Ex Parte Johnson

Patent Trial and Appeal BoardNov 15, 2013

12011413 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THERESA LOUISE JOHNSON ____________________ Appeal 2011-012851 Application 12/011,413 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, JOHN W. MORRISON, and HYUN J. JUNG, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012851 Application 12/011,413 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 18. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED INVENTION Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A shaving system comprising: a handle, said handle comprising a power source and a head attachment member; a first head, said first head comprising a rotating member, said first head being attachable to said handle by said head attachment member, said power source supplying power to said first head to rotate said rotating member for rubbing against a user’s skin; and a second head, said second head comprising a plurality of razor blades, said second head being attachable to said handle by said head attachment member. REFERENCES Beddall Althaus Burres Fischer US 4,285,428 US 5,134,775 US 6,471,712 B2 US 6,895,624 B2 Aug. 25, 1981 Aug. 4, 1992 Oct. 29, 2002 May 24, 2005 Aviza US 2007/0220753 A1 Sep. 27, 2007 Appeal 2011-012851 Application 12/011,413 3 REJECTIONS1 1. Claims 1, 4, and 7-9 are rejected under 35 U.S.C. § 103(a) as being obvious over Aviza, Burres, and Beddall. 2. Claims 2, 3, 10-12, 14-16, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Aviza, Burres, Beddall, and Althaus.2 3. Claims 5 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Aviza, Burres, Beddall, and Fischer. 4. Claims 6, 13, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Aviza, Burres, Beddall, Althaus, and Fischer. ANALYSIS Double Patenting The Examiner advised Appellant “that should claims 2 and 11 be found allowable, claims 10 and 15 respect[ive]ly will be objected to under 37 C[.]F[.]R[. §] 1.75 as being substantially a duplicate []of [claims 2 and 11, respectively].” Ans. 4. As claims 2 and 11 are not allowed at this time, the issue of whether claims 10 and 15 are objected to is not ripe for 1 The Examiner also states “Appellant is advised that should claims 2 and 11 be found allowable, claims 10 and 15 respectfully will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).” Ans. 4. 2 The Examiner’s grounds of rejection on pages 7 and 8 of the Answer have been consolidated because both grounds of rejection are based on the combination of Aviza, Burres, Beddall, and Althaus. Appeal 2011-012851 Application 12/011,413 4 consideration at this time. Furthermore, a claim objection under 37 C.F.R. § 1.75 is a petitionable rather than an appealable matter. See 37 C.F.R. § 1.181(a) (1) (“Petition may be taken to the Director: … From any action or requirement of any examiner in the ex parte prosecution of an application”); see also 35 U.S.C. § 134(a) (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences” (emphasis added)). Should claims 2 and 11 become allowable so that the issue of the objection to claims 10 and 15 becomes ripe, the claim objection would properly be reviewed by way of petition to the Director rather than by appeal to the Board. See 37 C.F.R. § 1.181(a)(1). Obviousness over Aviza, Burres, and Beddall Claim 1 recites, inter alia, that “said first head comprising a rotating member.” Br., Clms. App’x. The Examiner finds that Aviza discloses that “a first head (12) wherein the first head comprises a rotating member (80) and the first head is attachable to the handle by the head attachment member and the first head rotates the rotating member for rubbing against a user’s skin (via spinning member 102).” Ans. 5. Appellant argues that “according to the teachings of Aviza, dial 102 is used to move member 80 in a transverse or up and down motion and not to rotate the member 80.” Br. 5. In response, the Examiner finds Aviza states that the wheel [102] can be “rotated during shaving” but if desired the device can also have detents or a friction clutch, therefore, Aviza does not solely teach not rotating the device but the option of having the wheel rotate during use or not rotate during use. In this instan[t] case the embodiment of Aviza that does not have the clutches or detents Appeal 2011-012851 Application 12/011,413 5 was modified by Burres to teach a power source that supplies power to the head to rotate the rotating member. Ans. 12. The pertinent disclosure in Aviza states A manual adjustment mechanism 100 includes a wheel 102 connected to a first eccentric shaft 104 (FIG. 6A), which in turn is connected to one side of exfoliation member 80. On the other side of exfoliation member 80, a second eccentric shaft 106 is connected to the exfoliation member [80] at one end and to housing 16 at the other end. As the user turns wheel 100, exfoliation member 80 moves transversely, in the direction indicated by arrows A3. Aviza, p. 4, para. [0080]. Aviza only teaches that rotation of the wheel 102 causes the exfoliation member 80 to move transversely, in the direction of arrow A3, i.e., meaning up and down with respect to the surface of the cartridge 12. See Aviza, Fig. 6. Aviza does not indicate that the wheel 102 can be rotated during shaving. The Examiner presents no further evidence or reasoning that the exfoliation member 80 may also rotate as well as move in the transverse direction. Thus, the Examiner has not shown by a preponderance of the evidence that the exfoliation member 80 is a rotating member. Accordingly, we do not sustain the rejection of independent claim 1, and claims 4 and 7-9 dependent thereon, as unpatentable over Aviza, Burres, and Beddall. Obviousness over Aviza, Burres, Beddall, and Althaus Claims 2 and 3 depend from claim 1. Br., Clms. App’x. The rejection of claims 2 and 3 relies on the erroneous finding that that Aviza’s exfoliation member 80 is a rotating member. The Examiner does not rely upon any of Burres, Beddall, and Althaus to show a rotating member. See Ans. 7. Accordingly, for the above reasons, we do not sustain the rejection of claims Appeal 2011-012851 Application 12/011,413 6 2 and 3 as unpatentable over Aviza, Burres, Beddall, and Althaus. Turning to independent claims 10 and 15, these claims recite a similar limitation to that of independent claim 1, namely, a “first head comprising a rotating member.” Br., Clms. App’x. For each of the independent claims 10 and 15, the Examiner does not make any explicit findings with respect to whether Aviza’s exfoliating member 80 is a rotating member, but the Examiner concludes that “[i]t would be obvious . . . to modify the manually powered rotating member of Aviza with a power source located in the handle (i.e. batteries) as taught by Burres in order to automatically rotate the abrasive member to abrade the user’s skin.” Ans. 8 and 9. Thus, the rejection of claims 10 and 15 appears to rely on the same erroneous finding as discussed supra for claim 1, i.e., that Aviza’s exfoliation member 80 is a rotating member. The Examiner has not relied upon any of Burres, Beddall, and Althaus to disclose a rotating member. See Ans. 8-10. For the above reasons, we do not sustain the rejection of independent claims 10 and 15, and claims 11, 12, 14, 16, and 18 dependent thereon, as unpatentable over Aviza, Burres, Beddall, and Althaus. Obviousness over Aviza, Burres, Beddall, and Fischer Claims 5 and 9 depend from claim 1. Br., Clms. App’x. The rejection of claims 5 and 9 also relies on the erroneous finding that Aviza’s exfoliation member 80 is a rotating member. The Examiner does not rely upon any of Burres, Beddall, and Fischer to disclose a rotating member. See Ans. 10-11. For the above reasons, we do not sustain the rejection of claims 5 and 9 as unpatentable over Aviza, Burres, Beddall, and Fischer. Appeal 2011-012851 Application 12/011,413 7 Obviousness over Aviza, Burres, Beddall, Althaus, and Fischer Claims 6, 13, and 17 depend from independent claims 1, 10, and 15 respectively. Br., Clms. App’x. The rejection of claims 6, 13, and 17 also relies on the erroneous finding that Aviza’s exfoliation member 80 is a rotating member. The Examiner does not rely upon any of Burres, Beddall, Althaus, and Fischer to disclose a rotating member. See Ans. 11. For the above reasons, we do not sustain the rejection of claims 6, 13, and 17 as unpatentable over Aviza, Burres, Beddall, Althaus, and Fischer. DECISION For the above reasons, the Examiner’s decision to reject claims 1-18 is reversed. REVERSED JRG