Ex Parte Blue

Board of Patent Appeals and Interferences

Jun 17, 2004

09760400 (B.P.A.I. Jun. 17, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ULETT S. BLUE
____________
Appeal No. 2004-1250
Application No. 09/760,400
____________
ON BRIEF
____________
Before KIMLIN, KRATZ and TIMM, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-4 and 6, which are all of the claims
pending in this application.
Appeal No. 2004-1250
Application No. 09/760,400
Page 2
BACKGROUND
Appellant's invention relates to a portable vibratory
device. An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below.
1. A portable, vibrating relaxation device for an
infant or child, specifically configured to accommodate
use in a crib, bassinet, playpen, stroller, car seat or
other surface, wherein said portable, vibrating
relaxation device comprises:
a main housing appropriately sized to accommodate
an infant or child of pre-school age;
a vibration genertor retained within said main
housing and attached to an internal sidewall of said
main housing;
a removable cover fabricated of a washable,
textile material forming a rectangular void for
receiving said main housing;
an integrated circuit timer for regulating the
control of said vibration generator;
attachment means for securing said portable,
vibrating relaxation device to said crib, bassinet,
playpen, stroller, car seat or other surface.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Komatsu 5,076,260 Dec. 31, 1991
Chung 6,077,238 Jun. 20, 2000
(filed Feb. 29, 1996)
Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102 as
being anticipated by Chung. Claim 4 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Chung in view of Komatsu.
Appeal No. 2004-1250
Application No. 09/760,400
Page 3
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellant and the examiner concerning the issues before us on
this appeal.
OPINION
Having carefully considered each of appellant’s arguments
set forth in the brief and reply brief, appellant has not
persuaded us of reversible error on the part of the examiner.
Accordingly, we will affirm the examiner’s rejections for
substantially the reasons set forth by the examiner in the
answer. We add the following for emphasis.
§ 102 Rejection
Appellant maintains that “[e]ach claim forms a separate
group of claims [such] that each [claim] stand[s] or fall[s]
independent of the others” (brief, page 8). However, appellant’s
brief does not include separate arguments for the patentability
of each appealed claim subject to this rejection in compliance
with 37 CFR § 1.192(c)(7) and (c)(8) (2000). See In re McDaniel,
293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (“if
the brief fails to meet either requirement, the Board is free to
select a single claim from each group of claims subject to a
common ground of rejection as representative of all claims in
Appeal No. 2004-1250
Application No. 09/760,400
Page 4
that group and to decide the appeal of that rejection based
solely on the selected representative claim”). Accordingly,
appealed claims 1-3 and 6 stand or fall together and we select
independent claim 1 as the representative claim on which we shall
decide this appeal with respect to this ground of rejection.
Under 35 U.S.C. § 102, anticipation requires that the prior
art reference disclose, either expressly or under the principles
of inherency, every limitation of the claim. See In re King, 801
F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). Other than
appellant’s arguments pertaining to the use of the claimed device
with infants and small children and sizing of the claimed device
to accommodate same (brief, page 9), appellant does not
specifically dispute the examiner’s factual determinations that
Chung discloses a portable vibratory structure corresponding to
the claim 1 structure including: (1) a housing (Figure 2 and
column 3, lines 24 and 25) corresponding to the claimed main
housing; (2) a vibratory generator (23, Figure 2)) attached to an
internal wall (32, Figure 2) of the housing corresponding to the
claimed vibration generator; (3) a removable cover (element 20,
Figures 1 and 2 and column 3, lines 17-21) fabricated to
correspond with the claimed cover; (4) an integrated circuit
timer (308, Figure 3) corresponding to the claimed circuit timer;
Appeal No. 2004-1250
Application No. 09/760,400
Page 5
and (5) an attachment means (straps depicted in Figure 1 and
described at column 3, lines 5-8) for securing the portable
vibratory device to a seat or other surfaces that corresponds to
the structure of the like attachment means as recited in
representative claim 1. See pages 3 and 4 of the answer.
We are not persuaded by the arguments advanced by appellant
in the briefs before us. We note that representative claim 1 is
drawn to a “portable, vibrating relaxation device for an infant
or child” that is “specifically configured to accommodate use in
a crib, bassinet, playpen, stroller, car seat or other surface”
(underlining supplied). Chung clearly describes a vibratory
massaging apparatus in the form of a covered cushion that is
configured for use on a automobile seat or other surface. See
column 2, lines 53-58 of Chung. Whether or not a child of
preschool age or an infant is positioned so as to enjoy the
cushion of Chung, which clearly is constructed to accommodate a
person, including such an infant or child, is irrelevant since
the subject matter of representative claim 1 is drawn to the
device not a particular use thereof. See In re Self, 671 F.2d
1344, 1350-1351, 213 USPQ 1, 7 (CCPA 1982) (when the claim does
not recite allegedly distinguishable features, “appellant[s]
cannot rely on them to establish patentability.”).
Appeal No. 2004-1250
Application No. 09/760,400
Page 6
1 In the event of further prosecution of this subject matter
before the examiner, the examiner should determine whether or not
the claims are in compliance with the first and second paragraphs
of 35 U.S.C. § 112 given the functional size limitation
associated with the main housing that was added by amendment.
While claim 1 provides that the housing of the vibratory
generator is sized to ‘accommodate’ a child of preschool age or
an infant, appellant has not fairly explained how that allegedly
“functional” size limitation of the generator housing serves to
distinguish the claimed generator housing over the generator
housing of Chung. In this regard, the housing of the claimed
invention and the prior art are each constructed for holding the
vibration generator not a child.1 For purposes of this appeal,
the claimed ‘accommodation’ limitation is construed to relate to
an intended use of the device with a child or infant and does not
serve to restrict the size of the claimed vibration generator
housing to any particular size that differentiates over the
disclosure of Chung.
In a case such as this where the critical limitation that is
argued as establishing novelty for the claimed subject matter is
recited, at best, as a functional characteristic that reasonably
appears to be a characteristic of the prior art structure insofar
as broadly called for in the representative appealed claim based
on the correspondence in structure between the representative
Appeal No. 2004-1250
Application No. 09/760,400
Page 7
claim and the applied prior art, it is incumbent upon appellant
to prove that the applied prior art does not in fact possess the
characteristics relied on. See In re Spada, 911 F.2d 705, 708,
15 USPQ 1655, 1658 (Fed. Cir. 1990); In re Fitzgerald, 619 F.2d
67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433 (CCPA 1977). The reason is that the
Patent and Trademark Office is not able to manufacture and
compare products. See Best, 562 F.2d at 1255, 195 USPQ at 434.
Here, appellant has not satisfied this burden.
It follows that, on this record, we shall sustain the
examiner’s § 102 rejection.
§ 103(a) Rejection
Concerning appealed claim 4, the examiner relies on the
teachings of Komatsu in addition to Chung to establish the
obviousness of the claimed subject matter. In this regard, the
examiner (answer, page 5) has reasonably determined that it would
have been prima facie obvious to one of ordinary skill in the art
to arrive at the claimed subject matter with a reasonable
expectation of success in so doing by employing a vibratory
generator including a coil wrapped magnet (armature) and plate
arrangement as disclosed in Komatsu as a vibratory generator in
Chung for the purpose of providing vibrations in the device of
Appeal No. 2004-1250
Application No. 09/760,400
Page 8
Chung for their beneficial effects in relaxing the mind and body
as taught by Komatsu (column 2, lines 3-8). Concerning this
matter, Chung (column 2, lines 66 and 67) teaches that other
vibrators may be used in the disclosed seat cushion device.
Appellant’s arguments with respect to the patentability of
claim 4 based on the features of claim 1 are not persuasive for
the reasons set forth above. Moreover, appellant’s discussion
concerning alleged differences over the Hofmeister reference are
not relevant since the examiner’s rejection is over the combined
teachings of Chung and Komatsu, not Hofmeister. As for
appellant’s viewpoint that impermissible hindsight may be
involved in the examiner’s proposed modification of Chung based
on the teachings of Komatsu, we note that appellant does not
specifically address much less persuasively refute the examiner’s
reasons for the proposed modification based on asserted benefits
described in Komatsu. On this record, we will sustain the
examiner’s § 103(a) rejection.
Appeal No. 2004-1250
Application No. 09/760,400
Page 9
CONCLUSION
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
PFK/sld
Appeal No. 2004-1250
Application No. 09/760,400
Page 10
JOHN D. DUGLLOTTA, P.E. ESQ.
202 DELWARE BUILDING
137 SOUTH MAIN STREET
AKRON, OH 44308