Ex parte BENARON

Board of Patent Appeals and Interferences

Sep 22, 1998

08336323 (B.P.A.I. Sep. 22, 1998)

Application for patent filed November 8, 1994. According to1
appellant, this application is a continuation of Application 08/017,614,
filed February 12, 1993 (abandoned).
1
Paper No. 30
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TERI BENARON
______________
Appeal No. 97-3982
Application 08/336,3231
_______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and PATE, Administrative Patent
Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 15. These are the only claims in the application.
Appeal No. 97-3982
Application 08/336,323
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The claimed invention is directed to a massaging unit
which contains a receptacle for a self-contained temperature
storage enclosure that can provide heating or cooling as well
as massage to a portion of the user’s body.
Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A hot and cold massaging unit comprising:
a flexible housing which has a generally flat shape that
is conformable to a user’s body and which includes at least
one receptacle therein of similar flat shape;
vibrator means contained within said housing adjacent
said receptacle; and
a self-contained temperature storage enclosure (1) which
includes a material having the property of providing or
releasing heat, (2) which has a flat shape similar to that of
said receptacle so that said temperature storage enclosure can
be easily inserted into an easily removed from said receptacle
and (3) which is adapted both to transmit vibrations from said
vibrator means and to apply its temperature to the user’s
body.
The references of record relied upon by the examiner as
evidence of obviousness are:
Mensi 1,927,751 Sep. 19, 1933
Taylor 3,710,784 Jan. 16, 1973
Appeal No. 97-3982
Application 08/336,323
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Westplate 4,592,358 June 3, 1986
Francis et al. (Francis) 5,097,822 Mar. 24, 1992
Ohnishi Des. 290,654 June 30, 1987
Mack et al. (Mack)(U.K.) 2 090 746 July 21, 1982
THE REJECTION
The examiner has rejected claims 1, 2 and 5-7 under
35 U.S.C. § 103 as unpatentable over Taylor in view of Mack
and Westplate.
The examiner has rejected claims 3, 4, 8 and 9 under
35 U.S.C. § 103 as unpatentable over Taylor in view of Mack,
Westplate and further in view of Mensi.
The examiner has rejected claim 10 under 35 U.S.C. § 103
as unpatentable over Taylor in view of Mack, Westplate and
Ohnishi.
The examiner has rejected claims 11-15 under 35 U.S.C. §
103 as unpatentable over Taylor in view of Mack, Westplate,
Ohnishi and further in view of Francis.
Appeal No. 97-3982
Application 08/336,323
4
Only the first group of claims, i.e., claims 1, 2 and 5-
7, has been argued by appellant in the brief. Consequently,
the examiner treats only these claims in detail in the answer.
According to the examiner, Taylor teaches a massaging
unit with a flexible housing 40, a vibrator means 10, and a
self-contained temperature storage enclosure 30 within the
housing.
It is the examiner’s view that Mack teaches that it is known
to have a vibrator means having a flat bottom housing 5.
Therefore, the examiner concludes that it would have been
obvious to one having ordinary skill at the time the invention
was made to remove the massage fingers 24 of Taylor, and
following the teaching of Mack to provide a flat-bottom
housing 5. Additionally, the examiner is of the view that
Westplate teaches that it is known to provide a removable
heating and cooling enclosure 21 and a receptacle as set forth
in column 2, lines 46 to column 3, line 47. Therefore, the
examiner has determined that it would have been obvious to
provide a removable heating and cooling enclosure in the
receptacle adjacent to the vibrator of Taylor.
OPINION
Appeal No. 97-3982
Application 08/336,323
5
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have determined that the applied
prior art does not establish a case of prima facie case of
obviousness with respect to the claims on appeal. Therefore,
the rejections of these claims are not sustained. Our reasons
follow.
It is our view that the combination of references cited
by the examiner represents an exercise of impermissible
hindsight
on the part of the examiner in this consideration of claim 1
on appeal. We agree with the examiner that Taylor discloses a
flexible housing, but we disagree that the vibrator plate is
generally flat, inasmuch as Taylor depends upon finger ends 24
to simulate a fingertip massage. In our view, Mack adds
little to the reference Taylor in that it actually teaches
away from the claimed combination. Mack discloses a vibrator
in a housing which is secured to the heating member by VELCRO
strips so that it can be removed and placed exactly on the
heating member where the massage is most necessary. In our
view, the teaching of Mack when applied to the Taylor
Appeal No. 97-3982
Application 08/336,323
6
reference would have been to remove the massage motor from the
housing of Taylor so that it could
be placed any place along Taylor’s massage heating pad. With
respect to the Westplate reference, we are in agreement with
the examiner that Westplate would have taught making the
heating unit of Taylor of a removable nature for the self-
evident advantage of being able to replace the cooling pack or
heating pack when it is heated or cooled respectively.
However, this teaching of Westplate in no way cures the
deficiencies we have found in the combination of Taylor and
Mack. For this reason, it is our conclusion that the examiner
has used impermissible hindsight in combining the references
to reject claim 1.
We have also reviewed the other prior art references
applied by the examiner in rejecting the dependent claims on
appeal. We find no evidence therein that would have supported
a prima facie case of obviousness with resepct to any of the
appealed claims.
Appeal No. 97-3982
Application 08/336,323
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SUMMARY
The rejection of claims 1 through 15 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )

Appeal No. 97-3982
Application 08/336,323
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Appeal No. 97-3982
Application 08/336,323
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