Ex Parte Cafaro

Board of Patent Appeals and Interferences

Mar 4, 2009

11253862 (B.P.A.I. Mar. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL CAFARO
____________________

Appeal 2009-0832
Application 11/253,862
Technology Center 3700
____________________

Decided1: March 4, 2009
____________________

Before JAMESON LEE, SALLY C. MEDLEY, and SALLY G. LANE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0832
Application 11/253,862

A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1, 2, and 4. The Appellant requests reversal
of the Examiner’s rejection of those claims. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Pitel et al. (Pitel) 5,930,105 Jul. 27, 1999
Harris et al. (Harris) 6,393,718 May 28, 2002
Cafaro 6,996,916 Feb. 14, 2006

The Rejections on Appeal
The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 103(a) as
unpatentable over Harris and Pitel.
The Examiner rejected claims 1, 2, and 4 on the ground of non-
statutory obviousness-type double patenting over U.S. Patent No. 6,996,916.

The Invention
The invention relates to hair styling/drying devices having a voltage
generator that allows for an adjustable output of negatively charged ions.
(Spec. 1: ¶¶ 2 & 3.)
Independent claim 1 is reproduced below (Claims App’x 7:1-10):
1. A hair drying or styling appliance comprising:

a housing;

a heating element;

a fan for discharging heated air from the appliance;

2
Appeal 2009-0832
Application 11/253,862

an outlet for directing heated air to the desired location;

an ion emitter device comprising a positive and a negative
electrode and positioned to emit ions into the flow of discharging air;

an ion generator connected to the ion emitter; and

a variable ion output regulator connected to the ion generator
and comprising a control for adjusting the ion output from a low level
to a high level.
B. ISSUE
1. Has the Appellant shown that the Examiner erred in
determining that Pitel qualifies as analogous art?
2. Has the Appellant shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Harris and Pitel?
C. FINDINGS OF FACT
1. The problem to be solved by the Appellant’s invention is that of
providing a control for an ion flow in a hair styling appliance that allows a
user to adjust the ion flow to the correct level for their particular type of hair.
(Spec. 1: ¶ 2.)
2. Pitel discloses an air ionizer that provides ions for controlling
and neutralizing the electric surface charge on stationary objects and
continuous moving webs of non-conductive material. (Pitel 1:5-8.)
3. In particular, Pitel discloses that (Pitel 5:21-31):
In one embodiment of the present invention, the outputs of one
or both of separate high voltage generators are selectively and
independently controlled to control the net ion output. This allows
desired levels of positive and negative ion currents to be achieved by
changing the high voltages applied to the respective ionizing
3
Appeal 2009-0832
Application 11/253,862

electrodes. In this manner, the ratio of ion currents can be changed
over a wide range from only positive ions to only negative ions, and
including generally equal positive and negative ion currents for
balanced ionization in order to neutralize the surface charge of any
polarity and magnitude on a fast-moving web.

4. Harris discloses a hand held hair dryer having an ion generator
for injecting a supply of ions into a heated air stream. (Harris 1:6-14.)
5. Harris further discloses that providing an output of ions acts to
neutralize oppositely charged ions that are already present in the vicinity of a
user’s hair thereby reducing hair damage and promoting the hair drying
process through reduced drying time. (Harris 1:64-2:6; 3:31-40.)
6. Harris recognizes that for a hair dryer, variations in each of the
air volume, heat level, and ionizing effect are desirable. (Harris 3:52-55.)
7. For heating elements 16 and fan 17, independent control
buttons 8 and 9 allow adjustment of the heat level and air volume. (Harris
3:1-2; 41-52.)

D. PRINCIPLES OF LAW
To qualify as analogous art, a reference must either be in the field of
the inventor’s endeavor or be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992).
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985). If a technique has been used to improve
one device, and a person of ordinary skill in the art would have recognized
4
Appeal 2009-0832
Application 11/253,862

that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. KSR
International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007).
Furthermore, it is not necessary that the inventions of the references be
physically combinable, without change, to render obvious the invention
under review. See In re Sneed, 710 F.2d 1544, 1550 (Fed.Cir. 1983). A
person of ordinary skill in the art is also a person of ordinary creativity, not
an automaton. KSR Int’l Co., 127 S. Ct. at 1742.
E. ANALYSIS
The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 103(a) as
unpatentable over Harris and Pitel. The Examiner determined that Harris
discloses all the limitations of claims 1, 2, and 4 with the exception of “a
variable ion output regulator with a control for adjusting the ion output from
a low level to a high level.” (Ans. 3:5-9.) The Examiner pointed to Pitel as
analogous-art that satisfies the above-noted deficiency. According to the
Examiner (Ans. 3:9-15):
Pitel et al. teach a[n] ionizing apparatus with a variable ion output
regulator 27, 29 connected to the ion generator 9, 11 and comprising a
control 101 for adjusting the ion output(col. 6, lines 47-61) same as
claimed. The ionizing apparatus of Pitel et al. is capable to adjust the
ion output from a low level to a high level. Therefore, it would have
been obvious to one having ordinary in the art at the time the
invention was made to modify the hair dryer of Harris to include a
variable ion output regulator with a control for adjusting the ion
output from a low level to a high level as taught by Pitel et al. in order
to improve the drying efficiency.

The Appellant argues that Harris and Pitel cannot properly be
combined because Pitel is non-analogous art. (App. Br. 3:14-17.) In
5
Appeal 2009-0832
Application 11/253,862

particular, the Appellant contends that Pitel is neither within the field of
endeavor of the Appellant’s invention nor pertinent to the particular problem
that the Appellant’s invention addresses. (App. Br. 4:1-5.) According to the
Appellant, the particular problem is that of “personal appearance and hair
styling.” (App. Br. 4:17.)
To qualify as analogous art, a reference must either be in the field of
the inventor’s endeavor or be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977 F.2d at 1447.
Here, we do not agree with the Appellant’s characterization in its Appeal
Brief that the problem that the Appellant’s invention seeks to solve is
“personal appearance and hair styling.” That may be a goal for the
consumer using the invention but it is not the technological problem the
disclosed invention solves. As articulated in the Appellant’s specification,
the problem solved is providing a control for an ion flow in a hair styling
appliance that allows adjustment of the ion flow to the correct level for a
user’s particular type of hair. (Spec. 1: ¶ 2.)
Pitel discloses an air ionizer that provides ions for controlling and
neutralizing the electric surface charge on stationary objects and continuous
moving webs of non-conductive material. (Pitel 1:5-8.) In particular, Pitel
discloses that (Pitel 5:21-31):
In one embodiment of the present invention, the outputs of one
or both of separate high voltage generators are selectively and
independently controlled to control the net ion output. This allows
desired levels of positive and negative ion currents to be achieved by
changing the high voltages applied to the respective ionizing
electrodes. In this manner, the ratio of ion currents can be changed
over a wide range from only positive ions to only negative ions, and
including generally equal positive and negative ion currents for
6
Appeal 2009-0832
Application 11/253,862

balanced ionization in order to neutralize the surface charge of any
polarity and magnitude on a fast-moving web.

Thus, Pitel teaches that providing independent controls for the ion
currents of ion generating devices has the benefit of providing a wide range
of ion output levels that is effective to neutralize a surface charge of any
magnitude. That teaching is reasonably pertinent to the problem addressed
by the Appellant’s invention in providing adjustment of an ion output to
neutralize the varying levels of static electricity of different hair types. We
reject the Appellant’s argument that Pitel is non-analogous art.
The Appellant also contends that a person of ordinary skill in the art
would not have been motivated to combine the teachings of Harris and Pitel
because of differences in the size of their respective ion generators. In
particular, the Appellant argues that Harris’ hand held dryer would not be
capable of receiving the high voltage generators of Pitel’s ion generators.
(App. Br. 4:25-5:6.)
The Appellant’s argument is not persuasive. A prior art reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to protect.
EWP Corp., 755 F.2d at 907. If a technique has been used to improve one
device, and a person of ordinary skill in the art would have recognized that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. KSR Int’l
Co., 127 S.Ct. at 1740. Furthermore, it is not necessary that the inventions
of the references be physically combinable, without change, to render
obvious the invention under review. See In re Sneed, 710 F.2d at 1550. A
7
Appeal 2009-0832
Application 11/253,862

person of ordinary skill in the art is also a person of ordinary creativity, not
an automaton. KSR Int’l Co., 127 S. Ct. at 1742.
Here, a person of ordinary skill in the art would not have viewed
Pitel’s teaching of control devices for ion generators that provide a wide
range of ion output levels as being limited only to high voltage generators in
industrial settings. Instead, one with ordinary skill and creativity would
have recognized that the benefit stemming from those controls would be
applicable to other categories of air ionization devices. A skilled artisan
would not have viewed that benefit as being limited only to a particular kind
or size of ion generator.
Harris discloses a hand held hair dryer having an ion generator for
injecting a supply of ions into a heated air stream. (Harris 1:6-14.) Harris
further discloses that providing an output of ions acts to neutralize
oppositely charged ions that are already present in the vicinity of a user’s
hair thereby reducing hair damage and promoting the hair drying process
through reduced drying time. (Harris 1:64-2:6; 3:31-40.) The level of
ordinary skill in the hair dryer art is such that one with ordinary skill would
have recognized that the amount of ions on charged surfaces that are heated
by Harris’ hair dryer will not be identical from one surface to the next.
One with ordinary skill and creativity would have recognized that the
benefit of ion generators with varying ion outputs, such as taught in Pitel,
would also be desirable in the ion generators of other technologies that seek
to neutralize varying amounts of ions, such as Harris’ hair dryer. The
Appellant has not shown that the Examiner erred in determining that claims
1, 2, and 4 are satisfied by the combination of Harris and Pitel.
8
Appeal 2009-0832
Application 11/253,862

Moreover, even if a person of ordinary skill in the art would not have
looked to the air ionization device of Pitel, Harris itself recognizes that for a
hair dryer, variations in each of the air volume, heat level, and ionizing
effect are desirable. (Harris 3:52-55.) For heating elements 16 and fan 17,
independent control buttons 8 and 9 allow adjustment of the heat level and
air volume. (Harris 3:1-2; 41-52.) The level of ordinary skill in the hair
dryer art is such that one with ordinary skill would have understood from the
teachings of Harris that suitable adjustment controls would also have
allowed for the desired variation in the degree of ionization.
For all the foregoing reasons, we sustain the rejection of claims 1, 2,
and 4 under 35 U.S.C. § 103(a) as unpatentable over Harris and Pitel.
With regard to the non-statutory double patenting rejection of claims
1, 2, and 4, the Appellant does not dispute the merit of that rejection. The
Appellant states only that (App. Br. 5:14-16):
In response to the provisional obviousness-type double
patenting rejection, Appellant will submit a terminal disclaimer upon
indication of otherwise allowable claims in the present application.

Accordingly, we sustain the rejection of claims 1, 2, and 4 on the
ground of non-statutory obviousness-type double patenting over U.S. Patent
No. 6,996,916.
F. CONCLUSION
1. The Appellant has not shown that the Examiner erred in
determining that Pitel qualifies as analogous art.
2. The Appellant has not shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Harris and Pitel.
9
Appeal 2009-0832
Application 11/253,862

G. ORDER
The rejection of claims 1, 2, and 4 under 35 U.S.C. § 103(a) as
unpatentable over Harris and Pitel is affirmed.
The rejection of claims 1, 2, and 4 on the ground of non-statutory
obviousness-type double patenting over U.S. Patent No. 6,996,916 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb

VINSON & ELKINS, LLP
First City Tower
1001 Fannin Street, Suite 2500
Houston, TX 7702-6760
10