Ex Parte Kraus et al

Patent Trial and Appeal Board

May 4, 2017

12985376 (P.T.A.B. May. 4, 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.
12/985,376 01/06/2011 Bernhard Kraus Z08109CQ 4230
27752 7590 05/08/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
SHI, KATHERINE MENGLIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/08/2017 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 BERNHARD KRAUS and FRIEDER GRIESHABER
Appeal 2015-0081981
Application 12/985,3762
Technology Center 3700
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and,
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, and 5—9, which are all the pending claims in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Mar. 19,
2015), the Examiner’s Answer (“Ans.,” mailed July 15, 2015), and Non-
Final Office Action (“Non-Final Act.,” mailed June 5, 2014).
2 Appellants identify “The Proctor & Gamble Company of Cincinnati, Ohio”
as the real party in interest. Br. 1.
Appeal 2015-008198
Application 12/985,376
CLAIMED INVENTION
Independent claim 1, the sole independent claim on appeal, is
reproduced below and representative of the claimed subject matter.
1. Epilation device (100) comprising:
a housing (101);
a roll-like epilation implement (10) having clamping
units (11) for successively clamping and plucking hairs, the
roll-like epilation implement (10) being mounted to the
housing;
a powered motor (30) operatively coupled to the roll-like
epilation implement (10); and
a motor control (20, 21, 22);
wherein the epilation device (100) has at least a fast
operation mode in which the motor (30) is controlled by the
motor control (20, 21, 22) such that the clamping units (11)
move with a circumferential speed of more than 2.5 meters per
second relative to the housing (101), said device having sensor
(40) arranged to measure the speed of the epilation device (100)
relative to a surface over which the epilation device (100) is
drawn during operation, and
wherein the motor control (20, 21, 22) is arranged to vary
the circumferential speed of the clamping units (11) in
dependence on a speed signal provided by the sensor (40).
REJECTIONS
I. Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus (US 2008/0196258 Al, pub. Aug. 21,
2008), Yiu (US 6,123,713, iss. Sept. 26, 2000), and Caoduro
(US 2003/0014059 Al, pub. Jan. 16, 2003). Ans. 2-A.
II. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kraus, Yiu, Caoduro, and Sanchez-Martinez (US
2008/0045975 Al, pub. Feb. 21, 2008). Id. at 4.
2
Appeal 2015-008198
Application 12/985,376
III. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kraus, Yiu, Caoduro, and Wakamastsu (JP 2005131344,
pub. May 25, 2005). Id. at 5.
IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kraus, Yiu, Caoduro, and Knesch (US 6,261,301 Bl, iss.
July 17, 2001). Id. at 5-6.
V. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kraus, Yiu, Caoduro, and Gross (US 5,221,280, iss. June
22, 1993). Id. at 6.
ANALYSIS
Rejection I
We are not persuaded by Appellants’ allegation that the Office failed
to establish a prima facie case supporting the rejection of claims 1, 2, and 6
under 35 U.S.C. § 103(a) as unpatentable over Kraus, Yiu, and Caoduro.
See Br. 3. The Federal Circuit has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, “all that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132.” Id. at 1363.
3
Appeal 2015-008198
Application 12/985,376
Here, the Examiner notified Appellants that claims 1,2, and 6 are
rejected under 35 U.S.C. § 103(a) as obvious over Kraus, Yiu, and Caoduro,
cited specific structural elements of each reference by number as
corresponding to each claimed structural element, additionally cited various
portions of the references by page and line number or paragraph number in
further support of the rejection, and articulated her reasoning with some
rational underpinning to support the legal conclusion of obviousness. See
Non-Final Act. 3—5. Moreover, in the response to arguments section of the
Office Action, the Examiner provided further explanation and reasoning in
support of the rejection. See id. at 8—9; see also Ans. 7—9.
Contrary to Appellants’ allegation, the Examiner’s findings and
explanations would have put any reasonable applicant on notice of the
rejection, and provided ample information with which to counter the ground
of rejection, which is all that is required to establish a prima facie case of
unpatentability. We find that the Examiner’s rejection satisfies the notice
requirement of § 132, and, therefore, establishes a prima facie case of
unpatentability. See Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion
of the theory of invalidity . . . the prior art basis for the rejection . . . and the
identification of where each limitation of the rejected claims is shown in the
prior art reference by specific column and line number was more than
sufficient to meet this burden.”). For instance, Appellants contend “that the
Examiner has cited the Bosch case [sic, In re Boesch] relating to the
optimum value of a result effective parameter” but argue “that a particular
parameter must first be recognized as a result-effective variable, i.e., a
variable which achieves a recognized result, before the determination of the
optimum or workable ranges of said variable might be characterized as
4
Appeal 2015-008198
Application 12/985,376
routine experimentation.” See Br. 4. But it is clear from the Office Action
and the Answer that “it is the Examiner’s position that the circumferential
speed is a result effective variable.” Ans. 8; see also Non-Final Act. 4
(“Therefore, one of ordinary skill in the art at the time the invention was
made would have recognized that circumferential speed is a result effective
variable in the field of hair removal and epilation device.”). The Examiner
found that Yiu discloses that “any suitable reduction gear system may be
used to achieve the proper rotational speed (col. 3,11. 12-27)” (Ans. 3) and
recognized “the need to solve the problem of higher epilation efficiency
while minimizing pain (col. 1,11. 57-63).” Ans. 7. “[T]he Examiner cite[d]
Caoduro to teach that varying a circumferential speed of a roll-like epilation
implement will change the amount of pain experienced by a user and
therefore it is desirable to optimize the speed while reducing the pain
([0004]-[0006]).” Id.; see Caoduro 1 6 (“It would be desirable also to
provide a depilating machine with the maximum e[pil]ation speed possible,
to reduce the pain of the depilation.”). This is consistent with Appellants’
Specification at paragraph 18 which discloses that “[i]t was now found, in
contrast to the teachings and beliefs of the past, that the plucking pain is
reduced at higher plucking speed.”). In short, the Office satisfied the initial
burden of production by combining the references to establish a case of
obviousness. Therefore, the burden shifted to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner’s action, as well as the specific distinctions
believed to render claim 1 patentable over the cited reference.
We also are unpersuaded of error on the Examiner’s part by
Appellants’ argument that “Caoduro discloses rotation speeds of epilators
5
Appeal 2015-008198
Application 12/985,376
([004]-[0009]) however, it does not recite rotation speeds claimed” (Br. 5)
because the Examiner does not contend that Caoduro discloses the claimed
rotation speed. Instead, the Examiner asserts:
Although the prior art of record does not explicitly
disclose a value of more than 2.5 meters per second as required
by the instant claims, it does not teach away from one of
ordinary skill in the art at the time the invention was made to
modify the speed (i.e. prior art does not disclose it would have
been undesirable to go above the disclosed 2 meters per second,
does not disclose motor is not capable, does not disclose there
would have been damage to the motor, etc). It is the
Examiner's position that Applicant has not distinctively claimed
the structure of the epilation device that allows the instant
invention to achieve such a speed that the prior art have not
shown.
Therefore, one of ordinary skill in the art at the time the
invention was made would have derived the claim invention
through routine experimentation.
Ans. 8. Appellants do not address the Examiner’s position.
We also note that Appellants do not contest the Examiner’s
findings as to any structural element of the epilation device of claim 1.
See Br. 3—5. It is well settled that “where the general conditions of a
claim is disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges” of certain constituents thereof when
such discovery involves only “routine experimentation.” See In
re Aller, 220 F.2d 454, 456, (CCPA 1955); see also In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of
scientists or artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed set of
percentage ranges is the optimum combination of percentages.”). And
6
Appeal 2015-008198
Application 12/985,376
as discussed above, Appellants do not challenge the Examiner’s
determination that the claimed variable was known to be a result
effective variable. Following the holding in KSR International Co, v.
Teleflex Inc., 550 U.S. 398 (2007) that “obvious to try” is a valid
rationale for an obviousness finding, the presence of a known result
effective variable is at least one motivation for a person of ordinary
skill in the art to experiment to reach another workable product.
Accordingly, we sustain the rejection of claims 1, 2, and 6.
Rejections II, III, IV, and IV
Appellants’ separate arguments against rejections II—V as failing to
establish a prima facie case are similarly unpersuasive. See Br. 5—7.
Appellants fail to address the Examiner’s findings and conclusions, or
articulate how the Examiner’s proposed combination fails to render the
claimed invention obvious. For example, Appellants’ arguments fail to
address any insufficiency or error with the Examiner’s rationale and
reasoning for the combination as presented in the Office Action and the
Answer. See e.g., Non-Final Act. 7 (“Therefore, it would have been obvious
to one of ordinary skill in the art at the time the invention was made to
modify the combination of Kraus, Yiu et al and Caoduro with an automatic
switching configuration as taught by Gross, to provide a means for clamping
and removing the hair only when hair is detected (i.e. load), to minimize the
possibilities of injuries.”); see also Ans. 6. As such, we are not apprised of
error on the part of the Examiner.
Accordingly, we sustain the rejections of claims 5,7,8, and 9.
7
Appeal 2015-008198
Application 12/985,376
DECISION
The decision of the Examiner to reject claims 1,2, and 5—9 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).
AFFIRMED
8