KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Apr 21, 2021

2020005310 (P.T.A.B. Apr. 21, 2021)

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.
14/772,836 09/04/2015 Josty WINTERS 2014P00054WOUS 6440
24737 7590 04/21/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
DAVIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSTY WINTERS and
INGMAR GRASMEIJER

Appeal 2020-005310
Application 14/772,836
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 6, 7, and 9–15, which constitute
all the claims pending in this application. See Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Koninklijke Philips N.V., a corporation of Netherlands.” Appeal Br. 3.
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Application 14/772,836

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a rotary shaver” and
particularly to one “comprising a metal external cutting element, an internal
cutting element . . . rotatable with respect to the external cutting . . . and a
disc-shaped element . . . which disc-shaped element covers at least part of
the external cutting element.” Spec. 1:2–6. Apparatus claims 1 and 11 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A rotary shaver comprising:
a metal external cutting element;
an internal cutting element being rotatable with respect to
the external cutting element about an axis of rotation;
a disc-shaped element having a central axis extending
coaxially with the axis of rotation,
wherein the disc-shaped element covers at least part of
the external cutting element; and
a raised ring-shaped rim perpendicularly extending
between a side surface of the external cutting element facing the
disc-shaped element and a side surface of the disc-shaped
element facing the external cutting element,
wherein the ring-shaped rim forms part of one of the
external cutting element or the disc-shaped element, and
wherein the raised ring-shaped rim limits crevice
corrosion within a gap defined by a portion of the side surface
of the disc-shaped element and a portion of the side surface of
the external cutting element between the raised ring-shaped ring
and the central axis of the disc-shaped element by means of the
raised ring-shaped rim having a height (H) of at least 0.1
millimetre in a direction parallel to the central axis and a width
(W) of less than 0.35 millimetre in a direction radial to the
central axis.
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Application 14/772,836

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EVIDENCE
Name Reference Date
Oddenino US 5,797,714 Aug. 25, 1998
Uchiyama US 2004/0163258 A1 Aug. 26, 2004
Nakano US 7,356,929 B2 Apr. 15, 2008
Shimizu US 2009/0320295 A1 Dec. 31, 2009
REJECTIONS2
Claims 1, 2, 4, 6, 10–13, and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Uchiyama and Nakano.
Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Uchiyama, Nakano, and Oddenino.
Claims 9 and 14 are rejected under 35 U.S.C. § 103 as unpatentable
over Uchiyama, Nakano, and Shimizu.
ANALYSIS
The rejection of claims 1, 2, 4, 6, 10–13, and 15
as unpatentable over Uchiyama and Nakano
It is initially noted that in the last “wherein” clause of independent
claim 1, there is a recitation of a raised ring-shaped “rim” limiting crevice
corrosion within a gap. Thereafter, this gap is recited as being between the
raised ring-shaped “ring” and a central axis. There is no antecedent basis for
a ring-shaped “ring,” there is only antecedent basis for a ring-shaped “rim.”
For purposes of analysis, we will presume this reference to “ring” is an

2 The rejection of claims 11–20 as failing to comply with the written
description requirement has been withdrawn. See Ans. 11.
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Application 14/772,836

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inadvertent error, and should, instead, be understood to refer to the aforesaid
“rim.” Correction is required should prosecution continue.
Both independent claims 1 and 11 recite a metal external cutting
element and also a disc-shaped element covering part of the external cutting
element.3 Both claims also recite a “ring-shaped rim,” but differ regarding
the component from whence this rim extends and its location.4 The
Examiner provides separate reasons for the rejection of claims 1 and 11 in
view of Uchiyama and Nakano. See Final Act. 4–8, 10–11. We, likewise,
address independent claims 1 and 11 separately, along with their
respectively rejected dependent claims.
Claim 1
Claim 1 recites the rim5 as “perpendicularly extending between”
facing surfaces of the external cutting element and the disc-shaped element.
The Examiner relies on Uchiyama for disclosing this limitation and provides
an annotated enlargement of Figure 4 of Uchiyama as support. See Final
Act. 5–8. Appellant disagrees that Uchiyama teaches this limitation and
provides yet a further annotated enlargement of Uchiyama’s Figure 4. See

3 The Examiner relies on Nakano solely for disclosing that it is well-known
in the art to manufacture the external cutting element of metal. See Final
Act. 6–7. Appellant does not challenge this teaching by Nakano.
4 Claim 1 recites that “the ring-shaped rim forms part of one of the external
cutting element or the disc-shaped element.” In contrast, claim 11 specifies
that this “rim” forms a part of only the disc-shaped element.
5 We note that claim 1 (unlike claim 11) specifies a “raised” ring-shaped
rim. The Examiner does not make clear how Uchiyama’s rim is “raised” as
recited, only that it is; but at the same time, Appellant does not contend that
Uchiyama fails to disclose this feature. Because this matter was not
addressed by either side, we also elect to not address it.
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Appeal Br. 13. Both annotated enlargements are reproduced below (the
Examiner’s first, followed by Appellant’s).

The above enlargements of Figure 4 of Uchiyama, as amended by the
Examiner and Appellant, depict external cutting element 34 (and 35). Items
34 and 35 are an “inside wall” and a “ring surface” (respectively) of
Uchiyama’s outer cutter 12. Uchiyama ¶ 47. Also illustrated is adjacent
disc-shaped element 28 (not numbered in Appellant’s enlargement but
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Application 14/772,836

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instead identified as R1 and R2). A gap is also disclosed with the
Examiner’s annotation also identifying its “roof.”
The Examiner finds that Uchiyama’s disc-shaped element 28 employs
a “ring-shaped rim” at its outer circumference that is wrapped partially
around a projection of what the Examiner identifies as the “pen.” It is this
projection that the Examiner identifies as forming the “roof” of the gap. See
Final Act. 6. The Examiner also finds that this “ring-shaped rim
perpendicular[ly] extends from the roof of the gap” and identifies where this
is shown. Final Act. 5, 6.
Investigating Uchiyama’s Figure 4 more closely, we discern that the
part of the identified rim in contact with “the roof of the gap” (as identified
by the Examiner and understood to be R2 in Appellant’s annotation) actually
extends parallel to the gap’s roof, and does not extend “perpendicular . . .
from the roof of the gap” as expressed by the Examiner. Final Act. 5.
Appellant concurs, stating that “rim portion R2 parallelly extends” with
respect to the gap’s roof, not “perpendicularly extending” as recited. Appeal
Br. 13; see also id. at 12.
In making this finding, the Examiner is treating the term “extend” as a
measure of the rim’s thickness (“measured along the height dimension”
(Final Act. 6)) rather than a measure of extension in a longitudinal direction,
as this term is used in Appellant’s Specification and as this term is
commonly understood.6 Hence, Appellant’s contention above that “rim
portion R2 parallelly extends.” Appeal Br. 13; see also id. at 12.

6 Common dictionary definitions of “extend” are “to spread or stretch forth,”
“to stretch out to fullest length” (https://www.merriam-webster.com/
dictionary/extend) as well as “to stretch out; draw out to the full length”
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The Examiner replies that “the claim does not define nor restrict what
element the raised ring-shaped rim is extending perpendicularly therefrom.”
Ans. 13. According to the Examiner, “‘R2,’ does extend perpendicular[ly]
from side surface of the external cutting element labeled as 34.” Ans. 13–
14. Indeed, R2 above, because it extends parallel to the gap’s roof, can also
be said to extend perpendicular with respect to inside wall 34 as stated by
the Examiner.
As noted above, claim 1 recites that the rim is to form a part of either
the external cutting element or the disc-shaped element and, as depicted in
Uchiyama, the identified rim forms a part of Uchiyama’s disc-shaped
element 28. Furthermore, as per claim 1, the rim is not only to form a part
of the disc-shaped element, but it is also to “extend[] between . . . facing”
side surfaces of the external cutting element (i.e., Uchiyama’s item 34) and
the disc-shaped element (Uchiyama’s item 28). See also Appeal Br. 12, 13.
However, in the above figure, the two items 34, 28, and their respective
facing side surfaces (as identified by the rim’s perpendicular extension), are
adjacent each other, with rim R2 extending away from their interface. This
extension is not “between” these facing surfaces as recited.
In summation, and as noted above, claim 1 recites the “ring-shaped
rim perpendicularly extending between . . . facing” side surfaces. In
Uchiyama, if the identified rim (i.e., that which correlates to “the roof of the
gap” (Final Act. 5)), is said to extend perpendicular from the disc-shaped
element, it does not extend in this manner “between” cutter 34 and disc 28 as
recited. Likewise, if the identified rim is said to be located between facing

(https://www.dictionary.com/browse/extend#). These all pertain to a length,
not a thickness.
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surfaces of the cutter and the disc, then the rim does not extend
“perpendicular[]” from either as recited.
The Examiner additionally seeks to expand that which is to
correspond to the recited disc-shaped element, stating “Uchiyama’s outer
cutter cap 28 is formed by two pieces, which includes the outer disc cover
and the pen” and that “[t]hese two pieces together form a unitary structure.”
Ans. 14 (emphasis added). The Examiner, under this new analysis, also
provides a new annotated enlargement of Uchiyama’s Figure 4, which is
replicated below. See Ans. 16.

The Examiner’s enlarged annotation combines various components to
represent the recited “disc-shaped element” as having a “raised ring-shaped
rim” of height (H) and width (W).
Appellant responds to this new analysis by contending that the
disclosed “rim” is adjacent to the recited facing surfaces but “without
touching the surfaces.” Reply Br. 10. Appellant does not indicate where it
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9
is recited that the rim must (or must not) touch the opposite facing surface at
the end of its extent.
However, the Examiner’s focus on the rim having a height and width
refers to the recitation in claim 1 that the rim is to have “a height (H) of at
least 0.1 millimetre” and a “width (W) of less than 0.35 millimetre.” The
Examiner characterizes these values as “result effective variable[s],” stating
that “discovering an optimum value of a result effective variable involves
only routine skill in the art.” Final Act. 8. The Examiner states that there
“are a finite amount of possible values” for height and width and that it
would have been obvious “to select any reasonable size” for this rim.7 Final
Act. 7, 8. Regardless, even if there is a “finite amount of possible values”
for the ranges of “at least 0.1 millimetre” and “less than 0.35 millimetre”,
and even if it is possible “to select any reasonable size” for these
dimensions, the Examiner has not provided any evidence that these values
are, indeed, “result effective variable[s]” subject to optimization. See In re
Antonie, 559 F.2d 618, 620 (CCPA 1977).
This is a further reason to reverse the Examiner’s rejection of claim 1.
Accordingly, and based on the record presented, it is not evident that the
Examiner has provided articulated reasoning with rational underpinning to

7 The Examiner additionally states “[t]he height and width of the raised ring-
shaped rim are confined by the dimensions of the external cutting element
and the clearance with the surface of the external cutting element.” Final
Act. 7. However, here, because the rim is formed as a part of the disc-
shaped element (and is required to be so in claim 11), and because the disc-
shaped element is a separate component and spaced from the cutting
element, it is not made clear how the height and width of the disc’s rim can
be said to be “confined by the dimensions of the [separate] external cutting
element” or a clearance therewith, as expressed. Final Act. 7.
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support a conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). We reverse the Examiner’s rejection of claim 1 and
dependent claims 2, 4, 6, and 10.
Claim 11
Independent claim 11 differs from claim 1 as noted above, and further
differs by reciting the rim (which need not be “raised”) as “perpendicularly
extending along a circumferential edge of a side surface of the disc-shaped
element facing a side surface of the external cutting element.” Note the lack
of any requirement that the rim extend “between” these “facing” surfaces
and only “along . . . facing” surfaces.
Here, the Examiner likewise correlates the claimed rim to that portion
of Uchiyama’s disc-shaped element 28 associated with “the roof of the gap.”
Final Act. 10. The Examiner finds that this rim (see R2) meets the claim
limitation “perpendicularly extending along a circumferential edge of a side
surface of the disc-shaped element” with this side surface of the disc-shaped
element “facing a side surface of the external cutting element.” See Final
Act. 10 (the rim extending along a surface “facing the external cutting
element (12)”). Appellant presents no argument attempting to distinguish
Uchiyama’s disclosure on this point, electing instead to rely on the
“perpendicularly extending between” limitation argued above with respect to
claim 1 (and not recited in claim 11), which we did not find persuasive.8 See
Appeal Brief and Reply Brief generally.

8 We note that Appellant recites, and highlights, certain limitations from
claim 11. See Appeal Br. 12; Reply Br. 9, 10. However, lacking an
argument directed thereto, the mere recitation of claim language and a naked
assertion that these elements are not found in the prior art, is not sufficient to
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Application 14/772,836

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However, claim 11 also recites certain ranges for the height and width
of the rim, as does claim 1. The Examiner, likewise, relies on optimization
of result effective variables as discussed above regarding claim 1 to reject
this claim as well. See Final Act. 11. Thus, the lack of any indication that
the height or width of the rim are result-effective variables also permeates
the Examiner’s rejection of claim 11. For this reason, we, likewise, do not
sustain the Examiner’s rejection of claim 11, and dependent claims 12, 13,
and 15, as being obvious over Uchiyama and Nakano.
The Examiner’s rejections of (a) claim 7 as unpatentable over Uchiyama,
Nakano, and Oddenino, and (b) claims 9 and 14 as unpatentable over
Uchiyama, Nakano, and Shimizu
The Examiner does not employ the additional references to Oddenino
or Shimizu in a manner that might cure the defects noted above.
Accordingly, we likewise do not sustain the Examiner’s rejections of these
claims.

overcome an Examiner’s conclusion of obviousness. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011)); see also 37 C.F.R. § 41.37(c)(1)(iv).
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Application 14/772,836

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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6,
10–13, 15
103 Uchiyama, Nakano 1, 2, 4, 6,
10–13, 15
7 103 Uchiyama, Nakano,
Oddenino
7
9, 14 103 Uchiyama, Nakano,
Shimizu
9, 14
Overall
Outcome
1, 2, 4, 6, 7,
9–15
REVERSED