Tseng v. Doroodian-Shoja,

1 Filed on June 20, 1995. Accorded the benefit of
application 08/269,495, filed July 1, 1994. The real party in
interest is The Gillette Company.
2 Based on application 08/188,244, filed January 28, 1994.
The real party in interest is Arthur D. Little Enterprises, Inc.
THE OPINION ENTERED TODAY IS NOT
BINDING PRECEDENT OF THE BOARD
Filed by: Merits Panel Paper No. 85
Interference Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
MINGCHIH M. TSENG
Junior Party
(Application 08/461,318)1,
v.
SIAMAK DOROODIAN-SHOJA
Senior Party
(Patent No. 5,388,331).2
_______________
Patent Interference No. 104,482
_______________
Before SCHAFER, LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
MEMORANDUM OPINION AND JUDGMENT
Introduction
Senior party patentee Doroodian-Shoja filed (1) preliminary

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motion 1 alleging no interference-in-fact; and (2) preliminary
motion 2 for judgment under 35 U.S.C. § 135(b). Junior party
applicant Tseng filed (1) preliminary motion 1 to add more claims
to its involved application; (2) preliminary motion 2 for
judgment against Doroodian's patent claims 1-6 under 35 U.S.C.
§ 112, first paragraph, for lack of an enabling disclosure; (3)
preliminary motion 3 for judgment against Doroodian's patent
claims 1-6 for indefiniteness under 35 U.S.C. § 112, second
paragraph; (4) preliminary motion 4 for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification;
and (5) preliminary motion 5 for judgment against claims 1-6 of
Doroodian's patent claims 1-6 as being unpatentable over prior
art.
Findings of Fact
The following findings of fact as well as those contained in
the discussion portion of this opinion are supported by a
preponderance of the evidence.
1. This interference was declared on January 12, 2000.
2. Junior party Tseng is involved on the basis of U.S.
application 08/461,318, filed June 20, 1995.
3. Senior party Doroodian is involved on the basis of U.S.
Patent No. 5,388,331, filed January 28, 1994.

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4. At the time of declaration of this interference, junior
party Tseng was accorded the benefit of application 08/269,495,
filed July 1, 1994.
5. The involved application claims of junior party Tseng
are claims 113, 117-123 and 130-136, which all correspond to the
count in this interference.
6. The involved patent claims of senior party Doroodian
are claims 1-6, which also all correspond to the count of this
interference.
7. Of Tseng's involved applications claims, claims 113,
117, 118, 134 and 135 are each independent claims and the rest
are dependent claims.
8. Of Doroodian's involved patent claims, only claim 1 is
an independent claim.
9. The count in this interference is set forth in Paper
No. 1 as:
Claim 1 of Doroodian or Claim 135 of Tseng.
10. Claim 1 of Doroodian reads as follows:
1. In a disposable razor or razor cartridge
comprising at least one blade mounted in a head or
frame, said blade having a shaving edge, the
improvement comprising wear indicating means for
indicating the amount of wear on the shaving edge, said
wear indicating means being located on the head or
frame in close proximity to the shaving edge of said
blade, and said wear indicating means comprising a
strip of material extending generally parallel to the

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shaving edge, said strip of material gradually wearing
away as the disposable razor or razor cartridge is used
in shaving, the amount of material wearing away being
correlated with the amount of wear on the shaving edge
to provide a visual indication of the relative wear on
the blade.
11. The first paragraph of the BACKGROUND OF THE INVENTION
section of the specification of senior party Doroodian's involved
patent states:
This invention relates to disposable razors, and
particularly to a visual means for readily indicating
to the user the relative amount of wear that the blade
of a given disposable razor has undergone.
12. The fourth paragraph of the BACKGROUND OF THE INVENTION
section of the specification of senior party Doroodian's involved
patent states:
It is believed that the typical user of a
disposable razor would benefit from the inclusion of
some reliable, and easily recognizable, visual
indicator of the relative amount of wear that a
particular disposable razor blade has undergone. With
such a visual indication, it would not be necessary to
determine the wear on the razor by the amount of pain
or discomfort felt when the blade was used.
13. Doroodian's specification describes multiple
embodiments of how a visual indication may be provided on a razor
cartridge which reveals the relative wear on the shaving blade
over a plurality of shaving sessions, including the embodiments
illustrated in Figures 3a through 3j and 4a through 6b.
14. Doroodian's specification does not fully disclose how

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the embodiments shown in its Figures 2 and 7 work or operate.
15. All of the embodiments in Doroodian's specification for
which there is an adequate disclosure of how they operate provide
a "multiple points-in-time" indicator strip that gives a visual
indication of the relative wear on the shaving blade beyond
simply that the shaving cartridge or the indicator strip has
reached its intended useful life.
16. Junior party Tseng's application claim 135 reads:
A razor cartridge comprising a blade and an [sic]
inmovable skin engaging member affixed adjacent said
blade, said skin engaging member located such that it
contacts the skin of a user during shaving, said skin
engaging member comprising two adjoining disparately
colored, solid polymeric layers, said layers comprising
an erodable skin engaging layer of a first color
overlaying a non-skin engaging layer of a different
color, wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to
visually expose said non-skin engaging layer over time.
17. The Field of the Invention section of junior party
Tseng's specification, as filed on June 20, 1995 (Tseng Exhibit
2008), reads in its entirety as follows:
This invention relates to an improved skin
engaging member for use in razor blade cartridge
assemblies and shaving systems of the wet shave type.
The present invention resides broadly in providing the
skin engaging cap and/or guard surfaces with
configurations which reduce frictional drag of the
razor across the skin. This invention also relates to
a novel method of manufacturing the skin engaging
member of the present invention.
18. The SUMMARY OF THE INVENTION portion of Tseng's

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specification, as filed on June 20, 1995 (Tseng Exhibit 2008),
lists three objectives for Tseng's invention:
An object of the present invention is to provide a
skin engaging member with improved mechanical strength.
Another object of the present invention is to
provide a skin engaging member with improved shaving
aid material release characteristics.
Yet another object of the present invention is to
provide a wear indicating skin engaging member.
19. On page 6 of Tseng's specification as filed on June 20,
1995 (Tseng Exhibit 2008), it is stated:
In an embodiment of the present invention a wear
indicating effect is produced when the sheath material
and the core material are made of disparately colored
materials (e.g. white colored sheath and blue colored
core). Upon use, the sheath material over the skin
engaging surface is typically worn off through use.
With sufficient use, a second colored region
represented by the core is exposed, thus, providing the
user with [an] indication that the shaving unit and/or
skin engaging surface have reached their effective
life. In a preferred embodiment, the sheath material
consists of polyethylene oxide/polystyrene mixture
which is white in color and the core consists of nylon
and/or styrene which has been colored with a FD&C #2
dye. Other suitable dyes or pigments include FD&C Red
No. 40, Erythrosine (FD&C Red No. 3), Brilliant Blue
FCF (FD&C Blue No. 1), Indigotine (FD&C Blue No. 2),
Tartozine (FD&C Yellow No. 5), Sunset Yellow FCF (FD&C
Yellow No. 6) and Fast Green FCF (FD&C Green No. 3) and
Titanium Dioxide. (Emphasis added).
20. With respect to the language on page 6 of Tseng's
specification stating that "a second colored region represented
by the core is exposed," the phrase makes no distinction between

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partial exposure and complete exposure of the core. Tseng's
specification contains no reference to or explanation of any
meaningful distinction between partial and complete exposure of
the core. The core is exposed when any portion of it is exposed.
21. Tseng's specification makes no mention of the duration
of or any significance, value, or benefit, of the time period,
assuming that there is any such time period, between partial
exposure and full exposure of the differently colored core.
Tseng's specification does not describe or disclose that a
meaningful such period exists or that it has a duration longer
than a single shaving session.
22. Tseng's specification does not describe or disclose a
"multiple points-in-time" indicator strip which provides a visual
indication of the relative wear on the shaving blade from one
shaving session to the next. The visual indication provided by
exposure of the core reveals only that the shaving unit and/or
the skin engaging layer has reached its intended useful life.
Discussion
A. Doroodian's preliminary
motion 1 asserting that
there is no interference-in-fact
Patentable distinctness between the parties' claims, in
either direction, is sufficient to demonstrate no interference-
in-fact. As the moving party, Doroodian has the burden of proof

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to demonstrate either (1) that none of its claims corresponding
to the count would have been anticipated by or rendered obvious
over any of Tseng's involved claims, or (2) that none of Tseng's
claims corresponding to the count would have been anticipated by
or rendered obvious over any of Doroodian's involved claims.
Doroodian's preliminary motion 1 chooses to show the former, not
the latter. In the Summary Of Argument portion of its
preliminary motion 1, Doroodian states:
The Doroodian claims [1-6] require a wear indicating
means (a strip of material) having two requirements
that are not taught by the involved Tseng claims or
suggested by the subject matter of the involved Tseng
application and claims: (1) gradually wearing away
during use, due to abrasion with the skin of the user,
where the amount of material wearing away is correlated
with the amount of wear on the shaving edge of the
blade; and (2) as the material wears away, the user is
provided with a visual indication of the relative wear
on the blade. These patentable features recited by the
involved Doroodian '331 patent Claims 1-6 are neither
claimed by the Tseng claims nor disclosed nor rendered
obvious by the subject matter of the Tseng application.
To connect the argument to its claims, Doroodian at page 17 of
its preliminary motion 1, in lines 5-12, states:
The "wear indicating means" limitation found in
independent Claim 1 and dependent Claims 2-6 of the
Doroodian '331 patent, can be subdivided into at least
two (2) separate elements:
(1) a material which is primarily worn away gradually
via abrasion and friction where the amount of
material gradually abrading or wearing away is
correlated with the wear on the shaving edge; and

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3 Tseng correctly notes that the word "primarily" nowhere
appears in any of Doroodian's claims 1-6 in connection with the
material of the wear indicating means being worn away by abrasion
or friction. However, the mischaracterization is without harm
because if a material is representable as being worn away by
abrasion or friction it reasonably would or should be "primarily"
worn away by abrasion or friction.
- 9 -
(2) the amount of material gradually abrading or
wearing away provides a visual indication of the
relative wear on the blade to the user. (Emphasis
in original).
Doroodian argues that the two claim elements identified
above3 neither expressly nor inherently form a part of the
subject matter of the involved Tseng claims and thus the subject
matter of the involved Tseng claims does not anticipate the
subject matter of the involved Doroodian '331 claims. According
to Doroodian, these two claim elements also render Doroodian's
claims 1-6 nonobvious over any one of Tseng's involved claim.
We are only partially persuaded by Doroodian's argument. In
our view, only the second of the two elements identified above is
not taught by the involved claims of Tseng. That difference
alone, however, is sufficient to support the conclusion that none
of Doroodian's involved claims is anticipated by or would have
been rendered obvious over any of Tseng's involved claims.
We first discuss why Doroodian's assertion is incorrect that
none of Tseng's involved claims satisfies the first of the two
above-identified claim elements, i.e., that the material is worn

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away gradually by abrasion and friction and the amount of
material gradually abrading or wearing away is correlated with
the wear on the shaving edge. Thereafter, we will discuss why
Doroodian's assertion is correct that none of Tseng's involved
claims satisfies the second of the two above-identified claim
elements about providing a visual indication on the relative wear
of the blade.
Our interference-in-fact discussion will not include Tseng's
independent claim 134, because as we will explain later that
claim is unpatentable under 35 U.S.C. § 112, first paragraph. In
the analysis of Doroodian's assertion of no interference-in-fact,
we need not discuss any claim of Tseng which is unpatentable.
We reject Doroodian's argument that because party Tseng had
previously argued to the examiner prior to declaration of this
interference that its claimed invention is patentably distinct
from the claims in Doroodian's involved patent, Tseng cannot now
credibly argue otherwise. Tseng's argument to the primary
examiner was unsuccessful and was also directed to claims
different from those now involved in the interference. Tseng is
not restricted to a position it had previously unsuccessfully
taken before a primary examiner, even if the argument is directed
to the same claims. Tseng has obtained no apparent benefit from
its previous argument, which would render unfair the taking of a

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different position now.
Each of Tseng's independent claims 113, 117, 118 and 135
recites a skin engaging member which includes an erodible skin
engaging layer of a first color overlaying a non-skin engaging
layer of a different color. Each of claims 113, 117, 118 and 135
further recites that the skin engaging layer erodes or is adapted
to erode during contact with skin during shaving to visually
expose the non-skin engaging layer.
We find that according to Tseng's disclosure all described
erosion of the skin engaging layer "during contact" with the
shaver's skin and "during shaving" are gradual and are through
abrasion and friction. We further find that Tseng's disclosure
does not contemplate, recognize, or refer to any erosion through
ordinary use of the shaving cartridge during contact with skin
and during shaving that is not gradual or that is not due to
abrasion or friction. For instance, the shaving aid constituting
Tseng's skin engaging layer is for providing shaving assistance
through "multiple" shaves and the Tseng specification does not
allude to any possible use for a sudden release of all shaving
aid in one stroke of the razor or a single shaving session. In
light of these findings concerning Tseng's specification, we find
that the erosion claimed by Tseng is implicitly gradual.
Notwithstanding that Tseng's disclosed skin engaging layer

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comprises between 70% to 100% of a water soluble shaving aid, the
erosion "during contact" with skin and "during shaving," as
described in Tseng's disclosure is via abrasion and friction with
skin. Even though Tseng's disclosed skin engaging layer is
mostly, if not entirely, water soluble and is designed to
dissolve or leech away during use, it is not worn away from the
razor cartridge until the razor cartridge is applied in physical
contact with the skin of the shaver and stroked over the area
being shaved. Water solubility of the shaving aid facilitates
the material's being worn off the skin engaging layer during
contact with skin, and does not change the fact that abrasion and
friction are responsible for wearing the material off the skin
engaging layer. Merely dissolving material in water is not
ordinarily considered wear on the material. Even dissolved
portions of the material need to be removed, and that is done by
abrasion and friction with skin during shaving. Tseng's
disclosure neither refers to nor acknowledges the existence of
any way to cause erosion of shaving aid material during skin
contact and during shaving that would not be due to abrasion and
friction with skin. Furthermore, if the material eroded away
without having contacted the skin, it would not constitute a
shaving aid 	 - Tseng's disclosed intended use for the material.
In light of our findings concerning Tseng's disclosure, we

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conclude that the gradual wearing down of Tseng's skin engaging
layer during contact with skin and during shaving, as is
specified in Tseng's claims 113, 117, 118 and 135, is indeed by
abrasion and friction.
As for whether the material gradually abrading or wearing
away is correlated to the wear on the shaving edge, we find that
that is an inescapable and necessary result which always follows
from practicing the invention described in Tseng's disclosure.
Tseng's specification recognizes that the shaving blade wears
down and has only a limited life. See Tseng specification at
page 5, lines 21-22. We find that during the ordinary and
intended use of Tseng's disclosed invention, the wearing down of
the skin engaging layer or shaving aid "during contact" with skin
and "during shaving" is always associated with shaving action on
the shaving blade.
While it is true that a cartridge may be placed in a pot of
warm water and in sufficient time the soluble portions of the
skin engaging layer can dissolve entirely without the shaving
blade ever being used or worn. But based on Tseng's
specification, such an event falls clearly outside of the
intended and ordinary use of the disclosed razor cartridge. We
find that for Tseng's disclosed invention, any time the razor
cartridge is used in actual shaving, erosion of the skin engaging

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layer during skin contact and during shaving accompanies some
wear on the shaving blade, without exception. Note that Tseng's
claims 113, 117, 118 and 135 refers to erosion of the skin
engaging layer "during contact" with skin and "during shaving."
See also lines 12-15 of column 3 of Doroodian's specification,
which states: "The strip should be so located that it is
virtually constantly in contact with the skin and hair or beard
during the shaving stroke."
Doroodian's claims require "correlation" to blade wear only
generally. No particular relationship is specified in the
claims. Also, no special meaning is defined in Doroodian's
specification for the term "correlate," which according to
Merriam Webster's Collegiate Dictionary, Tenth Edition, 1999, has
the following general meaning as a verb:
2: to bear reciprocal or mutual relations: correspond-
vt 1 a: to establish a mutual or reciprocal relation
between <- activity in the lab and in the field> b: to
show correlation or a causal relationship between 2: to
present or set forth so as to show relationship . . . .
The only paragraph in the portion of Doroodian's
specification entitled "DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENT" which uses the word "correlate" is this (column 5,
lines 22-30):
An advantage of the subject invention is that the
amount of wear undergone by strip itself is related to
the "toughness" of the skin and hair being shaved 

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i.e., as stated above, "tough" hair will cause the
indicator strip to wear away more rapidly than "soft"
hair. Thus the amount of wear on the strip correlates
well with the amount of wear on the blade. (Emphasis
added.)
What the above-quoted passage from Doroodian's specification
indicates is that two elements are well correlated if simply that
more of one means more of the other. This broad meaning of the
term "correlate" is not disputed by Doroodian's counsel during
oral argument on May 23, 2001, who responded to questions from
the panel on what "correlate" means by stating that no particular
relationship is necessary and that so long as both elements move
in the same direction there is correlation.
In light of the recitation in Tseng's claims 113, 117, 118
and 135 that the skin engaging layer erodes during contact with
skin and during shaving, we find that it is inherent that during
ordinary and intended use of Tseng's claimed razor cartridge more
erosion on the skin engaging layer means more wear of the shaving
edge or blade. As skin contact erodes the skin engaging layer,
the cutting action of the blade on hair wears down the shaving
blade. Our finding of inherency is supported by the following
cross-examination testimony of Doroodian's technical witness
Anthony R. Booth (Tseng Exhibit 2089, page 527):
Q. Is the amount of material that leaches and
erodes away from the outer layer 72 [Tseng's cartridge]
correlated with wear on the edges of the blade 60 and

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62?
[Doroodian's counsel]: Objection.
A. When used in a normal shaving manner I would
expect that to be true.
* * *
Q. [exchange between counsel] Does the outer
layer 72 wear away each time the cartridge is used in
shaving?
[Doroodian's counsel]: Objection.
A. When the cartridge is used in a normal manner
I would assume that to be true, yes.
Q. You don't have any doubt about that, do you?
A. Not if it was used in a normal manner, no.
* * *
Q. Does the amount of blade wear on the edges of
blade 60 and 62 of the cartridge shown in Figure 3
[Tseng's application] increase in the aggregate as the
cartridge is repeatedly used?
[Doroodian's counsel]: May I have the question
back, please?
[Record read.]
[Doroodian's counsel]: Objection.
A. My understanding is that the blades would
wear each time they are shaved.
We conclude that the feature that the amount of material
gradually abrading or wearing away is correlated with the wear on
the shaving edge is inherently a part of Tseng's claims 113, 117,

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118 and 135.
The question now remaining is this: In the invention of
Tseng's independent claims 113, 117, 118, 135, and claims
dependent thereon, does the amount of material worn from the skin
engaging layer provide a visual indication of the wear on the
shaving edge or blade? In that regard, Doroodian's independent
claim 1 recites: "wear indicating means for indicating the
amount of wear on the shaving edge" and "the amount of material
wearing away being correlated with the amount of wear on the
shaving edge to provide a visual indication of the relative wear
on the blade" (Emphasis added). Doroodian's claim 1 recites a
means-plus-function clause under 35 U.S.C. § 112, sixth
paragraph, i.e., "wear indicating means for indicating the amount
of wear on the shaving edge."
According to Doroodian, its claimed wear indicating means
requires a "multiple points-in-time" indicator "where the amount
of strip material wearing away is correlated with the amount of
wear on the shaving edge to provide a visual indication of the
relative wear on the blade beginning when the cartridge is first
used, and continuing with each shave until the user decides,
based upon prior experience, the indicator strip (and hence the
cartridge) has worn to a level that will result in shaving
discomfort if used further." Doroodian distinguishes such a

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"multiple points-in-time" indicator from a "single point-in-time"
indicator which gives only a single indication that a skin
engaging layer including a shaving aid is essentially all eroded
away from usage. Doroodian asserts that Tseng's involved claims
require a "single point-in-time" indicator while Doroodian's
claims require a "multiple points-in-time" indicator.
Doroodian's argument is persuasive, except that we regard
the period in which a visual indication must be provided to be
from the time when the razor unit is new to a time when the blade
has reached its intended useful life for shaving. Doroodian's
reference to "shaving discomfort" and an actual user's prior
experience is too subjective to be meaningful. We further
clarify that the term "multiple points-in-time" as used herein
means a substantially continuous spectrum on a shaving session by
shaving session basis whereby each shaving session brings about
an erosion and an observable change in the visual indication.
For reasons discussed below, we regard Doroodian's claims as
requiring a "multiple points-in-time" indicator and Tseng's
claims as requiring a "single point-in-time indicator."
As noted above, Doroodian's claims 1 recites a means-plus-
function clause the stated function of which is "for indicating
the amount of wear on the shaving edge." The context of claim 1
in its entirety, as written, is not any particular fixed moment

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4 We herein designate that paper as a part of the official
record we have considered for purposes of this decision.
- 19 -
in time. Rather, it is expressly recited that the wear
indicating means has a strip of material "gradually wearing away
as the disposable razor or razor cartridge is used in shaving."
In such an actively or continuously changing environment, the
reference to "for indicating the amount of wear on the shaving
edge" does not reasonably mean an indication at a particular
moment in time. Rather, it means at whatever time, i.e., the
time of observation of the visual indication. The last phrase in
claim 1 supports our view, in reciting: "the amount of material
wearing away being correlated with the amount of wear on the
shaving edge to provide a visual indication of the relative wear
on the blade." The phrase ties the amount of material "wearing
away" to "relative wear" on the shaving blade, and that reflects
appreciation for an actively or continuously changing environment
and a visual indication on a progressive basis.
In an amendment filed June 22, 1994 (Paper 4a in the file of
Doroodian's involved patent)4, wherein the language "for
indicating the amount of wear on the blade edge" was added to the
means plus function clause, Doroodian specifically distinguished
its claimed invention from the prior art by arguing with respect
to the prior art that there is "no suggestion that the strip is

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worn away in such a way as to provide a visual indication of
progressive blade wear" (Emphasis in original). Thus, by its own
representation to the U.S. Patent and Trademark Office during
examination of its involved patent, Doroodian has clarified and
limited the visual indication provided by its wear indicating
means to the "progressive" variety. Visual indication of
progressive blade wear unmistakably corresponds to Doroodian's
assertion of a "multiple points-in-time" and not a "single point-
in-time" indicator.
Doroodian's specification supports our view, insofar as
disclosed embodiments and 35 U.S.C. § 112, sixth paragraph, are
concerned. Per 35 U.S.C. § 112, sixth paragraph, the claimed
wear indicating means covers only corresponding embodiments
disclosed in the specification and equivalents thereof. All of
Doroodian's disclosed embodiments which have been described in
sufficient detail are of the progressive or "multiple points-in-
time" type. See, for instance, the embodiments illustrated in
Figures 3a-3j, 4a-4b, 5a-5b, and 6a-6b.
Tseng argues that Doroodian's specification discloses other
preferred embodiments which are of the "single point-in-time"
indicator type, for instance, Doroodian's Figures 2 and 7. But
those embodiments have not been described in sufficient detail
for one with ordinary skill in the art to know how they operate

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to provide the visual indication. To say that they illustrate a
"single point-in-time" indicator strip more reflects wishful
thinking on the part of Tseng than it does corresponding
description in the specification. In our view, the embodiments
of Doroodian's Figures 2 and 7 are not sufficiently described to
constitute a corresponding embodiment for the wear indicating
means of Doroodian's claim 1, within the context of 35 U.S.C.
§ 112, sixth paragraph. The claimed means-plus-function clause
cannot be defined on the basis of embodiments whose operation are
not sufficiently described to be reasonably understood.
Doroodian's Figure 2 possibly illustrates the shaving head
after a top layer of wear indicating means has been eroded away
completely to reveal the indicia "DISPOSE" on the shaving head.
It also possibly illustrates the indicia on the lower layer of a
two-layer wear indicating means after the top layer has been
eroded away completely. Which is it? A structure according to
either possibility is similar to another embodiment in
Doroodian's disclosure (see column 3, lines 24-31) wherein the
wear indicating means is in a single color that contrasts with
the color of the razor head, whereby the color of the razor head
is revealed after the wear indicating layer has been eroded away.
Doroodian's Figure 7 illustrates an embodiment with a two-
layer wear indicating means in which both layers have the same

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longitudinal cross-section (see column 3, lines 42-43) but
contrasting colors. In column 3, lines 42-47, the Doroodian
specification states:
The two layers may have the same longitudinal cross-
sections (as, for example, in FIG. 7) or may have
different longitudinal cross-sections to create
different visual patterns 	 for example as shown in
FIG. 3a, where the upper layer tapers from a thin edge
at one end of the strip to a wide edge at the other.
(Emphasis added).
Doroodian's argument that Figure 7 in Doroodian's specification
does not illustrate an embodiment of the wear indicator means
claimed in the patent is rejected. Whatever else may be
illustrated via Figure 7, the Figure unquestionably reveals an
embodiment wherein the two layers of the wear indicator means
have the same longitudinal cross section. While Dr. Booth
testified that he does not view Figure 7 as an embodiment, we
have not been directed to any testimony of Dr. Booth in which he
accounted for the above-quoted language in Doroodian's
specification.
The embodiments noted in the two immediately preceding
paragraphs, including the Figure 2 and Figure 7 embodiments,
share a common deficiency in completeness. For these
embodiments, the Doroodian specification does not describe what
the visual indication looks like before the upper layer of the
two-layer indicating means is completely worn away or before the

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 23 -
single layer of contrasting color with the shaving head is
completely worn away. What we have is simply a snap-shot in time
when what we need for a full understanding is a more complete
description of the changes, if any, in visual appearance leading
up to the time of complete erosion of the upper layer, as the
blade is being progressively worn. It is at least plausible that
more and more of the contrasting color or other indicia below
will become visible as a user goes through each shaving session
even though no portion of the lower layer or the shaving head is
physically exposed or uncovered. Whether that is the case is
uncertain. Note further that Dr. Anthony R. Booth testified that
the Figure 2 embodiment is only partially disclosed in
Doroodian's specification. (Booth Tr, 354). It is simply
uncertain how these embodiments work.
Doroodian's specification is far from being a model of
clarity. Many parts of it are outright confusing. In column 3,
lines 6-8, a "wear indicating strip" is defined; but in line 16,
it apparently became a "wear indicating means." No explanation
is provided for this transformation and it should be noted that
under 35 U.S.C. § 112, sixth paragraph, the legal residence of a
means-plus-function clause is only in a claim.
In the brief description of the drawings, Figure 7 is
described as follows: "Figure 7 comprises a diagram illustrating

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 24 -
the formula for determining the coefficient of wear for a given
set of shaving parameters." With regard to Figure 7, the
specification in column 4, lines 48-52 states that "%³	X is the
change in thickness X resulting from stroking the razor blade
over the skin for a distance L" and that "L is the distance that
the blade is stroked along the skin in a given [single] shaving
session." But Figure 7 also evidently shows %³	X to be the entire
thickness of the skin engaging layer A which should last multiple
shaving sessions, for instance an average of four sessions
according to column 5, lines 8-9. Clearly, %³	X cannot be both.
In column 3, lines 31-37, the Doroodian specification
states:
In a preferred embodiment, two layers of material
are used to comprise the wear indicating means, so
that, as the uppermost layer is worn away, the color of
the next layer becomes visible. As a further
alternative, a word such as "DISPOSE", or other words
or indicia (such as diagonal stripes or a row of
stars), could be made to appear as the upper layer is
worn away.
But the disclosure immediately preceding the above-quoted text
does not define a general invention which encompasses the above-
described preferred embodiment. Specifically, in column 3, lines
24-30, the specification states:
By making the wear indicating means in a color that
contrasts with the color of the razor head 14, the
relative wear on the strip will be evident because the
strip will be worn away, and the head will become

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 25 -
visible. For example, a white strip on a blue razor
head will gradually be worn away to reveal the blue
color underneath.
The above-quoted text does not set forth an invention for which
two layers having contrasting colors would constitute an
embodiment of the wear indicating means. At most, it is an
alternative embodiment which has not been referred to as
"preferred." Furthermore, assuming that it is an alternative
embodiment, it is just as incomplete as are the Figure 2 and
Figure 7 embodiments discussed above. It is uncertain just what
the visual indication reveals before the wear indicating means is
completely worn, beginning when the razor unit is new and unused.
In column 3, lines 38-41, Doroodian's specification states:
In this preferred two layer embodiment, two basic
methods of construction are contemplated. In the first
method, the two layers are constructed from either the
same or different material, but are of contrasting
colors. . . . [Emphasis added.]
No second method is thereafter described, however, even as the
specification commences, beginning in column 3, line 59, to set
forth an alternative embodiment to the two layer preferred
embodiment.
In column 3, lines 59-64, Doroodian's specification states:
In another alternative embodiment, the indicator
means may consist of a single strip of material, but
colored or dyed by known methods, so as to creat[e]
distinguishable zones. As the upper portion or zone of
the strip (of one color) is abraded away, the

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 26 -
contrastingly colored lower zone becomes visible.
The above-quoted description suggests that the two layers
included in the earlier described embodiment do not constitute a
single strip of material. But the two-layered preferred
embodiment described earlier in the specification does appear to
be an implementation of the wear indicating strip first defined
in column 3, lines 6-8. Moreover, as for just how the
contrastingly colored lower layer or zone becomes visible as the
upper layer or zone is abraded away, without abrasion of the
lower layer or zone mixed in with the upper layer or zone,
Doroodian's specification does not say.
In this sea of confusion one particular point stands out
with remarkable clarity 	 - that there is not a single instance in
Doroodian's specification where it discusses or appreciates the
benefit of knowing that the shaving blade is completely worn,
separate and apart from the benefit of knowing on a continuous
basis how much the blade has worn through each shaving session.
On the basis of Doroodian's specification, we cannot find that
there is any "single point-in-time" embodiment, not even with
respect to Doroodian's Figures 2 and 7 which, as we discussed
above, lack detailed explanations as to how they work. We are
not free to add embodiments to Doroodian's disclosure. Nor are
we free to add material to render complete an otherwise

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 27 -
incompletely disclosed embodiment.
Note further that Doroodian's specification refers to the
embodiments of Figure 7, Figures 3a through 3j, and Figures 4
through 6, all in the same vein. See column 3, lines 42-57.
There is not the slightest inkling that a major difference may
exist between these embodiments, e.g., that Figure 7's embodiment
would only give a visual indication at a single point in time,
when the blade is completely worn.
With regard to a two layered embodiment, evidently including
that of Figure 7 because this preferred embodiment can have
either the same or different cross-section, Doroodian's
specification states (column 3, lines 32-34):
"[a]s the uppermost layer is worn away, the color of
the next layer becomes visible. (Emphasis added.)
Further with regard to this preferred two layered embodiment,
which can have either the same or different cross-section,
Doroodian's specification states (column 3, lines 47-51):
As the two layers wear away through abrasion and/or
shear stress against the skin and hair, more and more
of the contrasting colored lower layer is disclosed
[reference to the illustrations of Figure 3].
For all of the foregoing reasons, we do not find that
Doroodian's specification discloses any "single point-in-time"
embodiment which gives only an on/off visual indication as to
whether the shaving blade is completely worn. Furthermore, even

Interference No. 104,482
Tseng v. Doroodian-Shoja
5 Neither party asserts that there is such an equivalence.
- 28 -
if it does, Doroodian through its own representation to the U.S.
Patent and Trademark Office during prosecution of the application
maturing into its involved patent has limited or narrowed its
claims to cover only "progressive" indication as discussed above.
Because Doroodian's specification does not disclose a
"single point-in-time" embodiment, the claimed wear indicating
means under 35 U.S.C. § 112, sixth paragraph, cannot be construed
as though a "single point-in-time" embodiment is a corresponding
embodiment in the specification. Furthermore, because "multiple
points-in-time" embodiments are not equivalent to a "single
point-in-time" embodiment5, it is our determination that
Doroodian's involved claims are limited to "multiple points-in-
time" embodiments and do not cover "single point-in-time"
embodiments.
We recognize that Doroodian's technical witness, Dr. Anthony
R. Booth, on cross-examination by Tseng, indicated that
Doroodian's claim 1 covers Doroodian's Figure 7 embodiment.
However, Tseng pointed to no testimony of Dr. Booth to the effect
that one with ordinary skill in the art would understand
Doroodian's Figure 7 embodiment as not providing a substantially
continuous indicator but only an on/off indicator. Moreover, if

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 29 -
it is Dr. Booth's view that claim 1 is sufficiently broad to
cover both on/off and substantially continuous embodiments, the
issue is a question of law and thus Dr. Booth's conclusion on the
ultimate legal issue carries no weight. In any event, Tseng has
not directed our attention to the underlying basis or rationale
for Dr. Booth's conclusion that Doroodian's claim 1 covers the
Figure 7 embodiment. For all of these reasons, Dr. Booth's
testimony does not change our view as to what is covered by
Doroodian's claims.
Tseng asserts that Doroodian's exclusive licensee and real
party in interest, Arthur D. Little Enterprises ("ADLE"), in or
about November 1996, provided Tseng's real party in interest
("Gillette Company") with a document entitled "Razor GaugeTM Wear
Indicator Technology for Razor Blades, Licensing Opportunity
presented to: The Gillette Company, October 1996." Tseng notes
page 6 of that document which describes how the technology works,
in part, as follows:
%Ï Strip of material (integral with or separate from
comfort strip) that changes physical properties
(preferrably appearance) as a function of wear/use.
%Ï Could be designed as an off/on device or a continuously
changing indicia to let users judge for themselves when
it is time to discard product (equivalent to the Oral-B
Toothbrush Indicator).
Tseng further points out that the document on page 10 illustrates

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 30 -
both the On/Off method and the Progressive method. On the basis
of the foregoing, Tseng argues that ADLE contended that the
Doroodian involved patent claims cover both the on/off and the
progressive visual indication. The argument is without merit,
because page 11 of the same document identifies more than
Doroodian's involved patent as the source of proprietary coverage
for the technology being marketed in the document. Moreover, on
page 11 of the document where Doroodian's involved patent is
mentioned, the language states: "Broad U.S. Patent claims
covering change of physical properties as the blade is used 	 US
Patent # 5,388,331." (Emphasis added). The bolded text suggests
a progressive rather than an on/off mechanism insofar as
Doroodian's involved patent is concerned. Also, it appears that
an in-house counsel for the Gillette Company (Tseng's real party
in interest), Mr. Stephan P. Williams, has acknowledged that the
licensing document can include technology not covered by
Doroodian's involved patent. Williams Tr. 158-59.
Tseng also asserts that in 1999 Doroodian had made
statements to the Australian Patent Office to the effect that
Doroodian's claimed invention provided both a single point-in-
time and a multiple points-in-time blade wear indicator, citing
to Tseng Exhibit 2090. We have reviewed Tseng's Exhibit 2090 in
detail and do not find the purported representation to the

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 31 -
Australian Patent Office. The exhibit appears to be a
communication from Doroodian's legal representative to the
Australian Patent Office. In a pertinent part thereof quoted by
Tseng, the communication states: "One of the advantages of the
invention in each of its forms is the ability to construct the
wear indicator so it will indicate wear after a predetermined
amount of or number of uses." This language does not necessarily
indicate that prior to reaching the predetermined number of uses
there would not be any visual indications of wear.
In any event, Tseng has not established that the disclosure
of the Australian patent application it refers to is the same as
the disclosure of Doroodian's involved patent or that the claims
in the Australian patent application are the same as Doroodian's
involved claims in this interference. Tseng has not satisfied us
that oranges are being compared with oranges and apples to
apples. Moreover, as we discussed above, in its remarks to the
examiner during prosecution of Doroodian's involved patent in the
U.S. Patent and Trademark Office, Doroodian in no uncertain terms
represented that its claimed invention is directed to providing a
visual indication of "progressive blade wear." We credit that
representation to the U.S. Patent and Trademark Office more than
we do any contrary statement to the Australian Patent Office.
Even assuming (1) that the Australian patent disclosure is

Interference No. 104,482
Tseng v. Doroodian-Shoja
6 Note, for instance, that the patent laws may not be the
same, especially with regard to means-plus-function clauses under
35 U.S.C. § 112, sixth paragraph.
- 32 -
the same as the disclosure of Doroodian's involved patent, (2)
that the Australian patent application claims were the same as
Doroodian's involved claims, and (3) further that Doroodian had
represented to the Australian Patent Office that its claims cover
both "single point-in-time" and "multiple points-in-time"
embodiments, that does not counter-balance or overcome the
reasons we discussed herein for concluding that Doroodian's
claims are directed to an invention providing substantially
continuous or progressive visual indications of blade wear.6
Finally, Tseng argues that by reading the "multiple points-
in-time" feature into Doroodian's claim 1, we would be including
into claim 1 a feature expressly added or recited in a dependent
claim and that would be an indication that claim 1 should not be
so construed. The argument is misplaced and thus rejected. The
dependent claims are each directed to a particular embodiment,
whereas claim 1 including the "multiple points-in-time" feature
is broad enough to cover all disclosed "multiple points-in-time"
embodiments and equivalents thereof. Tseng has not directed our
attention to any dependent claim which duplicatively recites what
Doroodian contends is required by its independent claim 1.

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 33 -
Now we turn to what Tseng's claims require with regard to a
visual indication. In pertinent part, Tseng's independent claim
113 recites: "wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to visually
expose said non-skin engaging layer" (Emphasis added). In
pertinent part, Tseng's independent claim 117 recites: "wherein
said skin engaging member is constructed such that said skin
engaging layer erodes during contact with said skin during
shaving to visually expose said non-skin engaging layer"
(Emphasis added). In pertinent part, Tseng's independent claim
118 recites: "wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to visually
expose said non-skin engaging layer" (Emphasis added). In
pertinent part, Tseng's independent claim 135 recites: "wherein
said skin engaging layer is adapted to erode during contact with
said skin during shaving to visually expose said non-skin
engaging layer over time" (Emphasis added).
None of the above-quoted portions of Tseng's claims can
reasonably be regarded as requiring a progressive visual
indication or a "multiple points-in-time" visual indication,
especially the language of claim 135 which includes the words
"over time." When something is said to be exposed "over time,"

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 34 -
it means the item is not exposed immediately but only after a
period of time. Tseng's specification has not coined a different
definition for the term. Even assuming, without deciding, that
the emphasized quoted portions of Tseng's claims 113, 117, 118
and 135 are broad enough to cover progressive visual indication
or "multiple points-in-time" visual indication, that still does
not mean these claims anticipate, in the sense of 35 U.S.C.
§ 102, Doroodian's involved claims insofar as the "multiple
points-in-time" feature of Doroodian's claims are concerned.
None of Tseng's claims depending from claims 113, 117, 118
and 135 add any recitation which makes up for the shortfall of
independent claims 113, 117, 118 and 135 for anticipating the
"multiple points-in-time" feature of Doroodian's claims.
Accordingly, we find that none of Tseng's involved claims 113,
117-123, 130-133 and 135-136 anticipates any one of Doroodian's
involved claims 1-6.
Doroodian represents that it would not have been obvious to
one with ordinary skill in the art to arrive at Doroodian's
claims including the "multiple points-in-time" feature, starting
from Tseng's involved claims. We agree.
We find that the level of ordinary skill in the art of
disposable razor blades is generally reflected by the technology
described in these items of prior art: U.S. Patent Nos.

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 35 -
5,113,585; 4,982,767; 4,562,644; 4,170,821; 3,879,844;
and 2,703,451. The testimony of Dr. Anthony R. Booth,
Doroodian's technical witness, that "I consider a person of
ordinary skill in the art to be a scientifically trained or
technically trained individual who has worked in the industry for
ten (10) years and has experience designing razor products,
developing razor products, testing razor products and
manufacturing razor products" is too general and vague to be
meaningful. Tseng's position that Doroodian's definition
overstates the ordinary skill in the art is also not helpful.
According to Doroodian, Tseng's involved claims can only be
construed as requiring an all or nothing, or "single point-in-
time" visual indication because that is the only notion disclosed
in Tseng's specification. We agree. An application claim can
properly be construed according to its broadest reasonable
interpretation but that interpretation must be consistent with
the specification. Tseng's specification does not describe any
"multiple points-in-time" mechanism that gives a progressive
visual indication. Tseng's specification does not reveal even
that a progressive indication is anything of value or desirable.
The only reference to any kind of indication being provided is a
lone sentence in the SUMMARY OF THE INVENTION section which
reads: "Yet another object of the present invention is to

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 36 -
provide a wear indicating skin engaging member," and the
following paragraph appearing on page 6 of the Tseng
specification as filed (Tseng Exhibit 2008):
In an embodiment of the present invention a wear
indicating effect is produced when the sheath material
and the core material are made of disparately colored
materials (e.g. white colored sheath and blue colored
core). Upon use, the sheath material over the skin
engaging surface is typically worn off through use.
With sufficient use, a second colored region
represented by the core is exposed, thus, providing the
user with [an] indication that the shaving unit and/or
skin engaging surface have reached their effective
life. In a preferred embodiment, the sheath material
consists of polyethylene oxide/polystyrene mixture
which is white in color and the core consists of nylon
and/or styrene which has been colored with a FD&C #2
dye. Other suitable dyes or pigments include FD&C Red
No. 40, Erythrosine (FD&C Red No. 3), Brilliant Blue
FCF (FD&C Blue No. 1), Indigotine (FD&C Blue No. 2),
Tartozine (FD&C Yellow No. 5), Sunset Yellow FCF (FD&C
Yellow No. 6) and Fast Green FCF (FD&C Green No. 3) and
Titanium Dioxide. (Emphasis added)
Thus, the purpose of the indication is to reveal that the shaving
unit and/or the skin engaging surface have reached their
effective life. The indication is not intended to come on when
the shaving unit is relatively new or just beginning to be used.
It is only after "sufficient use" that the second colored region
becomes exposed to give a visual indication.
Consequently, the recitations in Tseng's independent claims
113, 117, 118 and 135 to the effect that the skin-engaging layer
erodes to visually expose the non skin-engaging layer cannot be

Interference No. 104,482
Tseng v. Doroodian-Shoja
7 Tseng states (Opp. At 6): "Example 13 was inadvertently
identified as 'Example 12' in the application as filed (TE 2008
at 9). That typographical error was corrected during prosecution
(TE 2067 at 7)." Note that it is "Example 12" on page 9 of
Tseng's specification which should be identified as "Example 13."
- 37 -
so broadly interpreted as covering either the case of "multiple
points-in-time" progressive visual indication or single point-in-
time" visual indication. Rather, we conclude that such
recitation in these claims limit the coverage to only "single
point-in-time" visual indication at a particular time.
According to Tseng, Figures 3-6 in its specification
illustrates "multiple points-in-time" wear indicator strips that
would provide a progressive visual indication of the wear on the
blade. In support of that argument, (1) Tseng presents a drawing
produced in its opposition at page 5 that supposedly illustrates
how the wear indicator strip shown in Tseng's Figure 5 gives a
progressive visual indication, and (2) Tseng presents recent test
results on indicator strips made in 1993 by Philip Sweeney, an
employee of the Gillette Co., under the direction of Mingchih M.
Tseng. According to Tseng, the actual samples correspond to what
is described in the specification as Example 137 and tests
thereon "confirm" the illustrations or depictions on page 5 of
the opposition with regard to Tseng's wear indicating strip. We
will discuss these efforts, in turn. However, neither

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 38 -
demonstration is persuasive in establishing Tseng's argument.
Tseng's demonstration presented via a drawing on page 5 of
its opposition is without merit.
First, it can be seen from the illustration on page 5 of
Tseng's opposition that even according to Tseng's illustration,
in going from "Before Use" to "After Some Use" in the second
column of the four-column table, there has been no change in
visual indication. Thus, even though the blade has been
partially worn, there is no visual indication to that effect.
That alone seriously undermines Tseng's assertion that the
illustrated embodiment provides progressive indication of
relative blade wear.
Secondly, when the lower layer of a contrasting color has
been exposed, as is shown in the picture corresponding to "After
Further Use" and in the second column, Tseng's specification as
quoted above provides that the shaving unit and/or the skin
engaging surface have reached their intended effective life.
Tseng's specification makes no distinction between partial
exposure and complete exposure of the differently colored core.
Thus, either partial or complete exposure of the core gives a
visual indication that the shaving unit and/or the skin engaging
surface has reached its intended useful life.
Whether it is the shaving unit or the skin engaging surface

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 39 -
that has reached its intended effective life, the result is the
same. We cannot assume that a shaving unit will continue to be
used when its "skin engaging surface" has reached its intended
useful life. Tseng's specification does not state anything to
the effect that the shaving unit will continue to be used for
shaving after the shaving unit and/or the skin engaging surface
thereof have reached their intended useful life.
Tseng contends that because the conjunctive-disjunctive
"and/or" is used in the phrase at issue, it is not necessarily
true that when the core is exposed the shaving unit has reached
its intended useful life. The argument is wanting because Tseng
does not explain any meaningful difference, in the context of
Tseng's specification, between the shaving unit's reaching its
intended useful life and the skin engaging surface's reaching its
intended useful life. Tseng has pointed to nothing in its
specification which describes how a user would determine whether
it is one and not the other, or how the user's response or
subsequent action upon detecting the visual indication would vary
depending on whether it is one and not the other. In this light,
the end of intended useful life of the shaving unit and of the
skin engaging surface are equivalents and there is no apparent
reason to continue using the shaving unit once the core of
contrasting color has been exposed.

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 40 -
We recognize that Tseng's specification at page 5 discloses
that the core can be made of a blend of non-water soluble plastic
resin and water-soluble resin and that polyethylene oxide is an
example of one such water-soluble resin. Tseng points out that
polyethylene oxide, according to its specification at page 4, is
an example of a suitable shaving aid material included in the
sheath or skin engaging layer. But that is not sufficient basis
to find that according to Tseng's specification despite
exhaustion of the sheath or skin engaging layer the shaving unit
would continue to be used after exposure of the core.
There is no statement anywhere in Tseng's specification to
the effect that the shaving unit would continue to be used after
exposure of the core. Also, there are a number of indications in
Tseng's specification that the polyethylene oxide used to build
the core is not included as a shaving aid. Note that only the
polyethylene oxide in the skin engaging layer is ever referred to
as "shaving aid," and that of all the different functions Tseng's
specification identifies and describes for the core, none
contemplates the core itself as providing a skin engaging surface
for use in further shaving when the covering sheath has been
eroded away.
Consequently, the illustration corresponding to the "After
Additional Use" label on page 5 of the opposition is something

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 41 -
that will not be reached during normal and intended use of the
shaving unit, insofar as Tseng's invention is concerned.
Tseng's specification also makes no mention of the duration
of or any significance, value, or benefit, of the time period,
assuming that there is any such meaningful time period, between
initial partial exposure and full exposure of the core. Tseng's
specification does not describe or disclose that anything
meaningful occurs in such a period or that it has a duration
longer than a single shaving session. This is consistent with
our finding that either partial or full exposure of the core
gives a visual indication that the shaving unit or the skin
engaging surface has reached its intended useful life.
Alternatively, even if we regard the end of the intended
useful life of the shaving unit and of the skin engaging layer as
non-equivalents, and also assume that the shaving unit would
continue to be used despite exposure of the underlying core,
there still can be no progressive or "multiple points-in-time"
visual indication as is argued by Tseng with respect to its
specification. If the skin engaging layer has reached its
intended useful life, then it can no longer be relied upon or
expected to provide a visual indication after further use of the
shaving unit. Tseng's argument improperly relies on the skin
engaging layer to provide a progressive or ongoing visual

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 42 -
indication even after the skin engaging layer has reached its
intended useful life.
Furthermore, patent drawings are not usually made to scale
and are not production drawings or blue-prints for manufacturing.
Insofar as Tseng's Figures 3-6 are concerned, no one knows just
how curved the core 70 is in the vicinity of its junction with
the skin engaging layer 74. Indeed, even a plain observation of
Figure 3-6 reveals different curvatures from one to the next,
albeit all of them show only a very slight curvature. On the
basis of such ambiguous evidence, there is no credible basis for
Tseng to conclude that there is progressive indication beginning
from when the core is first exposed to when the core is
completely exposed. For instance, all of that exposure can occur
in a single shaving session through multiple strokes within that
session, in which case there really would be no progressive
indication from shaving session to shaving session.
We have reviewed the second declaration of Edwin L. Thomas
(Exhibit 2115), submitted by Tseng to support its opposition to
Doroodian's motion. It does not account for the above-noted
deficiencies of Tseng's argument. Mr. Thomas' depiction on page
6 of Exhibit 2115 (same as the drawing on page 5 of Tseng's
opposition) of what happens when Tseng's razor unit is continued
to be used after exposure of the core depends on continued usage

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 43 -
of the razor unit after exposure of the core. Yet, on cross-
examination, he acknowledges that according to the disclosure in
Tseng's specification, the "after additional use" category in the
depiction is something that is never reached. (Thomas Transcript
at 1014). Mr. Thomas further explains, with respect to exposure
of the differently colored core (Transcript at 1140):
A. You're reaching the time in which maybe during
that 	 after that shave is over or before the next one
starts you want to change blades.
The question is not whether details can be independently proposed
for various parts in Tseng's drawings such that one can justify
continued use of the shaving unit after exposure of the core, but
what Tseng's specification says or does not say in that regard.
Tseng's demonstration based on recent test results of
indicator strips made in 1993 and which allegedly correspond to
Example 13 in Tseng's specification are also not persuasive, in
several respects, with regard to Tseng's argument that its
specification discloses "multiple points-in-time" or progressive
visual indication of the relative wear on the shaving blade.
First, the actual samples are not commensurate in scope with
either Tseng's claims or the particulars described in the
specification for Example 13. Example 13 does not specify how
thick the skin-engaging layer should be over the core. Depending
on how thick it is, the different color of the core will become

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 44 -
exposed or start to become exposed at different times. Whether
there is a progressive or "multiple points-in-time" visual
indication depends on the thickness of the skin-engaging layer.
Also, the curvature of the core beneath the skin-engaging-layer
is not specified in Tseng's Example 13. Whatever is the
curvature used in the actual samples, it directly affects the
manner in which the color below becomes revealed and yet is
without underlying basis in Example 13 of the specification.
Therefore, even if the photographs of Tseng's Exhibits 2063,
2064A, and 2092-2099 show what Tseng states they show, the
showing is not commensurate in scope with what is described in
the specification as Example 13. Thus, the test results of
actual samples produced in 1993 do not support Tseng's argument
as to what its specification discloses.
Secondly, the photographs reflecting the test results do not
show changes through each successive shaving session. For
instance, in all of the photographs of Tseng's Exhibits 2063,
2064A, and 2092-2099, each one depicting usage of a different
shaving cartridge, there is no meaningful change in color
contrast until after at least two shaving sessions. For two
cartridges, (Tseng Exhibit 2064A and 2095), there is no
discernable color contrast between the skin-engaging layer and
the core or non-skin-engaging layer until after three shaving

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sessions. For three cartridges (Tseng Exhibits 2063, 2093 and
2097), there is no discernable color contrast until after four
shaving sessions. Collectively, the results do not reasonably
show that there is a progressive visual indication, even on
average, as the cartridges advance from one shaving session to
the next beginning from when each shaving cartridge is new, which
is required for satisfying the "multiple points-in-time" visual
indication feature of Doroodian's claims.
The photographs of Tseng's Exhibits 2063, 2064A, and 2092-
2099 do not support the testimony of Michael J. Kwiecien (Tseng
Exhibit 2110, ¶ 12) to the effect that more and more of the
underlying blue layer is exposed as each shaving cartridge is
used, when observation begins from when each cartridge is unused.
Finally, as is the case with our discussion of Tseng's
illustration on page 5 of its opposition, the testing of the
actual samples includes photographs taken even after the blue-
colored non-skin-engaging layer or core has been exposed. As has
already been explained, there is no basis in Tseng's
specification for continuing use of the shaving cartridge when
the differently colored core has been exposed, i.e., when the
shaving cartridge and/or the skin-engaging layer have reached
their intended useful life.
In any event, apart from the above-discussed problems, the

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photographs presented in Tseng's Exhibits 2064A and 2096-2099
have questionable value. As is pointed out by Doroodian, the
succession of photographs contained in each exhibit are not
illustrating the same portion of the shaving cartridge from shave
to shave. On cross-examination, Ms. Linda Galfetti, a technician
employed by The Gillette Co. who took the photographs in Tseng's
Exhibits 2064A and 2096-2099 (Galfetti declaration ¶¶ 3-6),
testified that within each exhibit the successive photographs are
images taken of "random" portions of the shaving cartridge and
thus the pictures do not show the same area of the shaving
cartridge from shave to shave. (Galfetti Transcript at 36).
Such evidence is intrinsically suspect and cannot firmly indicate
the before-and-after changes in appearance or color contrast in
the wear indicating strip. Note also that without counting the
photographs in Tseng's Exhibits 2064A and 2096-2099, and
directing our attention only to the photographs in Tseng's
Exhibits 2063 and 2092-2095, Exhibit 2094 apparently shows no
change until after two shaving sessions, Exhibits 2092 and 2095
apparently show no change until after three shaving sessions, and
Exhibits 2063 and 2093 apparently show no change until after four
shaving sessions.
We are not persuaded by Doroodian's argument pointing out
the length of time the actual samples have been placed in storage

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after their production in 1993 and noting that Tseng easily could
have made fresh samples. We are also not persuaded by
Doroodian's argument noting the lack of sample degradation
analysis. Doroodian has not presented credible evidence that
Tseng's samples made in 1993 reasonably would have already
reached a point of degradation that makes testing unreliable. We
are also not persuaded by Doroodian's argument that the testing
protocol was not adequately documented by Tseng. The cartridges
were photographed before and after use in each shaving session.
Doroodian has not explained what deficiency exists in the testing
protocol. Michael J. Kwiecien testified that he developed a
shave test protocol and the particulars of that protocol are
noted in Paragraph Nos. 9-11 of his declaration. We are not also
persuaded that records must be kept of each testing user's
preparation habits, shaving routine, or perception of shaving
quality. Each user has his own idiosyncracies that are not
expected to coincide with those of other users. Although the
possibility always exists that a party might have hand-picked or
specially selected participants which shaved only in a particular
way that would skew the test results in favor of a certain
conclusion, there is not a scintilla of evidence that this
occurred despite cross-examination by Tseng of pertinent
witnesses. Accordingly, we do not regard this as a realistic

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possibility such that the shaving habits of each participant must
be documented and/or corroborated to have value.
For all of the foregoing reasons, we reject Tseng's
assertion that its Figures 3-6 are embodiments having a "multiple
points-in-time" indicator strip that provides progressive visual
indication of blade wear. As we stated above, Tseng's
independent claims 113, 117, 118 and 135, and claims dependent
thereon are limited to a "single point-in-time" indicator strip.
Doroodian asserts that the evidence of record does not
support a conclusion that Tseng's claims, if limited to "single
point-in-time" indicator strips, would render obvious party
Doroodian's claims if they are construed so as to require
"multiple points-in-time" indicator strips. On this record, the
assertion is sufficient to make out at least a prima facie case
of nonobviousness. In that regard, party Tseng does not contend
that its claims, if limited to "single point-in-time" indicator
strips, would render obvious party Doroodian's claims if they are
construed so as to require "multiple points-in-time" indicator
strips. We also have no reason to make that conclusion here.
For all of the foregoing reasons, Doroodian's preliminary
motion 1 alleging no interference-in-fact is GRANTED.
B. Tseng's Claim 134 is unpatentable
Party Tseng's claim 134 reads as follows:

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In a disposable razor or razor cartridge comprising at
least one blade mounted in a head or frame, said blade
having a shaving edge, the improvement comprising
indicating means for providing a visual indication of
the relative amount of use of the razor or cartridge,
said indicating means being located on the head or
frame in proximity to the shaving edge of said blade so
as to contact the skin during use, and comprising a
strip of material having a first layer of a first color
and a second layer of a color contrasting with said
first color, wherein said layers are arranged so that
said strip of material changes in appearance as the
disposable razor or razor cartridge is used in shaving.
(Emphasis added).
In its preliminary motion alleging no interference-in-fact,
Doroodian would have us construe Tseng's claim 134 as being
similarly limited to the "single point-in-time" visual indication
feature that characterizes Tseng's other claims. In our view,
however, the recitations of claim 134 is so inconsistent with the
notion of a "single-point-in time" visual indication that the
claim cannot be reasonably construed that way. Note especially
the bolded text of claim 134 quoted above.
On our own initiative, and done only to provide support for
our finding of no interference-in-fact, we conclude that Tseng's
claim 134 is unpatentable under 35 U.S.C. § 112, second
paragraph, for indefiniteness, and alternatively, under 35 U.S.C.
§ 112, first paragraph, for lack of written description in the
specification.
Claim 134 initially recites an "indicating means for

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providing a visual indication of the relative amount of use of
the razor or cartridge." Per 35 U.S.C. § 112, sixth paragraph,
the indicating means covers only those corresponding embodiments
described in the specification and equivalents thereof. The only
visual indication described in Tseng's specification as filed is
the exposure of a different or contrasting color on the core
underneath the sheath or skin-engaging layer. Note page 6, lines
14-17 of the Tseng specification as filed, which states:
Upon use, the sheath material over the skin engaging
surface is typically worn off through use. With
sufficient use, a second colored region represented by
the core is exposed, thus, providing the user with [an]
indication that the shaving unit and/or skin engaging
surface have reached their effective life.
No other kind of visual indication is referred to or discussed
anywhere in Tseng's specification as filed. Yet, claim 134
further recites broadly that the indicating means comprises a
strip of material which changes in appearance as the disposable
razor or razor cartridge is used in shaving. This language
broadens out the visual indication to cover not just exposure of
a different color beneath and equivalents thereof but any
perceived change in appearance, e.g., size, shape, texture,
regularity, consistency, uniformity, opaqueness, transparency,
etc. Thus, the claim is internally inconsistent and that alone
renders the claim indefinite under 35 U.S.C. § 112, second

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paragraph, for failing to particularly point out and distinctly
claim that which the inventor regards as the invention.
Alternatively, even if we ignore the internal inconsistency
and assume that the claim is not limited to the disclosed manner
of visual indication by exposure of a different color of an
initially covered layer, the claim is nonetheless indefinite
because we find that no objectively determinable standard has
been set forth in Tseng's specification for deciding when the
appearance of the strip of material has changed in terms of
overall "appearance" as is broadly recited in the claim. Claim
134 itself also does not set forth an objective standard.
Change in "appearance" as that term is broadly and loosely
used is a matter of degree. No physical object has absolutely
the same identical appearance at two different times. For
instance, dust may have collected on an object in between the
times of observation, or condensation may have developed on its
surface. When would differences sufficiently amount to a "change
in appearance"? Based on Tseng's specification and for the
myriad of possible appearance factors mentioned above, that would
not be known to one with ordinary skill in the art.
Notwithstanding its problems under 35 U.S.C. § 112, second
paragraph, claim 134 is also unpatentable under 35 U.S.C. § 112,
first paragraph, for lack of written description in the

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specification as filed. Claim 134 is not an original claim
presented when Tseng's involved application was filed.
Therefore, its own text cannot be regarded as a part of the
original specification of Tseng. In no uncertain terms, claim
134 recites that the strip of material having the two layers of
contrasting colors changes in appearance as the disposable razor
or razor cartridge is used in shaving.
In our discussion of whether there is interference-in-fact,
we have already explained why Tseng's specification as filed does
not provide a written description for any "multiple points-in-
time" embodiment that gives a progressive visual indication from
one shaving session to the next. The very same analysis is
applicable to explain why Tseng's specification as filed does not
provide written description for the feature specifying that the
indicator strip changes in appearance of the indicator strip as
the disposable razor or razor cartridge is used in shaving.
Furthermore, the case of lack of written description in the
specification is much stronger here, in the context of Tseng's
claim 134 which goes beyond visual indications from one shaving
session to the next by specifying that the change in appearance
is "as the disposable razor or razor cartridge is used in
shaving." That means from one shaving stroke to the next, even
within the same shaving session, there would be a visual

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indication of some sort. Tseng's disclosure on page 6 of its
specification states that with sufficient use, the second colored
region of a disparate color is exposed does not provide a
description for the specific requirement set forth in Tseng's
claim 134. As has been discussed above in connection with
Doroodian's no interference-in-fact motion, Tseng's Figures 3-6
do not disclose any "multiple points-in-time" embodiment that
gives a progressive visual indication even from shave to shave.
They also do not give a progressive visual indication from stroke
to stroke. As for the testing results submitted by Tseng with
respect to its Example 13, the photographs of Tseng's Exhibits
2063, 2064A and 2092-2099 illustrate only images taken at the
beginning of each successive shaving session. They do not reveal
the state of the indicator strip from shaving stroke to shaving
stroke.
For the foregoing reasons, Tseng's claim 134 is unpatentable
under 35 U.S.C. § 112, first and/or second paragraphs.
Ordinarily, prior to a sua sponte holding of unpatentability
we would ask the parties to address the pertinent issues. Such
an invitation is unnecessary here, because the parties have
already fully briefed the issue of whether Tseng's specification
provides written description for a "multiple points-in-time"
visual indication, in the context of Doroodian's preliminary

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motion 1 alleging no interference-in-fact. To the extent that
party Tseng would like an opportunity to submit arguments
relating to our finding of indefiniteness under 35 U.S.C. § 112,
second paragraph, it may include such arguments in any request
for reconsideration to be filed within thirty (30) days of the
date of this decision.
There also does not appear to be any useful purpose for
party Tseng to propose a substitute claim to replace claim 134,
since we have concurrently found (1) that Tseng's specification
does not provide written description support for "multiple
points-in-time" visual indication, and (2) that Tseng's claims
directed to "single point-in-time" visual indication do not
interfere with Doroodian's involved claims. Therefore, we will
not provide a period for Tseng to propose a substitute claim.
C. Tseng's preliminary motion 1 to add
claims 137 and 138 to its application
Party Tseng had an opportunity to file a responsive motion
under 37 CFR § 1.633(i) when Doroodian filed a preliminary motion
under 37 CFR § 1.633(b) alleging no interference-in-fact. Such a
responsive motion can be to redefine the interference by adding
one or more claims which would interfere with Doroodian's
involved claims even if it is determined that the original
involved claims of Tseng do not. Here, Tseng filed no responsive

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motion under 37 CFR § 1.633(i) and we have determined that there
is no interference-in-fact between the originally involved claims
of the parties designated as corresponding to the count at the
inception of this interference. Consequently, we need not reach
any preliminary motion of Tseng. However, we are willing to give
the benefit of doubt to Tseng who might have thought that it need
not file a responsive motion to add claims because it already had
filed a preliminary motion to add claims 137 and 138 in the
initial round of preliminary motions.
Therefore, we will consider Tseng's preliminary motion 1 to
add claims 137 and 138, but only from the perspective of a
responsive motion under 37 CFR § 1.633(i), for the potential of
these claims to salvage a holding of no interference-in-fact.
Proposed independent claim 137 reads as follows:
A razor comprising a blade member having a shaving
edge, and an external skin engaging member adjacent the
shaving edge of said blade member, said skin engaging
member comprised of: an elongated sheath comprised of a
mixture of a water soluble shaving aid and a water
insoluble material, and a rigid core extending axially
throughout said sheath; wherein said core and said
sheath are fabricated from materials which exhibit
different core and sheath colors, wherein upon use,
said sheath will wear along a skin engaging surface to
expose said different colored core, thus providing an
indication that the skin engaging member has reached
its desired life or that the razor has reached its
desired life. (Emphasis added.)
Proposed dependent claim 138 reads as follows:

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The razor of claim 137 wherein said water soluble
shaving aid is selected from the group consisting of
polyethylene oxide, polyvinyl pyrrolidone,
polyacrylamide, hydroxypropyl cellulose, polyvinyl
imidazoline, polyhydroxyethylmethacrylate, silicone
copolymers, sucrose stearate, vitamin E, panthenol,
aloe, essential oils and combinations thereof and said
water insoluble material is selected from the group
consisting of nylon, ethylene vinyl acetate,
polyethylene, polypropylene, polystyrene, polyacetal
and combinations thereof.
Insofar as any visual indication is concerned, the newly
proposed claims, as compared to the originally involved Tseng
claims 113, 117-123, 130-133 and 135, further specify that visual
exposure of the different color of the core is an indication that
"the skin engaging member has reached its desired life or that
the razor has reached its desired life." The addition of this
recitation does not help to remedy the deficiencies of the
original claims for failing to anticipate or render obvious the
involved Doroodian claims which require progressive or "multiple
points-in-time" visual indication of relative blade wear from
shaving session to shaving session. An indication that either
the skin engaging member or the razor has reached its desired
life is still a "single point-in-time" visual indication not
meaningfully different from that specified in Tseng's claims 113,
117-123, 130-133 and 135. We also have already determined that
Tseng's specification does not disclose any embodiment having a
"multiple points-in-time" visual indication. In that light,

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Tseng's motion does not make out a prima facie basis for relief.
Because proposed new claims 137 and 138 do not cure the
deficiencies of the original involved claims insofar as the
existence of interfering subject matter is concerned, Tseng's
preliminary motion 1 to add claims 137 and 138 is dismissed.
D. Tseng's other pending preliminary motions
We have determined that there is no interference-in-fact,
i.e., that the claims of the parties are patentable over the
claims of the opponent even if the opponent is deemed to have
been the prior inventor(s). Tseng has filed numerous preliminary
motions seeking to have the Board hold that Doroodian's claims
are unpatentable. The issue before the Board is whether Tseng's
preliminary motions for judgment against Doroodian's claims
should be reached on their merits when the Director, through the
Board, has determined that no interference exists.
While we have held Tseng's claim 134 to be unpatentable, the
determination is not made pursuant to any preliminary motion for
judgment filed by Doroodian, but necessitated by our analysis of
whether the claims of the parties interfere. An unpatentable
claim cannot serve as the basis for an interference.
On page 24 of Tseng's opposition, it is stated:
Since Perkins v. Kwon, 886 F.2d 325, 328, 12
USPQ2d 1308, 1310 (Fed. Cir. 1989), the Federal Circuit
repeatedly has held that the Board should decide issues

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of patentability and priority that have been fully
developed by the parties, even if the Board determines
that there is no interference-in-fact. (Citations
omitted) (Emphasis added).
We have reviewed every case authority cited by Tseng's
counsel. None of them makes the statement or representation that
even if the Board finds that there is no interference-in-fact, it
should nonetheless decide all issues of patentability and
priority which have been fully developed by the parties. Also,
none of them involves the fact situation that the Board has
determined that the claims of the parties do not interfere.
The issue would appear to be one of first impression.
Accordingly, the parties are required to brief the issue of
whether the Board should decide on the merits Tseng's preliminary
motions 2-5 attacking the patentability of Doroodian's claims.
Among other points, the parties must address the following:
1. Are there alternative remedies for Tseng to urge the
unpatentability of Doroodian's claims (e.g., reexamination,
defense to a civil action alleging infringement, protest under
PTO rules) and, if so, are those remedies adequate or inadequate
and why?
2. Would consideration of the patentability of Doroodian's
claims in this interference amount to an impermissible post-grant
cancellation proceeding?

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3. How will the parties be prejudiced if the Board does
not decide the patentability issues raised by Tseng?
4. Given that there is no interference-in-fact, would a
decision on the patentability of Doroodian's claims constitute an
"advisory" opinion and, if so, what justification is there for
expending fee revenue to render an advisory opinion?
5. Would deciding Tseng's preliminary motions for judgment
be consistent or inconsistent with the decision of the Court of
Customs and Patent Appeals in Nitz v. Ehrenriech, 537 F.2d 539,
190 USPQ 413 (CCPA 1976), vacating an award of priority where it
held there was no interference-in-fact.
The principal brief of each party must be filed within
fourteen (14) days of the date of this communication. Each party
may file a responsive brief within seven (7) days of the opposing
party's principal brief.
E. The Parties' Motions to Suppress Evidence
Doroodian's Motions to Suppress
Doroodian's Motion 1 to suppress seeks to suppress "new"
evidence relied upon by Tseng in Tseng's reply briefs and the
testimony of Drs. Kwiecien and Thomas based on such "new"
evidence, and to deny consideration of Tseng's replies 1-5 for
failure to follow procedures governing the filing of pleadings.
We have, however, not reached the merits of Tseng's preliminary

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motions 2-5. As for Tseng's preliminary motion 1, it does not
make out a prima facie basis for relief and we have had no
occasion to consider Doroodian's opposition or Tseng's reply.
Accordingly, Doroodian's motion 1 to suppress is dismissed.
Doroodian's Motion 2 to suppress seeks to suppress the
testimony of Drs. Kwiecien (TE 2110, ¶ 12) and Thomas (Tseng
Exhibit 2115, ¶¶ 85-86) that Tseng relied on in its Oppositions 1
and 2 and Reply 1 relating to the condition and appearance of
S2293-1 strips during shaving tests. Doroodian's Motion 2 to
suppress also seeks to suppress (a) Tseng Exhibits 2063 and 2092-
2095 (photographs of razor cartridges containing S2293-1 strips);
(b) Tseng Exhibits 2064A and 2096-2099 (photographs of portions
of razor cartridges containing S2293-1 strips); and (c) Tseng
Exhibits 2100-2104 (actual razors with cartridges containing
S2293-1 strips after the end of the shaving tests).
To the extent that items sought to be suppressed are not
relied on in Tseng's opposition to Doroodian's preliminary motion
1, motion 2 to suppress is dismissed, because we have not reached
the merits of Doroodian's preliminary motion 2 or Tseng's
preliminary motions 2-5 and because Tseng's preliminary motion 1
does not make out a prima facie basis for relief. Insofar as the
items are relied upon in Tseng's opposition to Doroodian's
preliminary motion 1, the motion to suppress is denied.

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Drs. Kwiecien and Thomas testified as technical experts.
Their opinions are based on the photographs taken of various
razor cartridges or portions thereof. It is not necessary that
either witness must have personally observed the cartridges while
they were being tested, in order for them to form an opinion
based on the photographs of the cartridges and portions of
cartridges during the testing. Even if the photographs and the
used cartridges are regarded as hearsay, it does not mean that
the experts cannot have an opinion as to what they show. See
Fed. R. Evid. 702. In any event, we do not regard the
photographs as hearsay, because simply by themselves they do not
make an assertion. They are not out-of-court statements offered
to prove the truth of the matter asserted. Rather, they
constitute experimental data which may be relied upon by expert
witnesses in the formulation of their respective opinions. The
photographs and used cartridges have been authenticated by the
testimony of Linda Galfetti (Tseng Exhibit 2113). Ms. Galfetti
testified about her receipt of the razor cartridges with
indicator strips, the shaving test procedures, the taking of the
photographs, and the transfer of the used cartridges and the
photographs to Dr. Kwiecien.
Doroodian's alleges that because Tseng has failed to comply
with ¶ 43 of the Notice Declaring Interference which is entitled

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"Reliance on scientific tests and data," Tseng's exhibits
including Exhibits 2063, 2064A, and 2092-2104 relating to shave
test data should be suppressed. Even without suppressing such
exhibits, however, we have granted Doroodian's preliminary motion
1 alleging no interference-in-fact. Accordingly, with regard to
alleged non-compliance with ¶ 43 of the Notice Declaring
Interference, the motion to suppress is dismissed as moot.
Tseng's Motion to Suppress
Tseng moves to suppress (1) Affidavits I and II and the
declaration of Anthony R. Booth; (2) Doroodian Exhibit 1023, and
(3) the cross-examination testimony of Tseng's witnesses Michael
J. Kwiecien, Stephan P. Williams, Colin J. Clipstone, and Edwin
L. Thomas.
Because Doroodian's preliminary motion 1 and its reply did
not rely on Affidavit II of Anthony R. Booth (Doroodian Exhibit
1016), the motion is dismissed insofar as it seeks to suppress
that affidavit.
Tseng's opposition did not rely on the declaration of Colin
J. Clipstone (Tseng Exhibit 2025). Doroodian's preliminary
motion 1 and its reply did not rely on any portion of the cross-
examination testimony of Colin J. Clipstone. Accordingly, the
motion is dismissed insofar as it seeks to suppress the cross-
examination testimony of Colin J. Clipstone.

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Tseng argues that Booth's declaration is improperly
duplicative of Booth's Affidavit II. The argument is rejected.
The declaration and the affidavit had different contexts. As is
pointed out by Doroodian, Affidavit II has to do with supporting
Doroodian's prima facie case in its preliminary motion 2. The
separate presentation in Booth's declaration is for rebutting
Tseng's positions. While no doubt there is some overlap between
the subject covered, the separation has a rational basis and
appears to help in providing a better organization. At the very
least it eliminates incorporation by reference or mere reference
to another document which was submitted for a different purpose.
Accordingly, the motion is denied insofar as it seeks to suppress
the declaration of Anthony R. Booth on the basis of
duplicativeness or redundancy.
Tseng's motion seeks to suppress the entire cross-
examination transcript of Stephan P. Williams, Colin J.
Clipstone, Edwin L. Thomas, and Michael J. Kwiecien on the ground
that their deposition was not taken before a notary who was
authorized to take such deposition in Massachusetts. The notary,
Mr. Donald R. DePew, is a notary of New York, not Massachusetts
where the deposition took place. In pertinent part, 37 CFR §
1.674(a) states: "(a) A deposition shall be taken before an
officer authorized to administer oaths by the laws of the United

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States or of the place where the examination is held."
Because the cross-examination testimony of Colin J.
Clipstone was not relied upon by either party in connection with
Doroodian's preliminary motion 1 for no interference-in-fact,
insofar as the motion to suppress is directed to the cross-
examination testimony of Colin J. Clipstone is concerned, the
motion is dismissed.
With regard to the cross-examination testimony of Messrs.
Kwiecien, Williams, and Thomas, the motion to suppress is denied.
The first deposition of these witnesses taken by Mr. DePew, a New
York Notary, in the state of Massachusetts occurred on August 2,
2000 with the examination of Dr. Edwin L. Thomas. Dr. Michael J.
Kwiecien was deposed on August 2, 2000, and Dr. Edwin L. Thomas
was deposed on August 10, 11, and 23, 2000. Tseng's objection on
the ground of 37 CFR § 1.674(a) was not made until September 22,
2000. Tseng was aware of the qualification of Mr. DePew at least
by August 16, 2000, when it retained Mr. DePew to take the cross-
examination testimony of Doroodian's witness Dr. Anthony R. Booth
in New York. Tseng's objection was served more than one month
after Tseng had retained the services of Mr. DePew as a notary of
the state of New York. We find, under these circumstances, that
Tseng had either waived the issue on the respective dates of the
depositions of Messrs. Kwiecien, Williams, and Thomas by not

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making an objection at the time the testimony was taken, or made
an untimely objection on September 22, 2000. The procedure for
making an objection when an exhibit is served is not applicable
to live depositions or cross-examinations where objections of
this sort relating to testimony being produced live should be
made at the time the testimony is taken. Tseng has offered no
excuse for not inquiring into the qualification of the notary
public at the commencement of each deposition.
Tseng's motion seeks to suppress the affidavit and
declaration testimony of Dr. Anthony R. Booth on the alleged
ground that Dr. Booth's testimony contains mischaracterizations
and misstatements of various items of evidence about which he has
made a statement. We regard this ground of the motion to
suppress as frivolous and a wasting of the time and resources of
the opposing party and the Board.
Mischaracterizations and misstatements, if they exist,
simply go to the weight of the testimony. If in the view of
Tseng the testimony of Dr. Booth contains mischaracterizations
and/or misstatements, the proper action to take is to point out
the alleged mischaracterizations and/or misstatements during
cross-examination of Dr. Booth and either in an opposition to
Doroodian's motion relying on such testimony, in a reply to
Doroodian's opposition relying on such testimony, or in an

Interference No. 104,482
Tseng v. Doroodian-Shoja
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observation with respect to cross-examination subsequent to
Doroodian's reply relying on such testimony. In a proper
instance where a genuine need exists, Tseng may even seek
permission to file a surreply to respond to a Doroodian reply
relying on such testimony. Tseng's disagreement with the
statements or opinions of Dr. Booth constitutes no basis to
suppress the testimony of Dr. Booth. To the extent that the
motion to suppress is based on Tseng's assertion that the
testimony of Dr. Booth contains mischaracterizations or
misstatements, the motion is denied.
Tseng's motion also seeks to suppress portions of the cross-
examination testimony of Michael J. Kwiecien, and Edwin L.
Thomas, on the basis that Doroodian's citation to their testimony
does not bring out the full story and thus mischaracterizes their
testimony. This ground of suppression based on alleged
incomplete citation is just as frivolous as the attempt to
suppress Dr. Booth's testimony on the ground that it contains
what Tseng regards as mischaracterizations or misstatements. If,
in the opinion of Tseng, Doroodian's citation to transcripts of
testimony does not bring out the full story, Tseng was free to
identify the other parts which in its opinion should also be
considered. Accordingly, insofar as the motion to suppress is
based on alleged incomplete citation to the transcript of Drs.

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Kwiecien and Thomas, the motion is denied.
The motion to suppress further seeks to suppress the
affidavits and declaration of Dr. Anthony R. Booth, on the ground
that Dr. Booth quoted various passages of Doroodian's patent and
then simply stated that the quoted passages constitute an
accurate teaching without any explanation. The failure to
explain only affects the persuasiveness or believability of the
statement and does not constitute an adequate ground for
suppressing Dr. Booth's testimony in that regard. Accordingly,
insofar as the motion to suppress is based on this ground for
suppression, the motion is denied.
Tseng's motion seeks to suppress Paragraph Nos. 9 and 11-12
of Booth's Affidavit I and Paragraph Nos. 9 and 11-12 of Booth's
declaration on the ground that Doroodian's involved patent
constitutes hearsay and those paragraphs of the testimony relies
on such hearsay as proof for such testimony. Tseng's argument is
misplaced. We have reviewed Paragraph Nos. 9 and 11-12 of
Booth's Affidavit I and Paragraph Nos. 30, 39 and 43 of Booth's
declaration but do not find them as presenting opinions on
inventions, technology in general, or state of the art, whose
support lies in the presumed truth of any matter asserted in
Doroodian's involved patent. Rather, with regard to the
specification of Doroodian's involved patent, Dr. Booth's

Interference No. 104,482
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testimony is about what Tseng's disclosure says, describes, and
teaches. The focal point is the disclosure of Doroodian's
involved patent, which Dr. Booth discusses, not any separate
opinion of Dr. Booth which derives support from the content of
Doroodian's patent specification. Accordingly, insofar as the
motion to suppress is based on alleged reliance of Booth's
testimony on hearsay, the motion is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1002
which is simply a clean copy of Doroodian's involved patent
claims. Tseng has failed to demonstrate how Doroodian has relied
on that exhibit to prove the truth of any matter asserted in the
exhibit. In our view, Doroodian has simply relied on that
exhibit as an indication of what the claims say. The motion to
suppress Exhibit 1002 on the ground of hearsay is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1004
which a copy of Doroodian's specification as filed. Tseng
asserts that Doroodian has relied on the exhibit as prove of the
matter asserted in the exhibit, citing to pages 3-4 and Paragraph
Nos. 5-9 of Doroodian's preliminary motion 1. However, Tseng has
failed to persuade us that the assertion has merit. Tseng has
not explained why the truth of anything asserted in Doroodian's
specification is even an issue, as compared to just what the
specification says, describes, and teaches. Paragraph Nos. 5-9

Interference No. 104,482
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of Doroodian's preliminary motion 1 is under the descriptive
heading "The Involved Doroodian '331 Patent Specification and
Claims," and appear to only set forth a picture of the world as
seen through the eyes of Doroodian's specification and claims.
Insofar as Tseng's motion seeks to suppress Exhibit 1004 as
hearsay, the motion is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1018
which is Doroodian's first drawing and written description of the
invention of the count. Because the exhibit has not been relied
on by either party in connection with any preliminary motion, the
motion to suppress this exhibit is dismissed.
Tseng's motion on page 10 makes the plain assertion that
Doroodian's Exhibit 1024 constitutes inadmissible hearsay.
However, no explanation has been provided to demonstrate the
assertion. Tseng does not even inform the Board where that
exhibit has been relied upon by Doroodian to prove anything.
Insofar as the motion to suppress is directed to this exhibit,
the motion is denied.
Tseng's motion to suppress seeks to suppress the testimony
of Dr. Anthony R. Booth on the ground that he is not qualified
under Fed. R. Evid. 702 as an expert to give an opinion on the
subject matter of the invention at issue in this interference.

Interference No. 104,482
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We are not persuaded and thus the motion to suppress in that
regard is denied.
Not all persons qualified as an expert to give a technical
opinion necessarily have the same background in either education
or specific experience. It is also not necessary that a
qualified expert must have worked on the same goals of research
that produced an item with respect to which he or she would
provide testimony. Fed. R. Evid. 702 is not that narrow, or else
only colleagues working on the same project, having identical
responsibilities, education, and employment history can qualify
as an expert with respect to an issue relating to the project.
Dr. Booth received a Bachelor's degree in Metallurgy in 1963
and a Doctorate degree in Natural Science in 1967. His "years in
the shaving industry" spans from 1970 to 1999 and involved
various aspects of the industry including technical design,
marketing, business management, licensing and evaluation of new
technology. See Paragraph No. 3 of Booth's Affidavit I. Dr.
Booth is a named inventor on at least three U.S. Patents in the
technical field of razor cartridges: U.S. Patent No. 5,692,302
filed on May 22, 1995 and entitled "Razor Cartridges Comprising
Wound Healing Compositions And Methods For Preparing And Using
Same"; U.S. Patent No. 4,247,982 filed April 2, 1979 and entitled
"Skin-flow Control Razor"; and U.S. Patent No. 4,170,821 filed

Interference No. 104,482
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December 2, 1977 and entitled "Razor Cartridges."
We are satisfied that Dr. Booth's background passes the
threshold necessary for qualifying as an expert witness under
Fed. R. Evid. 702, for the subject matter of the invention
involved in this interference, generally identifiable as razor
cartridges comprising a wear indicating strip which gives a
visual indication of the relative wear of the shaving blade. The
technology is not rocket science or extremely complicated. Dr.
Booth may not be among the most qualified of all experts to
testify about the invention, but he nonetheless qualifies.
Tseng's argument about the lack of publications authored by Dr.
Booth and his lack of awareness of recent razor cartridges on the
market may diminish the persuasiveness of Dr. Booth's testimony
but do not disqualify him as an expert witness under Fed. R.
Evid. 702, in light of Dr. Booth's other qualifications. Note
especially Dr. Booth's statement that "Up until the early 1990's,
I kept abreast of Schick's razor products and patents directed to
razor products, as well as products and patents of competitors,
as part of my ongoing assignment to assist Warner Lambert in
various activities regarding the litigation concerning U.S.
Patent No. 4,170,821 entitled 'Razor cartridges.'"
Similarly, lack of citation to scholarly work is not a basis
to suppress Dr. Booth's testimony. Dr. Booth may testify based

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 72 -
on his own background and experience. We also reject Tseng's
apparent position that any time the word "could" is used in Dr.
Booth's testimony that testimony is by definition speculative.
Whether an opinion is speculative depends on the basis for
forming that opinion, and is not determined by whether the
opinion is that something "could" happen.
Tseng's motion to suppress seeks to suppress those portions
of Dr. Anthony R. Booth's Affidavit I and declaration which
simply makes legal conclusions. However, the vast majority of
the portions of Dr. Booth's testimony objected to by Tseng are
not legal conclusions. Tseng appears to believe, erroneously,
that any factual testimony whose purpose is to support an
ultimate conclusion of law constitutes an improper legal
conclusion. For instance, on page 16 of Tseng's motion to
suppress, it is stated:
Booth's statements are not confined to technical
factual issues over which Booth claims expertise.
Rather, Booth's technical factual assertions are made
to support ultimate conclusions of law. (Emphasis
added.)
While the ultimate question of claim scope is indisputably a
conclusion of law, claim construction as a legal conclusion is
based on numerous underlying factual inquiries, e.g., what do the
claims say, what do the words mean to one with ordinary skill in
the art, and what does the specification reveal, etc. Indeed,

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 73 -
almost the entire exercise of claim construction is based on
underlying factual inquiries until the very last step to make the
ultimate conclusion of claim scope. An analogy can be drawn to
the issue of obviousness. While obviousness is a question of
law, it is based on four underlying factual inquiries (1) scope
and content of the prior art; (2) differences between the claimed
invention and the prior art; (3) level of ordinary skill in the
art; and (4) secondary considerations of objective evidence of
nonobviousness. The underlying factual inquiries are no less
factual just because they are relied upon to make a legal
determination on an ultimate issue of law.
Tseng mistakenly views Dr. Booth's testimony on what the
Tseng claims and the Doroodian claims say, describe, disclose, or
teach as testimony on an ultimate legal conclusion. What the
claims say, describe, disclose, or teach is not the end of the
game insofar as the ultimate question of claim construction is
concerned. For instance, because of possible application of the
principles of prosecution history estoppel, claim
differentiation, or an unduly narrow or inconsistent
specification, a claim's scope may not be the same as what the
words of the claim say or teach to one with ordinary skill in the
art. While a technical expert should not testify on the ultimate
legal question of claim scope, his or her testimony with regard

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 74 -
to how the words of a claim or specification would be understood
or what they would describe, disclose, or teach, is appropriate.
To the extent that Dr. Booth gave mere conclusions on an
ultimate legal question, Tseng's motion has not sufficiently
identified them apart from proper testimony on underlying factual
matters. In essence, Tseng's motion has lumped them all together
as one. We decline to undertake the exercise on Tseng's behalf
to separate out the true ultimate legal conclusions which may
exist from the abundance of factual testimony by Dr. Booth. It
suffices to say here only that to the extent that there is any
testimony by Dr. Booth directly on the ultimate legal conclusion
of claim scope or obviousness, we have given no weight to such
testimony. Dr. Booth's testimony has been considered only
insofar as it concerns the underlying factual issues on which
claim construction or a determination of obviousness is based.
Tseng's motion states that Dr. Booth impermissibly opines on the
enablement and definiteness of Doroodian's claims. We have,
however, not addressed the merits of Tseng's preliminary motions
for judgment against Doroodian's claims.
For the foregoing reasons, insofar as the motion to suppress
seeks to suppress the testimony of Dr. Anthony R. Booth on the
ground that they improperly contain conclusions on questions of
law, the motion is denied. To the extent that there is any such

Interference No. 104,482
Tseng v. Doroodian-Shoja
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testimony from Dr. Anthony R. Booth, however, which gives an
opinion on what is purely a legal conclusion or an ultimate
question of law, we have given it no weight. With or without the
testimony of Dr. Anthony R. Booth, we would have made the same
legal conclusions. Note also Fed. R. Evid. 704(a) which states:
Except as provided in subdivision(b) [concerning the
mental state of a defendant in a criminal case],
testimony in the form of an opinion or inference
otherwise admissible is not objectionable because it
embraces an ultimate issue to be decided by the trier
of fact.
Conclusion
Doroodian's preliminary motion 1 alleging no interference-
in-fact is granted.
Tseng's preliminary motion 1 to add claims is denied.
Tseng's claim 134 is unpatentable under 35 U.S.C. § 112,
first and/or second paragraphs.
The principal brief requested in Section D of this opinion
shall be filed no later than fourteen (14) days of the date of
this communication, and the responsive brief within seven (7)
days of the filing of the opposing party's principal brief.
Notwithstanding the request in Section D for further
briefing, any request for reconsideration of the decision on
Doroodian's preliminary motion 1, Tseng's preliminary motion 1,
and the unpatentability holding of Tseng's claim 134 must be

Interference No. 104,482
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filed within the applicable time period specified in 37 CFR
§ 1.640(c), i.e., 14 days.
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Counsel for the Junior Party: Richard A. Inz, Fish & Neave
Counsel for the Senior party: Israel Blum, Morgan & Finnegan,
L.L.P.

8 Filed on June 20, 1995. Accorded the benefit of
application 08/269,495, filed July 1, 1994. The real party in
interest is The Gillette Company.
9 Based on application 08/188,244, filed January 28, 1994.
The real party in interest is Arthur D. Little Enterprises, Inc.
THE OPINION ENTERED TODAY IS NOT
BINDING PRECEDENT OF THE BOARD
Filed by: Merits Panel Paper No. 91
Interference Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
MINGCHIH M. TSENG
Junior Party
(Application 08/461,318)8,
v.
SIAMAK DOROODIAN-SHOJA
Senior Party
(Patent No. 5,388,331).9
_______________
Patent Interference No. 104,482
_______________
Before SCHAFER, LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
MEMORANDUM OPINION AND JUDGMENT
Introduction
On October 16, 2001, we issued a decision (Paper No. 85)

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 2 -
granting senior party Doroodian's preliminary motion 1 asserting
no interference-in-fact and denying junior party Tseng's
preliminary motion 1 to add more claims to its involved
application. On the subject of interference-in-fact, we found
that Doroodian had shown that its involved claims are patentably
distinct from the involved claims of Tseng. Thus, parties
Doroodian and Tseng do not claim the same patentable invention.
Neither party has requested reconsideration of our
decision of October 16, 2001.
In our decision, we also ordered parties Doroodian and Tseng
to brief the issue of whether, in light of our holding of no
interference-in-fact, we should reach Tseng's preliminary motions
2-5 for judgment against Doroodian's involved patent claims. The
parties have each filed a principal brief and a reply brief.
Findings of Fact
Numbered findings 1-22 are contained in our decision of
October 16, 2001. In this opinion, we begin with numbered
finding 23.
23. Tseng's preliminary motion 2 is for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of an enabling disclosure.
24. Tseng's preliminary motion 3 is for judgment against
Doroodian's patent claims 1-6 for indefiniteness under 35 U.S.C.

Interference No. 104,482
Tseng v. Doroodian-Shoja
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§ 112, second paragraph.
25. Tseng's preliminary motion 4 is for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification.
26. Tseng's preliminary motion 5 for judgment against
claims 1-6 of Doroodian's patent claims 1-6 as being unpatentable
over prior art.
27. The prior art asserted by Tseng against Doroodian for
anticipation under 35 U.S.C. § 102 are: (1) U.S. Patent No.
4,170,821 to Booth (against Doroodian's claim 1); (2) U.S. Patent
No. 4,562,644 to Hitchens (against Doroodian's claims 1-4 and 6);
(3) U.S. Patent No. 5,113,585 to Rogers et al. (against
Doroodian's claims 1 and 2); and (4) Sensor® For Women cartridge
(a commercial product, against Doroodian's claims 1 and 2).
28. The prior art asserted by Tseng against Doroodian for
obviousness under 35 U.S.C. § 103 are: (1) U.S. Patent No.
3,879,844 to Griffith in view of U.S. Patent No. 2,703,451 to
Hensel (against Doroodian's claims 1-6); (2) U.S. Patent No.
4,170,821 to Booth in view of U.S. Patent No. 2,703,451 to Hensel
(against Doroodian's claims 1-6); (3) U.S. Patent No. 4,562,644
to Hitchens in view of U.S. Patent No. 2,703,451 to Hensel
(against Doroodian's claims 1-6); (4) U.S. Patent No. 5,113,585
to Rogers et al. in view of U.S. patent No. 2,703,451 to Hensel

Interference No. 104,482
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(against Doroodian's claims 1-6); and (5) Sensor® For Women in
view of U.S. Patent No. 2,703,451 to Hensel (against Doroodian's
claims 1-6).
29. Tseng's preliminary motion 5 is entitled: "TSENG
CONTINGENT PRELIMINARY MOTION 5" and states the following:
This motion only need be considered if Doroodian's
anticipated motions based on no interference-in-fact
and 35 U.S.C. § 135(b), as well as Tseng Preliminary
Motions 2, 3 and 4 (based on invalidity under 35 U.S.C.
§ 112, first and second paragraphs), are all denied.
In that event, Tseng requests consideration of this
motion.
30. In its principal brief (Paper No. 86), party Tseng
withdrew its still pending preliminary motions 2-4.
31. The only preliminary motion of party Tseng which still
remains pending is Tseng's contingent preliminary motion 5.
Discussion
Party Tseng's preliminary motion 5 is contingent on a number
of circumstances including the denial of Doroodian's preliminary
motion 1 asserting no interference-in-fact. In Paper No. 85,
however, we granted Doroodian's preliminary motion 1 asserting no
interference-in-fact. Therefore, the condition triggering
consideration of Tseng's preliminary motion 5 did not occur.
Accordingly, Tseng's preliminary motion 5 is hereby dismissed.
The parties should note that if our holding of no

Interference No. 104,482
Tseng v. Doroodian-Shoja
10 We recognize that Doroodian had filed a preliminary
motion 2 for judgment against Tseng's claims based on late
claiming under 35 U.S.C. § 135(b). The basis for relief under
35 U.S.C. § 135(b) is premised upon the same subject matter being
claimed by both parties Doroodian and Tseng. Our decision
granting Doroodian's preliminary motion 1 asserting no
interference-in-fact implicitly disposed of the preliminary
motion under 35 U.S.C. § 135(b). For the sake of clarity,
Doroodian's preliminary motion 2 is herein dismissed.
- 5 -
interference-in-fact is reversed upon judicial review, then the
contingencies triggering consideration of Tseng's preliminary
motion 5 will have to be reassessed upon return of the case to
the board subsequent to judicial review.
Party Tseng has withdrawn its preliminary motions 2-4
(Finding 30). Consequently, those preliminary motions are no
longer before us for consideration.
It is no longer necessary to decide whether, given our
conclusion of no interference-in-fact, Tseng's preliminary
motions 2-5 should be decided. Because any final hearing on
issues decided by a 3-judge panel would be in the nature of a
request for reconsideration, Charlton v. Rosenstein, No. 104,148,
2000 Pat. App. Lexis 4 (Bd. Pat. App. & Int. (Trial Section)
2000), and because neither party has requested reconsideration of
our decision of October 16, 2001, we designate the panel decision
of October 16, 2001 as final for purposes of judicial review.10
Judgment

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It is
ORDERED that judgment as to the subject matter of the count
is herein entered in favor of both junior party MINGCHIH M. TSENG
and senior party SIAMAK DOROODIAN-SHOJA;
FURTHER ORDERED that on this record, junior party MINGCHIH
M. TSENG is entitled to a patent containing its application
claims 113, 117-123, 130-133, 135 and 136, but not application
claim 134, which correspond to the count;
FURTHER ORDERED that on this record, senior party SIAMAK
DOROODIAN-SHOJA is entitled to a patent containing its claims 1-6
which correspond to the count;
FURTHER ORDERED that if there is a settlement agreement,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661;
and
FURTHER ORDERED that a copy of this judgment will be entered
as a paper in each party's involved application or patent.
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )

Interference No. 104,482
Tseng v. Doroodian-Shoja
- 7 -
Counsel for the Junior Party: Richard A. Inz, Esq., Fish & Neave.
Counsel for the senior party: Israel Blum, Esq., Morgan &
Finnegan, L.L.P.