Ex Parte Kuijper et al

Patent Trial and Appeal BoardMar 18, 2016

12515963 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/515,963 01114/2010 Andre Kuijper 24737 7590 03/22/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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. 2006P01655WOUS 4036 EXAMINER PRONE, JASON D ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 03/22/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRE KUIJPER, ERIK HOUBOL T, MARTIN LEONARD BAKKER, and WILLEM DRACHTEN Appeal2014-000569 Application 12/515,963 Technology Center 3700 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 3, 5-9, 11, and 15-18. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2014-000569 Application 12/515,963 STATEMENT OF THE CASE The claims are directed to a cap with multi-angle annular corrugation surfaces for shaving apparatus. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cap for a shaving head of a shaving apparatus, said cap having a plurality of cooperating annular corrugations disposed about a central axis of the cap and including, relative to said central axis, an outermost annular corrugation, an innermost annular corrugation, and an intermediate annular corrugation disposed between the outermost and innermost annular corrugations, each of said annular corrugations having a central skin-contacting surface in which apertures are provided for receiving hairs to be cut, an inner boundary surface and an outer boundary surface and being formed such that, when viewed in a planar cross section aligned with said central axis and with the central skin- contacting surfaces facing in an upward direction: a) the central skin-contacting surface of the intermediate annular corrugation extends in a transverse direction relative to the central axis; b) the central skin-contacting surface of the outermost annular corrugation slants in a downward direction and forms a first slant angle relative to the transverse direction; and c) the central skin contacting surface of the innermost annular corrugation slants in a downward direction and forms a second slant angle relative to the transverse direction; said first slant angle being larger than said second slant angle, REJECTION1 Claims 1-3, 5-9, 11, and 15-18 are rejected, as best understood, under 35 U.S.C. Â§ 103(a) as being unpatentable over Uchiyama (EP 0566292 Al, pub. Oct. 20, 1993) (hereinafter "Uchiyama I") in view of De 1 The Examiner withdrew the rejections under 35 U.S.C. Â§ 112. Ans. 4. 2 Appeal2014-000569 Application 12/515,963 Wit (WO 03/059584 Al, iss. July, 24, 2003) and Uchiyama et al. (US 6,199,282 Bl, iss. Mar. 13, 2001) (hereinafter "Uchiyama II"). OPINION "[T]he precise language of 35 U.S.C. Â§ 102 that '(a) person shall be entitled to a patent unless,' concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103." In re Warner 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010) (precedential). A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. Â§ 1.104(c)(2) ("When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified."). Furthermore, the Federal Circuit has stated that "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval inKSR Int'!. v. Teleflex, 550 U.S. 398, 418 (2007). Appellants correctly point out that the Examiner provides no more than an overly broad general statement concerning the purported reasons to make the modifications to Uchiyama I proposed by the Examiner. App. Br. 18-19 (quoting Final Act. 7 ("the substitution of one known element for 3 Appeal2014-000569 Application 12/515,963 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.")). "This method of analysis is founded on legal error because it substitutes supposed per se rules for the particularized inquiry required by section 103. It necessarily produces erroneous results." In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995). The use of per se rules, while undoubtedly less laborious than a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art, flouts section 103 and the fundamental case law applying it. Per se rules that eliminate the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board ... But reliance on per se rules of obviousness is legally incorrect and must cease. Any such administrative convenience is simply inconsistent with section 103, which, according to Graham and its progeny, entitles an applicant to issuance of an otherwise proper patent unless the PTO establishes that the invention as claimed in the application is obvious over cited prior art, based on the specific comparison of that prior art with claim limitations. Id at 1572. We recognize that the cited references do teach some results associated with the particular profiles that the Examiner proposes to incorporate into the Uchiyama I device. However, there is no indication in the record that the Examiner intended, by the generalized statement above or otherwise, to rely on these teachings. If these are facts upon which the Examiner relies to support the Examiner's rejection, as discussed above, it is the Examiner's obligation to provide notice of such so that Appellants have a fair opportunity to respond to that rejection. In re Biedermann, 733 F. 3d 4 Appeal2014-000569 Application 12/515,963 329 (Fed. Cir. 2013). It is neither our place, nor Appellants' burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's obligation to provide timely notice to the applicant of all matters of fact and law asserted.) Although the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP 1213.02. DECISION The Examiner's rejection is reversed. REVERSED 5