Ex Parte Ndou et al

Patent Trial and Appeal Board

Jul 31, 2014

12271320 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THILIVHALI TSHIKOVHI NDOU
and NEVILLE SONNENBERG
____________________

Appeal 2012-006581
Application 12/271,320
Technology Center 3700
____________________

Before: JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thilivhali Tshikovhi Ndou and Neville Sonnenberg (“Appellants”)
seek our review under 35 U.S.C. § 134 of the final rejection of claims 1–20.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-006581
Application 12/271,320

2
CLAIMED SUBJECT MATTER
The Appellants’ invention is directed to a razor cartridge with a
shaving aid strip. Spec. 1. Claims 1 and 11 are independent. Br., Clm.
App. Claim 1 is illustrative and is reproduced below.
1. A razor cartridge comprising a guard, a
cap and a plurality of blades each with sharpened
edges located between the guard and the cap, the
cap comprising a cap edge positioned nearest the
blades and an erodible skin engaging member,
said plurality of blades comprising a cap
blade defining a blade edge nearest the cap and an
adjacent blade defining a blade edge positioned
immediately adjacent to the cap blade and between
the cap blade and the guard,
said skin engaging member comprising
at least one upper layer comprising an
erodible skin engaging layer of a first color, said
upper layer having an upper surface, a lower
surface and a first thickness dimension,
a base layer positioned below said upper
layer comprising an erodible skin engaging layer
of a second color different from said first color,
said base layer having an upper surface, a lower
surface and a thickness dimension, and
said upper layer eroding during shaving
exposing said upper surface of said base layer, said
upper surface of said base layer being positioned
relative to the cap edge such that when said upper
layer has eroded the cap blade edge has a final
exposure defined by the adjacent blade edge, the
cap edge and the upper surface of the base layer.

THE REJECTIONS
The Examiner has rejected (see Answer 4–7):
App
App

bein
bein
unpa
1991
razor
porti
below
enga
inclu

1 Par
eal 2012-0
lication 12
(i) cl
g anticipat
(ii) cl
g unpatent
(iii) cl
tentable o
).
Claims
In reject
cartridge
on) 56, plu
referenc
ging mem
Figure 3
Figure 3
ding the c

enthetical
06581
/271,320
aims 1, 5–
ed by Tsen
aims 2–4,
able over T
aims 8 and
ver Tseng
1, 5–7, 9
ing these c
(shaving u
rality of b
e numeral
ber 64. An
of Tseng
depicts a
laimed “ca

nomencla
7, 9, 11, 1
g (US 7,0
10, 12–14
seng; and
18 under
in view of
AN
, 11, 15–1
laims, the
nit)1 50 w
lades (bla
50 (as see
swer 4.
is reprodu
side-sectio
p edge.”

ture refers
3
5–17, and
69,658 B2
, and 20 un

35 U.S.C
Miller (U
ALYSIS
7, and 19 a
Examiner
ith guard
de units) 6
n in Figur
ced below
nal view o
to Tseng.
19 under 3
, issued Ju
der 35 U.
. § 103(a)
S 5,067,23
s Anticipa
finds that
(guard mem
0 and 62,
e 3), and e
:
f “razor c
5 U.S.C.
ly 4, 2006
S.C. § 103
as being
8, issued
ted by Tse
Tseng tea
ber) 58,
a cap edge
rodible sk

artridge” 5
§ 102(b) a
);
(a) as
Nov. 26,
ng
ches a
cap (rear
located
in
0
s
App
App

skin
70, w
color
64 w
Answ
when
defin
eal 2012-0
lication 12
The Exa
engaging
herein the
. See Ans
Figure 4
Figure 4
ith “upper
In reject
The bas
thicknes
and exp
surface
such tha
a final e
edge, an
indicatio
er 5 (citin
The App
the uppe
ed by the
06581
/271,320
miner furt
member 64
upper lay
wer 4 and
of Tseng
depicts a
layer” 72
ing the cla
e layer ha
s dimensi
oses the u
of the bas
t when the
xposure d
d the upp
n the cartr
g Tseng,
ellants con
r layer is e
adjacent b
her finds t
with upp
er has a fi
5 (citing T
is reprodu
perspectiv
and “base
ims, the E
s an uppe
on. The u
pper surf
e layer is
upper lay
efined by
er surfac
idge shou
col. 4, ll. 3
tend that
roded the
lade edge,
4
hat Tseng
er layer (s
rst color a
seng, col.
ced below
e view of T
layer” 70
xaminer ex
r surface,
pper laye
ace of the
positioned
er is erode
the adjac
e of the
ld be repla
6–45) (em
“Tseng do
cap blade
the cap ed
teaches th
heath) 72
nd the bas
3, ll. 14–6
:

seng’s sk
.
plains:
a lower
r erodes
base lay
relative t
d the cap
ent blade
base laye
ced.
phasis add
es not teac
edge has a
ge and the
e claimed
and base la
e layer has
7; col. 4,
in engagin
surface, a
during sha
er. The u
o the cap
blade edg
edge, the
r. This i
ed).
h or discl
final expo
upper sur
erodible
yer (core)
a second
ll. 1–56).
g member
nd a
ving
pper
edge
e has
cap
s an
ose that
sure
face of th

e
Appeal 2012-006581
Application 12/271,320

5
base layer,” as recited in the claims. Br. 4. The Appellants further argue
that “[t]here is simply no disclosure as to exposure of the cap blade edge in
[Tseng, column 4, lines 36 to 45.]” Id. (emphasis added).
The Examiner concludes that “it is inherent that there will be a
specific cap blade edge exposure associated with the erosion of the upper
layer to show the base layer.” Answer 7 (emphasis added); see also Final
Act. 6.
“To establish inherency, the extrinsic evidence ‘must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary skill
[in the art].” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis
added) (quotation omitted). “Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Id. (quotations omitted).
In this Appeal, the issue is whether upper layer 72 erodes during
shaving to expose an upper surface of base layer 70, thereby providing cap
blade edge 62 with a final exposure defined by adjacent blade edge 60, the
cap edge, and the upper surface of base layer 70, as recited in claims 1 and
11.
Although the Examiner finds that the “there will be a specific cap
blade edge exposure associated with the erosion of the upper layer to show
the base layer” (see Answer 7), the Examiner provides no other evidence or
reasoning that might be construed as support for the finding that the final
exposure is necessarily defined by “the adjacent blade edge, the cap edge
and the upper surface of the base layer.” The Examiner’s finding that the
upper layer of Tseng’s skin engaging member erodes during shaving does
Appeal 2012-006581
Application 12/271,320

6
not go far enough to show that the final exposure is necessarily defined by,
inter alia, “the upper surface of the base layer.” In other words, just because
Tseng’s razor has an exposure upon erosion of the upper layer, this does not
mean that the final exposure is necessarily defined by the “upper surface” of
the base layer. Therefore, the Examiner’s findings are mere speculation and
conjecture based on an unfounded assumption that because the upper layer
of Tseng’s razor is eroded during shaving a final exposure is necessarily
defined by “the adjacent blade edge, the cap edge and the upper surface of
the base layer.”
Because the claimed final exposure is not necessarily present, the
rejection of claims 1, 5–7, 9, 11, 15–17, and 19 under 35 U.S.C. § 102(b) as
being anticipated by Tseng is not sustained.
Neither the Examiner’s proposed modifications to Tseng nor the
teachings of Miller remedy the deficiencies of Tseng as described supra.
Accordingly, for the foregoing reasons, we do not sustain the rejections
under of 35 U.S.C. § 103(a) of claims 2–4, 10, 12–14, and 20 as
unpatentable over Tseng and of claims 8 and 18 as unpatentable over Tseng
and Miller.
DECISION
We reverse the Examiner’s rejection of claims 1–20.

REVERSED
llw