Ex Parte Damaschke

Patent Trial and Appeal Board

Aug 19, 2016

12514554 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/514,554 12/21/2009
27752 7590 08/23/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Robert Damaschke
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.
Z08029Q 1771
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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 ROBERT DAMASCHKE
Appeal2013-009523
Application 12/514,554
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 16
and 18-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2013-009523
Application 12/514,554
CLAIMED SUBJECT MATTER
The claims are directed to a washable personal grooming device.
Spec. 1. Claim 16, reproduced below, is illustrative of the claimed subject
matter:
16. A hair removal device comprising:
a housing; and
components arranged in the housing,
wherein at least a portion of the hair removal device is
coated with paraffin, and
wherein the components are arranged to move relative to
the housing, and a surface of one of the components is coated
with paraffin.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
England
Steele
Urena
Hashiguchi
Kwon
us 2,019,957
us 2,058,366
us 5,294,251
US 2005/0143755 Al
US 2005/0287112 Al
REJECTIONS
Nov. 5, 1935
Oct. 20, 1936
Mar. 15, 1994
June 30, 2005
Dec. 29, 2005
(I) Claims 16, 18-27, and 33-35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hashiguchi, Urena, and England.
(II) Claims 28-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hashiguchi, Urena, England, and Steele.
(III) Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hashiguchi, Urena, England, Steele, and Kwon.
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Application 12/514,554
OPINION
Re} ection (I)
The Examiner finds that Hashiguchi discloses most of the features
recited in claim 16, but does not disclose that a surface of one of the
components arranged in the claimed housing is coated with paraffin. Final
Act. 4. Nonetheless, the Examiner finds that Urena teaches the use of
microcrystalline paraffin wax as a coating for metal, plastics, and other
articles to provide waterproofing properties. Final Act. 4 (citing Urena, col.
1, 11. 15-30). The Examiner reasons that it would have been obvious to
modify the head of the hair removal device in Hashiguchi to be coated with
paraffin wax in order to protect the blades from corrosion because the device
is typically used in environments with high moisture. Final Act. 4--5 (citing
England, col. 3, 11. 41--45). The Examiner also reasons that the proposed
modification would "add lubrication when applying the blades to the surface
of the skin." Final Act. 5.
Appellant argues that the Examiner's above-noted reasoning relies on
impermissible hindsight. Br. 2. Specifically, Appellant asserts that
Hashiguchi is silent as to the composition of the drive components of its hair
removal device. Br. 2. Although Appellant "agrees that the device of
Hashiguchi may be used in a humid environment," Appellant asserts that
"nothing in [Hashiguchi] suggests that such an environment is of any
detriment to the device." Br. 2. In this regard, Appellant contends, "[t]he
[Examiner] gleaned no knowledge from the reference suggesting that a
coating would serve any purpose other than increasing the cost and
complexity of the underlying device." Br. 2.
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Application 12/514,554
In response, the Examiner states, "both Urena and England teach that
it is known in the art at the time of the invention to apply a wax coating to
surfaces of metal parts to protect against corrosion and Urena further
specifically teaches using a paraffin coating (column 1, lines 31-32)." Ans.
2.
Hashiguchi provides a motor powered by alternating current or by a
battery. Hashiguchi i-f 27. Hashiguchi teaches that "shaving head 300
carries an outer shearing foil 310 and an inner cutter 320 which is driven to
reciprocate along the horizontal axis of the head in a shearing engagement
[with] the shearing foil 310 for cutting the hairs, as shown in FIG. 10."
Hashiguchi i-f 26. Hashiguchi further teaches that blades 61 are shaped from
a metal plate and "movable blade 71 is made of a metal." Hashiguchi i-f 33.
Urena states its disclosure "is directed to coating compositions to
provide microcrystalline wax coatings on articles. More particularly, the
invention relates to a microcrystalline paraffin wax-containing compositions
for producing water repellent coatings, electrical insulating coatings, and
mold release coatings on an article." Urena, col. 1, 11. 6-12. Urena states,
"[i]ron and iron alloys are particularly prone to corrosion, which if allowed
to proceed, detracts from the appearance of the article and can penetrate
deeply into the metal to impair its mechanical properties. Most other metals
also corrode upon exposure to water and air, although to different extents."
Urena, col. 1, 11. 16-22. Thus, Urena teaches the use of paraffin wax coating
to protect metal components from water-related corrosion.
England provides a shaving unit including a razor. See England, col.
1, 11. 1-5. England teaches dipping its razor into paraffin wax "to preserve
the blade against rust." England, col. 3, 11. 47--48.
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Appeal2013-009523
Application 12/514,554
The above-noted disclosures of Hashiguchi, Urena, and England
provide rational underpinnings to the Examiner's reasoning for the proposed
modification of Hashiguchi. Although Hashiguchi may not state that its
device has a problem with corrosion, Hashiguchi teaches the use of metal
components, and both Urena and England teach that metal may corrode in
the presence of water. Further, both Urena and England teach that paraffin
wax may be used to prevent such corrosion, and in the case of England, the
teaching is specifically related to a hair removal device. Additionally, as
Appellant agrees (Br. 2), Hashiguchi may be used in a humid environment.
Weighing the teachings of the prior art as a whole, we do not agree with
Appellant that the Examiner relied on impermissible hindsight in rejecting
claim 16.
Appellant next argues:
the effectiveness of metal blades intended to have an edge
sufficiently sharp to cut hair would be detrimentally impacted by
the addition of \~1ax coating to such an edge. The effectiveness
of metal blades intended to grasp hairs with sufficient force to
pluck the grasped hairs from the skin of the device user would be
detrimentally impacted by a lubricating coating which would
reduce the ability of the blades to grasp anything.
Br. 2 (emphasis added). Thus, Appellant asserts that the Examiner's
proposed modification would provide a detrimental impact on the hair
removal device disclosed in Hashiguchi.
The Examiner finds that Appellant has not submitted evidence in
support of this argument. Ans. 3. We agree with the Examiner insofar as
Appellant does not provide any persuasive technical argument or evidence
that the Examiner's proposed modification to the device in Hashiguchi
would be done is such a way as to cause any problem with this device, much
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Appeal2013-009523
Application 12/514,554
less one that would dissuade a person of skill in the art from modifying
Hashiguchi as proposed. Indeed, Appellant refers to a potential detrimental
impact on the functionality of the edge of a blade, but the Examiner's
proposed modification to the device of Hashiguchi is not necessarily based
on coating the edge of a blade (or even a blade in general). See Final Act. 4--
5. Accordingly, Appellant's argument is not commensurate with the
Examiner's rejection. Further, England teaches protecting a blade against
rust with the use of paraffin wax, which belies Appellant's assertion
regarding the detrimental effects of this practice. See England, col. 3, 11. 40-
50. 1 Having reviewed all of Appellant's arguments for the patentability of
claim 16, we agree with the Examiner's findings and reasoning.
Consequently, we sustain the Examiner's rejection of claim 16 as
unpatentable over Hashiguchi, Urena, and England. Appellant does not
make separate arguments for any of dependent claims 18-27 and 33-35, and
these claims fall with independent claim 16.
Re} ection (II)
Claim 28 recites, "[t]he hair removal device of claim 16, wherein the
paraffin comprises an antibacterial agent."
1 The Examiner also refers to Steele (cited in the rejection of dependent
claims 28-30) as evidence that a blade dipped in paraffin wax would not be
detrimentally impacted by the presence of the wax. See Ans. 3--4; see also
Steele, col. 1, 11. 1-5and1. 54--col. 2, 1. 14 (discussing the lubricating and
protective effects of coating a blade with paraffin wax). However, we find
the Examiner's response to Appellant's argument, based on the lack of
persuasive evidence of a detrimental impact of the proposed modification, to
be sufficient to address Appellant's argument without reliance on the
teachings of Steele.
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Application 12/514,554
The Examiner relies on Steele to teach a paraffin comprising an
antibacterial agent. Final Act. 8. The Examiner reasons, it would have been
obvious
to include an antibacterial agent as taught by Steele in the
paraffin coated device disclosed by Hashiguchi in view of
Urena in order to "afford an additional protective function for
the operative edge of the blade" ([Steele] column 2, lines 9-11 ),
since it is in the knowledge generally available to one with
ordinary skill in the art that the personal grooming devices of
Hashiguchi in view of Urena are typically used in environments
with high humidity and moisture, and can be exposed to water,
as evidenced by England in column 3, lines 41-45.
Final Act. 8.
Br. 3.
Appellant asserts:
Neither Hashiguchi nor Urena raises any concerns with post
device use infection as a problem created by the disclosed subject
matter and in need of resolution. The origin of this problem to
be solved appears to be a review of the claims of the instant
application. The origin of the motivation to combine cannot
properly be found in the teachings and claims of the application.
We do not agree with Appellant's argument on this point. It is not
necessary for either Hashiguchi or Urena to raise a concern with infection
for the Examiner's rationale to be adequate. As the Examiner notes, Steele
teaches providing an antibacterial agent in paraffin wax on a razor blade.
Final Act. 8; Ans. 4. Thus, the portion of Appellant's argument asserting
that Hashiguchi and Urena are unconcerned with preventing infection is not
commensurate with the Examiner's rejection, which finds support in Steele
for the Examiner's proposed modification to Hashiguchi.
Appellant also contends, "[a]ny motivation associated with Steele
inappropriately relied upon as the problem to be solved is dissimilar from
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Application 12/514,554
that of the instant invention." Br. 4. We find this argument to be conclusory
and unsupported. Appellant does not explain why Steele's teaching of
preventing bacterial growth by adding a germicidal agent to the paraffin wax
coating of a razor blade does not provide adequate underpinning to the
Examiner's rationale for modifying Hashiguchi. Indeed, both Hashiguchi
and Steele disclose metal blades, and Hashiguchi' s blades are used in hair
removal, i.e., near the skin.
Appellant further asserts that "nothing in [Hashiguchi] suggests that
the precision head of the electrical appliance disclosed ever be exposed to
water. There is no teaching that the disclosed device is intended for a wet
environment or that water is a suitable cleaning agent for the head of the
device." Br. 3. Appellant argues, "[ t ]he Office Action takes pains to
mention the use of knowledge within the level of ordinary skill, Applicant
submits that the use of an electric epilator described in Hashiguchi in a wet
environment where such a device is known to work best in the removal of
dry hairs is not within the level of ordinary skill." Br. 4 (emphases added).
As to whether the hair removal device of Hashiguchi is used in a
humid or moist environment, as the Examiner points out (Ans. 2-3),
Appellant concedes that Hashiguchi may be used in a humid environment
(Br. 2). Moreover, Appellant provides no persuasive argument or evidence
supporting a conclusion that the hair removal device taught by Hashiguchi
would not be used in a humid environment or that such use would not be
within the level of ordinary skill in the art.
We have reviewed all of Appellant's arguments for the patentability
of claim 28, but do not agree with them. Accordingly, we sustain the
Examiner's rejection of claim 28. Claims 29 and 30 fall with claim 28.
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Application 12/514,554
Re} ection (III)
Appellant makes substantially similar arguments for the patentability
of claims 31 and 32 as those discussed above regarding claims 16 and 28.
Br. 4--5. For the same reasons discussed above, we find these arguments to
be unpersuasive. Accordingly, we sustain the Examiner's rejection of
claims 3 1 and 3 2.
DECISION
The Examiner's decision to reject claims 16 and 18-35 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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