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness
under 35 U.S.C. § 112, is whether “those skilled in the art would understand

2 A rejection under 35 U.S.C. § 112(a) for lack of written description support
has been withdrawn by the Examiner. Ans. 10.
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what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). “If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious–the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970).
Section 112 places the burden of precise claim drafting on Appellant.
In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997). Appellant is in the
best position to resolve the ambiguity in patent claims, and it is highly
desirable that patent examiners demand that Appellant do so in appropriate
circumstances so that the patent can be amended during prosecution rather
than attempting to resolve the ambiguity in litigation. Halliburton Energy
Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (cited with
approval in Nautilus, 572 U.S. 898, 910 (2014). During patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Rigorous application of the statutory
standard to particularly point out and distinctly claim the subject matter
regarded to be the invention serve an important public notice function.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008).
With the foregoing legal principles in mind, we turn our attention to
Appellant’s claims.
Claim 1
Appellant discloses and claims a hair cutting appliance (hereinafter
“shaver”). Claims App. The shaver has two blades, a stationary blade and a
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movable blade, which move in a reciprocal manner with respect to each
other. Id. Each blade has cutting edges and “lateral” ends. Id. A plastic
cap or “protecting element” is disposed over each lateral end of the
stationary blade. Id. The plastic cap has a “recess” that is substantially
aligned with an opening at each lateral end of the stationary blade. Id. This
part of the claim is reasonably clear enough, however, the remainder of the
claim is quite confusing.
The claim refers to “removal” of hair cutting particles and debris. Id.
However, such removal is in reference to the “lateral end,” which is a
structural element of the stationary blade. Id. The “recess” portion of the
plastic cap comprises a “hole” portion. Id. However, it is unclear whether
the “hole” penetrates all of the way through the plastic cap so as to create an
aperture. Such ambiguity is attributable to claim language that only appears
to require a hole portion at “a” side of the plastic cap and, more specifically,
to the side that faces away from the skin.
We confess to be confused over whether and to what extent hair and
debris is removed from the entire shaving apparatus via a “hole” in the
plastic cap as opposed to being removed from just the stationary blade and
then captured and retained in the “recess” in the plastic cap. Normally, we
would expect the word “hole” to refer to some sort of aperture that
penetrates both sides of a surface such as in the phrase “hole in the wall.”
Our confusion stems, in part, by claim language that refers to a “hole” being
provided “at” a side of the cap instead of being provide “through” a side of
the cap. It is unclear to us whether Appellant uses the word “hole” to refer
to the rim or lip of an otherwise substantially enclosed recess or receptacle.
If it is, we would consider this to be an inartful use of the word “hole,” when
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the English language offers so many better alternatives. Thus, it is unclear
to us if the “hole” is part of the claimed “recess” or is supposed to be a
separately identifiable element that is distinct from the “recess.”
Appellant’s Specification and drawings provide little, if any, clarity to
the issue. The Specification teaches that – “The lateral protecting
element 56d illustrated therein [referring to Fig. 12] comprises a recess
portion 80 that may be shaped as a deepening or a hole portion.” Spec. 20,
ll. 14–15. We cannot reliably determine whether “deepening or a hole
portion” refers to a redundancy, i.e., two ways of saying the same thing
(“deepening = hole”); or whether it refers, in the alternative, to two different
structures: (1) a deepening; or (2) a hole. Recess portion 80 is illustrated
only in Figure 12. Figure 12 is a flat, two dimensional drawing in the x, z
plane. Id. We cannot tell, from the drawing, whether element 80 is an
aperture that allows debris to pass through or whether element 80 is merely
an entrance to a recess/receptacle that includes additional, enclosing
structure at a “deepening” that resides in the y axis outside of the x, z plane.
The Specification states that a portion of lateral opening 38 is “accessible”
so that hair and debris can be removed therefrom. Spec. 20, ll. 22–23.
However, it remains unclear to us whether such access is gained through a
hole or aperture in the plastic cap or by some other means, such as
temporary removal of the plastic cap to empty a receptacle formed by a
recess in the plastic cap.
The foregoing confusion and uncertainty in the claim language needs
to be cleared up before we can reasonably expect the Examiner to search for
prior art and then apply the appropriately clarified claim language to the
prior art for purposes of formulating a prior art rejection. To the extent that
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the Examiner may need to propose modifications to one or more pieces of
prior art to satisfy the claim language, we cannot reasonably expect the
Examiner to articulate whether appropriate modifications fall within or
without the ambit of ordinary skill in the art for purposes of an obviousness
analysis unless the extent of the modifications required are evaluated in
terms of precise, properly construed, claim recitals.
In view of the foregoing discussion, we hereby enter a NEW
GROUND OF REJECTION rejecting claim 1 under 35 U.S.C. § 112(b) for
failing to particularly point out and distinctly claim the subject matter which
the inventor(s) regard as the invention.
Claims 2–15
These claims all depend from claim 1 and are hereby rejected under
35 U.S.C. § 112(b) by reason of their dependency from claim 1. We leave to
the Examiner, upon resumption of prosecution, whether additional or more
specific rejections should be applied to these claims.
Prior Art Rejections of Claims 1–15
Because we have concluded that claims 1–15 are indefinite, the prior
art rejection of these claims must fall because it is necessarily based on a
speculative assumption as to the meaning of the claims. In re Steele, 305
F.2d 859, 862 (CCPA 1962).
Thus, we reverse, without reaching the merits, of the Section 103 prior
art rejections of claims 1–15.

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CONCLUSION
Claims
Rejected
§ References/Basis Affirmed Reversed New
Ground
1-15 112 Indefiniteness 1-15
1-11, 13-15 103 Hanley, Sussman 1-11, 13-15
12 103 Hanley, Sussman,
Trichell
12
Overall
Outcome
1-15
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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).
REVERSED; 37 C.F.R. § 41.50(b)