Ex Parte Hawes et al

Patent Trial and Appeal Board

May 15, 2017

12581366 (P.T.A.B. May. 15, 2017)

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.
12/581,366 10/19/2009 Christopher Martin Hawes Z-04830M 2442
27752 7590 05/17/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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 CHRISTOPHER MARTIN HAWES,
LEE BURRO WES, and JAMES LEO SALEMME
Appeal 2015-007119
Application 12/581,366
Technology Center 3700
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher Martin Hawes et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1, 3, 5, 8, 11 and 12 as unpatentable over
Laniado (US 5,402,573, iss. Apr. 4, 1995), Scamard (US 6,257,791 Bl, iss.
July 10, 2001), and Mileti (US 2009/0263176 Al, pub. Oct. 22, 2009) or
Laniado, Scamard, Mileti and Appellants’ admitted prior art (AAPA). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-007119
Application 12/581,366
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hair removal device comprising:
a shaving cartridge having at least one blade;
a handle forming a rigid container enclosing a collapsible
reservoir suitable for containing a fluid to be dispensed during
use of the hair removal device;
a fluid outlet adapted to allow fluid to dispense from
collapsible reservoir out of the device, wherein the container
comprises a mono-stable button adapted to pressurize air in the
deformably rigid container, thereby collapsing the collapsible
reservoir and causing fluid to be dispensed and
a first one-way valve adapted to allow air to enter but not
exit the deformably rigid container.
DISCUSSION
The Examiner finds that the combined teachings of Laniado, Scamard,
and Mileti disclose or suggest all of the limitations of claim 1. See Final
Act. 3^4. Alternatively, the Examiner finds that the combined teachings of
Laniado, Scamard, Mileti, and Appellants’ admitted prior art (AAPA)
disclose or suggest all of the limitations of claim 1. Id.
Appellants argue claims 1, 3, 5, 8, 11, and 12 together. See Appeal
Br. 3—6. We select independent claim 1 as the representative claim, and
claims 3, 5, 8, 11, and 12 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). Further, Appellants do not present separate arguments for
the alternative rejections. See generally Appeal Br. Accordingly, our
resolution of the issues raised is dispositive for both rejections and we
discuss these issues as they pertain to the alternative rejection (i.e. the
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Application 12/581,366
rejection based on the combined teachings of Laniado, Scamard, Mileti, and
AAPA).
Appellants argue that “[t]he device disclosed in Laniado does not
displace a fixed amount of air causing essentially the same amount of fluid
to be displaced from the device.” Appeal Br. 4. This fact is not in dispute.
See Final Act. 4 (explaining that Laniado fails to disclose “a one-way valve
to allow fluid to exit but not enter the reservoir, and ensuring the same
amount of air is displaced and a dose of fluid is dispensed every time
pressure is applied). Thus, Appellants do not apprise us of error.
Appellants further argue that “it is not clear how a mono-stable button
would perform the function of a flexible bulb in the application disclosed in
Laniado.” Appeal Br. 4. However, “[cjombining the teachings of references
does not involve an ability to combine their specific structures.” In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather, the relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants
do not explain why use of a mono-stable button in Laniado’s device would
not have been obvious in view of the teachings of Scamard and Mileti.
Thus, Appellants do not apprise us of error.
Next, Appellants argue that “it is not clear from the disclosure of
Scamard how the pump is actuated, much less that it is actuated via a mono­
stable button.” Appeal Br. 4. Responding to this argument, the Examiner
explains that although
the Figures of Scamard do lack consistency with regards to the
reference labels . . . column 3 lines 7—23 are still perfectly clear
on how the pump configuration operates. One skilled in the art
would clearly recognize that pump 5 (button as shown in Figure
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Appeal 2015-007119
Application 12/581,366
1) would be compressed to then apply pressure to reservoir 8
within the rigid handle 3 to dispense the liquid. This pump
construction generates an air flow which would still allow for the
spray function of Laniado to be performed.
Ans. 5. The Examiner further finds that “to the degree that the pump button
of Scamard is not a mono-stable button that ensures that essentially the same
amount of air is displaced, AAPA . . . teaches it is old and well known in the
art of pumping fluids to incorporate mono-stable buttons.” Id. at 5—6 (citing
Spec. 6:11-20).
Scamard states:
When the pump 5 is actuated by the user, air flows into the space
between the interior of the handle 3 and the toothpaste container
8. This air flow causes a transient increase in pressure upon the
toothpaste container 8, forcing toothpaste from the container 8,
through the communicating channel 7, through the toothpaste
dispensing tube 6, and onto the exposed ends of the toothbrush
bristles 4. The toothpaste dispensing tube 6 is composed of a soft
flexible material. The terminal, open end of the toothpaste
dispensing tube 6 is tapered, forming a valve. As toothpaste is
forced from the end of the toothpaste dispensing tube 6, the valve
opens, allowing toothpaste to exit. Once the pressure equalizes
within the toothbrush handle 3 due to the escape of the
toothpaste, the toothpaste ceases to exit from the end of the
dispensing tube 6 and the valve closes. The closure of the valve
prevents any foreign material from entering the toothpaste
dispensing tube 6 and contaminating the toothpaste.
Scamard 3:7—23. Thus, the Examiner is correct that Scamard describes how
its pump is actuated. Further, Appellants do not contest the Examiner’s
finding pertaining to AAPA. Thus, Appellants do not apprise us of error.
In addition, Appellants argue that the Examiner fails to provide
reasons for the proposed modification. See Appeal Br. 4 (citing MPEP
§ 2143.01(1V) (citing Ex parte Levengood, 28 USPQ2d 1300 (BPA1 1993)).
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Appeal 2015-007119
Application 12/581,366
However, the Examiner articulates reasons for the proposed modifications.
See Final Act. 5. Specifically, the Examiner explains that:
the substitution of one known element for another would have
yielded predictable results and all claimed elements were known
in the prior art and one skilled in the art could have combined the
elements as claimed by known methods with no change in their
respective function and the combination would have yielded
predictable results.
Id. “[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (citing Sakraida v.
Ag Pro, Inc., 96 S.Ct. 1532, 1532 (1976)). Appellants do not contest the
Examiner’s findings that the substituted components were known in the art
or explain why the proposed substitution would do more than yield
predictable results. Thus, Appellants do not apprise us of error.
Finally, Appellants argue that “references are not properly combined
when such combination would destroy that on which the invention of one of
the references is based.” Appeal Br. 5 (citing Ex parte Hartmann, 186
U.S.P.Q. 336 (PTO Bd. App. 1974). In support of this argument, Appellants
explain how Laniado’s device operates. However, Appellants do not explain
how the proposed modification would “destroy that on which the invention
of one of the references is based.” Thus, Appellants do not apprise us of
error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 3, 5, 8, 11, and 12 which fall therewith.
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Application 12/581,366
DECISION
The Examiner’s rejections of claims 1, 3, 5, 8, 11, and 12 are
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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