Ex parte Gray
Appeal 2009002038; Appl. No. 10/798,541; Tech. Center 3700
Decided October 24, 2010
A representative claim on appeal read:
2. A shaving razor comprising
a housing having a primary guard at a front of said housing and a primary cap at an upper surface at a back of said housing, one or more primary shaving blades between said primary guard and said primary cap,
a trimming blade mounted at the back of said housing having a trimming blade cutting edge oriented away from said upper surface, and
an elongated handle having a first end secured to said housing,
said handle having a finger pad at said first end on the same side as said primary blades.
During prosecution, the Examiner rejected the claims as anticipated by a patent to Rozenkranc. The assignee of Rozenkranc also owned the application, a fact that would become pertinent later. With respect to Rosenkranc's disclosure of the claimed location of the finger pad, the Examiner provided this annotated figure:
The Applicant argued this limitation by making an analogy:
The finger pad is placed closer to one end of the handle versus the other. one were to place a football on the 45 yard line of a football field one would not say that the football is placed at one end of the field.
The same can be said for the alleged finger pad of Rozenkranc. The finger pad is positioned in the middle of the handle and not at the first end. Thus, even if there is a finger pad in the area indicated by the Examiner, this cannot fairly be construed to be positioned "at the first end" of the handle.
The Examiner maintained the rejection, but changed the interpretation of the reference to include new information about the dimensions. In doing so, the Examiner accused the Applicant of mischaracterizing the commonly-owned Rozenkranc reference:
[T]he handle of Rozenkranc is a Gillette Mach 3 razor handle, and is not drawn to scale. I have personally measured a Gillette Mach 3 Handle, and the finger pad (as you, Gillette should know) starts much closer to the terminus having the primary blades than 45% as you continually allege. It is at the 20% mark that the finger-pad begins, which is unquestionably "at a first end" thereof. Your argument that the pad begins at the 45 yard line is misleading, and not in good faith.
The Applicant went to appeal, but did not address the Examiner's comment in the Appeal Brief. The Applicant did, however, contest the Examiner's finding in the Reply Brief:
First, the Office asserts that the handle of Rozenkranc is a Gillette Mach 3 razor handle. The Applicant, Gillette, has no idea where this notion came from but it is factually incorrect. Second, the position taken by the Office that the middle of an object constitutes an end is unreasonable.
The Board agreed with the Applicant, finding that the Examiner's interpretation of "end" to read on the middle was unreasonable. The Board also drew attention, in a footnote, to the Examiner's unsupported findings about the Mach 3 razor:
3 The Examiner notes in the Answer that he had stated previously in the Final Office Action of July 9, 2007, that the handle of Rozenkranc is a Gillette Mach 3 razor handle, and that he personally measured such a handle and found that the finger pad starts at the 20% mark from the terminus of the handle. Ans. 22. The Examiner fails to provide any basis for the assertion that the Rozenkranc handle is a Gillette Mach 3 razor handle, and Appellants deny the accuracy of this assertion. Reply Br. 1.My two cents: When an Examiner makes a finding that relies on personal knowledge – as was clearly the case here – the rules require a "personal knowledge" affidavit under § 1.104. Here, the Examiner could easily attest to the measurements of a Mach 3 razor, but that alone wouldn't be evidence that the Rozenkranc reference described a Mach 3.
Here, the Applicant didn't ask for an affidavit, but instead specifically denied of the allegation. Should the Applicant have asked for an affidavit? Since the rule makes a requirement of the Examiner, not the Applicant, I don't see that the Applicant gave up anything by not asking.
On the other hand, this case caught my eye because it's one of the few I've seen where a personal knowledge affidavit really does apply. Applicants often ask for one in situations where it doesn't apply: statements that are really about Official Notice or an allegation of something being well known. (See my post Examiner affidavit of personal knowledge for a discussion of this misstep.) So I thought it was a little weird that in the one instance that seemed to cry out for a personal knowledge affidavit, the Applicant didn't ask for one.
What about the Applicant specifically denying, in the Appeal Brief, the Examiner's allegation as "factually incorrect"? Did the Applicant investigate the commonly owned Rozenkranc patent and make a determination that Rozenkranc did not describe a Mach 3 razor? If not, was it a bad idea to put this specific denial in the record? And if the Applicant did make such a determination about its commonly owned patent, was it a good idea to put that determination in the record? Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?
As you can see, this case turned out – as many do – to be mostly about claim interpretation. I'll discuss the claim construction issue in more detail in a future post.