Ex Parte Blaauw et al

Patent Trial and Appeal Board

Oct 23, 2012

10523431 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte HUBERT SJOERD BLAAUW and
HANS DE BEURS
____________________

Appeal 2010-009815
Application 10/523,431
Technology Center 3700
____________________

Before: JAMES P. CALVE, BRETT C. MARTIN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009815
Application 10/523,431

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-7, 10-17, and 25-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claims are directed to a cutting element as used in an electric
shaver. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cutting element as used in an electric shaver, manufactured
from maraging or precipitation-hardenable stainless steel with a
surface hardened by plasma nitriding, wherein the cutting
element is precipitationally hardened simultaneously with the
plasma nitriding on all surfaces of the cutting element to form a
surface top layer of steel supersaturated with nitrogen and a
diffusion layer adjoining the top layer with a hardness ranging
from the hardness of the top layer to the hardness of the steel
before hardening so that the top layer has a substantially
uniform hardness and the diffusion layer has a decreasing
hardness with depth of the diffusion layer, the decreasing
hardness of the diffusion layer decreasing from outer portions
of the diffusion layer toward a center of the diffusion layer and
meeting at the center of the diffusion layer to form a minimum
peak at the center, wherein a hardness at the center of the
diffusion layer is an original hardness the stainless steel.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cole
Yamada
Rosenhan
US 4,259,126
US 5,857,260
US 5,953,969
Mar. 31, 1981
Jan. 12, 1999
Sep. 21, 1999
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Domoto
Gerasimov
Lim
US 6,354,008
US 6,584,691
US 6,662,614
Mar. 12, 2002
Jul. 1, 2003
Dec. 16, 2003
Oiwa JP 60162766 Aug. 24, 1985
Askeland, 5-5 Rate of Diffusion (Fick’s First Law), The Science and
Engineering of Materials, 112, 114 (3rd ed. 1994) (hereinafter “Askeland”).
Blawert, Surface treatment of nitriding steel 34CrAlNi7: a comparison
between pulsed plasma nitriding and plasma immersion ion implantation,
Surface and Coatings Technology 98, 1181-1186 (1998) (hereinafter
“Blawert”).
Liang, Low pressure plasma arc source ion nitriding compared with glow-
discharge plasma nitriding of stainless steel, Surface and Coatings
Technology 145, 31-37 (2001) 31-37 (hereinafter “Liang”).
Applicants’ Admitted Prior Art (AAPA), Specification, p. 4, ll. 26-28
(hereinafter “AAPA”).

REJECTIONS
Appellants seek our review of the following rejections:
Claim 17 is provisionally rejected under the judicially created doctrine
of obviousness-type double patenting over claims 1-6 of co-pending U.S.
patent Application No. 10/522,287.
Claims 1, 4-7, 10, 13, 14, 16, and 25-27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Domoto, Oiwa, and Rosenhan, in
witness of AAPA, Liang, Blawert, Askeland, and Lim. Ans. 3.
Claims 2, 3, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the modified device of Domoto and Yamada. Ans. 7.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the modified device of Domoto, as applied to claims 1, 4-7, 10, 13, 14,
16, and 25-27, and Gerasimov. Ans. 8.
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Claims 17 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the modified device and method of Domoto, as applied to
claims 1, 4-7, 10, 13, 14, 16, and 25-27, and Cole. Ans. 9.

ANALYSIS
1. Provisional obviousness-type double patenting
Appellants have appealed the Examiner’s provisional rejection of
claim 17 on the ground of nonstatutory obviousness type double patenting
over Application No. 10/522,287, which has matured into US. Patent No.
7,754,028, iss. Jul. 13, 2010. App. Br. 9-11; see Final rej. 2. However, this
rejection does not appear in the Answer. Although the Answer does not
specifically state that the rejection is withdrawn, it appears that this was the
Examiner’s intent, and we will treat the rejection as withdrawn.
2. Obviousness
a. Rejection of claims 1, 4-7, 10, 13, 14, 16, and 25-27
Appellants argue these claims as a group. App. Br. 11-16. We select
claim 1 as representative and decide the appeal with respect to all claims in
this group on the basis of claim 1 alone; see 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner found that Domoto discloses the cutting blade as
claimed except that the steel is a maraging or precipitation hardening steel
that is hardened simultaneously with precipitation hardening and plasma
nitriding to yield the hardness profile recited in the claim. Ans. 3-4. The
Examiner further found that Oiwa discloses plasma nitriding, that Rosenhan
discloses “combining” precipitation hardening with plasma nitriding, and
that recited hardness profile is “intrinsic in the process of plasma nitriding a
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precipitationally hardened steel” as evidenced by Liang, Blawert, Askeland,
and Lim. Id. at 4-6 (quotation from 6). The Examiner concluded that it
would have been obvious to modify Domoto’s cutting element to benefit
from the known advantages of precipitation hardening and plasma nitriding.
Ans. 5.
Appellants argue that a “cutting element which is precipitationally
hardened simultaneously with the plasma nitriding is nowhere disclosed or
suggested in Domoto[,] Oiwa, Rosenhan and Lim, alone or in combination”
(emphases omitted) and that “Rosenhan merely recites that ‘heat-treatment--
age-hardening or precipitation-hardening--is to be combined with plasma
nitrating.’ ” App. Br. 13 (quoting Rosenhan col. 2, ll. 27-29).
Appellants further argue that:
the combination of Domoto, Oiwa and Rosenhan still does not
disclose or suggest a diffusion layer with decreasing hardness
that decreases “from outer portions of the diffusion layer
toward a center of the diffusion layer and meeting at the center
of the diffusion layer to form a minimum peak at the center,” as
recited in independent claim 1…. Rather, Rosenhan shows in
FIG 2 that the hardness decreases away from the center to reach
a plateau near the center.1
App. Br. 14 (emphases omitted). Appellants also argue that the claimed
hardness profile is “NOT intrinsic to the process of hardening” and that:
[I]f hardening is not performed long enough, then a plateau
having a certain hardness would result near the center without
“meeting at the center of the diffusion layer to form a minimum
peak at the center.” (Independent claims 1, 7, 10 and 17)[.]
Further, if hardening is performed for too long, then the

1 Appellants’ interpretation of Rosenhan Fig. 2 is incorrect. Rosenhan
shows that hardness is highest at the surface (range “d,” see col. 3, ll. 12-13),
lower in the intermediate layer (range “D,” see col. 3, ll. 15-16) and lowest
in the core, i.e., in a depth of more than 0.2 mm (see col. 3, ll. 6-8).
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hardness at the center would no longer be the original hardness;
rather the hardness at the center would be greater than the
original hardness.
App. Br. 14-15 (emphases omitted).
In response, the Examiner cites a dictionary definition for the term
“combine” when used as a transitive verb to mean to “do things
simultaneously” and finds that it is reasonable to interpret Rosenhan’s
disclosure of combining precipitational hardening with plasma nitriding as
meeting the claimed simultaneous treatment. Ans. 10. The Examiner also
finds that Appellants’ Specification evidences a lack of criticality in the
temporal ordering of the hardening and plasma nitriding when it indicates at
p. 4, ll. 26-28 that the “[m]araging steel and precipitation-hardenable
stainless steel can undergo a precipitation hardening step prior to or together
with the plasma nitriding step according to the invention.” Id. The
Examiner further finds that:
the outcome of plasma nitriding a steel is intrinsic, not the act
of hardening. However, both[] hardening and plasma nitriding a
maraging steel were known in the art. Where the general
conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by
routine experimentation.
Ans. 11. In reply, Appellants reiterate the arguments presented in the
Appeal Brief with respect to the recited hardness profile. Reply Br. 2-4.
We are not persuaded by Appellants’ argument. First, with regard to
whether Rosenhan’s disclosure of combined precipitational hardening and
plasma nitrating meets the claimed simultaneous precipitational hardening
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and plasma nitriding,2 the preponderance of the evidence in the record favors
the Examiner’s interpretation. Appellants have not challenged the
Examiner’s dictionary definition of the term “combine,” and we do not find
that definition to be an unreasonable one.
Second, Appellants’ arguments concerning whether the cited
references disclose the claimed hardness profile and whether the claimed
hardness profile is intrinsic to the hardening and plasma nitriding processes
are non-responsive to the Examiner’s rationale for finding obviousness of
the subject matter of claim 1. The Examiner found that the combination of
Domoto, Oiwa, and Rosenhan would intrinsically result in a cutting edge in
which decreasing hardnesses in the diffusion layer would meet at the center
of the diffusion layer to form a minimum peak at the center, in which the
hardness at the center would be the original hardness of the stainless steel.
The Examiner supported this finding with a detailed analysis of Liang,
Blawert, Askeland, and Lim. Appellants’ arguments do not address this
detailed analysis; instead, Appellants argue a distinction between
Rosenhan’s “plateau” of hardness and the claimed “minimum peak” as well
as unfavorable results from suboptimal hardening durations. Appellants do
not propose a definition of “minimum peak” or point to a definition of
“minimum peak” in their Specification that distinguishes from Rosenhan’s
plateau, and the claim imposes no limitations of the duration of hardening.
These arguments consequently do not identify errors in the rejection. We
have considered Appellants’ remaining arguments and find them

2 Appellants have not identified any difference between Rosenhan’s “plasma
nitrating” and the claimed “plasma nitriding.” We therefore accept these
terms as equivalent for the purposes of this appeal.
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unpersuasive as well. We therefore find that Appellants have identified no
reversible error in the rejection.
b. Rejection of claims 2, 3, 11, and 12
Appellants do not argue for separate patentability of these claims.
App. Br. 16. We sustain the rejection for reasons similar to those given
above.
c. Rejection of claim 15
Appellants do not argue for separate patentability of this claim. App.
Br. 16. We sustain the rejection for reasons similar to those given above.
d. Rejection of claims 17 and 28
Appellants argue for patentability of claim 17 with arguments
analogous to those given with respect to claim 1. App. Br. 16-17.
Appellants do not argue for separate patentability of claim 28. Id. at 17. We
sustain the rejection for reasons similar to those given above.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-7, 10-17,
and 25-28 is 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

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