Ex Parte Nakayama et al

Patent Trial and Appeal Board

Feb 26, 2013

11826238 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/826,238 07/13/2007 Satoshi Nakayama NAKA3068/EM 1658
23364 7590 02/27/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
KLING, CHARLES
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
02/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SATOSHI NAKAYAMA and KENSAKU KANADA
____________

Appeal 2011-010504
Application 11/826,238
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek relief under 35 U.S.C. § 134 from the final rejection
of claims 1, 3, 6, and 11 directed to a cleaning device for a hair removing
apparatus. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-010504
Application 11/826,238

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STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A cleaning device for a hair removing apparatus having a hair
clipping unit for removing hair, comprising:

a cleaning basin for accommodating the hair clipping unit therein;

a fluid circulating mechanism for supplying or recovering cleaning
fluid into or from the cleaning basin;

a drying mechanism for drying the hair clipping unit in the cleaning
basin after the hair clipping unit is cleaned; and

a controller for controlling the fluid circulating mechanism and the
drying mechanism,

wherein the controller is configured to transmit a control signal to the
hair removing apparatus to drive the hair clipping unit while the drying
mechanism is being operated, and

wherein the controller is configured to drive the hair clipping unit
intermittently while the drying mechanism is being operated

THE REJECTIONS
1. Claims 1 and 3 are rejected as unpatentable over Chasen (US
2006/0107971 A1, pub. May 25, 2006) in view of Dias (US 4,347,671,
patented Sept. 7, 1982) and Braun (US 5,614,030, patented Mar. 25, 1997)
(Ans. 4); and
2. Claims 6 and 11 are rejected as unpatentable over Chasen in
view of Dias and Braun and further in view of Yoshida (JP 59-105500 A,
pub. June 18, 1984) (Ans. 6).
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ISSUE
The following dispositive issue arises:
Does the Examiner err in finding that Chasen discloses a controller
that “is configured to drive the hair clipping unit intermittently while the
drying mechanism is being operated” as specified in claim 1?
We answer this question in the affirmative and REVERSE.
ANALYSIS
Claim 1 requires a controller that is “configured to drive the hair
clipping unit intermittently while the drying mechanism is being operated.”
A dispositive question arises whether Chasen’s controller is so configured.
Compare Ans. 4, 10 (citing Chasen, Table II) to App. Br. Our analysis of
that issue is dispositive of all issues raised in this appeal.
The Specification explains that, “[b]y driving the hair clipping unit
intermittently during the drying operation, the reduction of the lifetime of
the hair clipping unit caused by driving it continuously throughout the
drying operation . . . can be reduced.” Spec. 4:16-21 (as amended March 8,
2010). Specifically, “the edges of blades” may “be abraded when” a hair
clipping unit having a slidably-moving cutter block is continuously “driven
for a long period of time.” Id. at 4:21-24. Further, the “noise generated”
when the hair clipping unit is driven “continuously throughout the drying
operation” can be reduced by driving the hair clipping unit intermittently.
Spec. 4:20-21 (as amended).
Thus, the Specification emphasizes that claim 1 is directed to a
controller that “drives the hair clipping unit intermittently” during a period
when “the drying mechanism is being operated.” Spec. 4:14-16. In the
Appeal 2011-010504
Application 11/826,238

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parlance of Chasen, claim 1 requires a shaver that is ON-OFF-ON during a
period when the dryer is ON. Compare Chasen, Tables I and II.
Chasen includes a “control system” used “to clean and dry shaver 21.”
Id. at ¶ [0083] and Figs. 1, 4, and 12. Chasen’s “cleaning system 20 is
constructed with the cleaning cycle being initiated by the user.” Id. at
¶ [0090] and Figs. 4 and 7. “Once button 107 is pressed by the user,
integrated circuit 106 activates the cleaning cycle, and automatically initiates
the precisely desired timed sequential operational steps” set forth in Tables I
and II. Id. Chasen includes “a fan” that brings “air to the shaver after
cleaning” so that “the cleaned cutting elements of the shaver are efficiently
and effectively dried.” Id. at ¶ [0022].
Tables I and II describe Chasen’s cleaning and drying cycles, which
are initiated by the control system 21 when a user presses button 107. Id. at
¶ [0090] and Tables I and II. It is apparent from Tables I and II that the
drying fan is OFF until the penultimate step in each preferred cycle. Id. at
Tables I and II. At that point, the fan turns ON to operate simultaneously
with the shaver for a period of time (1-4 minutes in Table I or 15 seconds in
Table II). In the next and final step, or the drying step, the shaver turns OFF
while the fan continues to operate for a period of 15-22 minutes (Table I) or
19 minutes (Table II). Id. Thus, as Appellants point out, “once the drying
operation starts, the shaver is switched OFF” and “is never switched back
ON.” App. Br. 10 (citing Chasen, Tables I and II).
The Examiner concedes that Chasen “does not explicitly disclose the
controller being configured to drive a shaver intermittently during drying,”
but finds that Chasen’s controller “would have been fully capable of
performing this function” as shown by the last three steps described in
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Application 11/826,238

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Table II, wherein the shaver turns “OFF for 60 seconds after the cleaning
operation, then turn[s] ON for 15 seconds in conjunction with the drying fan,
and then [] turn[s] OFF again.” Ans. 7. In the Examiner’s view, “repeating
this ON – OFF operation” involves no more than “repeating, or duplicating,
a known operation” that would have been within the level of skill in the art.
Id. In other words, it would have been an obvious modification of Chasen’s
process to press button 107 twice to initiate two consecutive cycles of the
steps reported in Table II. See id.; Chasen ¶ [0090] and Table II.
The "capable of" test requires that the prior art structure be capable of
performing the function without further programming. Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). Chasen describes a control system that
“automatically initiates the precisely desired timed sequential operational
steps which have been found to produce optimum cleaning of the shaver.”
Chasen ¶ [0090]. We understand that disclosure to require that the
controller be programmed to run the particular operational steps. Chasen’s
Tables II shows that the controller is programmed to perform a particular
sequence of operations and times for the various components of the cleaning
process. Particularly, repeating the sequence of steps reported in Table II of
Chasen would simply repeat the drying operation wherein the shaver turns
ON, never to be turned OFF again, while the dryer is operating. Repeating
the Table II cycle thus does not achieve an intermittent (ON-OFF-ON) use
of the shaver during a period when the dryer is ON. Chasen, Table II. Even
if we accept the Examiner’s view that a skilled artisan would have had some
reason to press button 107 twice in succession, that modification of Chasen’s
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Application 11/826,238

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process would not result in driving “the hair clipping unit intermittently
while the drying mechanism is being operated” as specified in claim 1.
Rather, Chasen’s controller would need to be reprogrammed to perform the
claimed functionality and, thus, the Examiner has not established that
Chasen’s existing controller structure possesses the capability of operating
as required by the claims.

CONCLUSION
For the above reasons, we reverse the rejections of claims 1, 3, 6,
and 11.

REVERSED

kmm