Ex Parte Ferber et al

Patent Trial and Appeal Board

Mar 20, 2017

13871549 (P.T.A.B. Mar. 20, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/871,549 04/26/2013 Roman Ferber HOME0972PU S3 1648
22045 7590 03/22/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER THANH, QUANG D
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
03/22/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN FERBER and STEPHEN CHUNG1
Appeal 2015-001189
Application 13/871,549
Technology Center 3700
Before LEE L. STEPINA, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roman Ferber and Stephen Chung (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—4 and 6—
21.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is FKA Distributing
Co., LLC, d/b/a Homedics, LLC. Appeal Br. 3 (filed July 14, 2014).
2 Claim 5 has been cancelled. Final Act. 2 (mailed Feb. 10, 2014).
Appeal 2015-001189
Application 13/871,549
CLAIMED SUBJECT MATTER
The invention concerns portable body massagers. Spec. 12. Claim 1
is illustrative of the subject matter on appeal, and recites:
1. A portable body massager comprising:
a portable housing sized to be received and supported by a
backrest of a conventional chair, the housing having a
longitudinal axis and an external contact surface for receiving a
portion of a body of a user;
a longitudinal guide mounted in the housing;
a carriage oriented in the housing and cooperating with the
guide for limited longitudinal translation in the housing along the
guide;
a first motor supported upon the carriage, the motor
having a motor output shaft driven thereby, the motor output
shaft being operably coupled to the housing to translate the
carriage along the guide;
at least a pair of massage members transversely spaced
about the longitudinal axis, each of the at least a pair of massage
members being supported by the carriage for imparting a
massage effect upon the portion of the user’s body as the carriage
is translated relative to the housing;
a second motor supported upon the carriage in operable
communication with the at least a pair of massage members for
driving the at least a pair of massage members relative to the
carriage for providing a kneading massage effect to a targeted
region of the user’s body corresponding to the longitudinal
orientation of the carriage and for user-selected operation of the
at least a pair of massage members relative to the carriage to
selectively adjust an orientation of the at least a pair of massage
members relative to the longitudinal axis independently of
translation of the carriage along the guide so that a user can select
a stationary orientation of the at least a pair of massager members
for imparting the massage effect;
a worm mounted to and driven by the motor output shaft;
a worm gear rotatably mounted to the carriage and
operably driven by the worm;
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Application 13/871,549
a pinion gear rotatably mounted to the carriage and
operably driven by the worm gear; and
a longitudinal rack affixed to the housing and engaged
with the pinion gear such that rotation of the pinion gear
translates the carriage along the guide.
Appeal Br. (Claims App. 1) (emphasis added).
REJECTION
Claims 1—4 and 6—21 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 22—25, 27, and 28 of Ferber
(US 7,128,721 B2, iss. Oct. 31, 2006) and Lin (US 2004/0049136 Al, pub.
Mar. 11,2004).
ANALYSIS
Appellants argue claims 1—4 and 6—21 as a group. Appeal Br. 11—13.
We select claim 1 as representative, and claims 2—4 and 6—21 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that claims 22—25, 27, and 28 of Ferber recite
substantially all of the claimed features, “including a first motor and at least
a pair of [rotatable] massage members.” Final Act. 3—4. The Examiner
finds that the cited claims of Ferber do not recite “a second motor operable
in communication with the pair of massage members for providing a rotatory
kneading massaging effect,” and relies on Lin for such a teaching. Id. at 4.
The Examiner finds that Lin teaches a massage machine with motor 1, which
drives massage members 6 to provide rotatory and reciprocating impinging
massage. Id. (citing Lin || 29—30, Figs. 6, 9). The Examiner concludes that
it would have been obvious to have modified the Ferber device to include a
second motor, as taught by Lin, to “provid[e] a suitable driving mechanism
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Appeal 2015-001189
Application 13/871,549
that permits rotational movement and reciprocating movement of the
massaging nodes so as to carry on a better massage with rotational kneading
and reciprocating impinging effect. . . while reducing the cost and volume
of the massage device.” Id. (citing Lin || 4—5).
Appellants contend that Ferber “expressly teaches away from two-
motor designs.” Appeal Br. 11. Appellants identify, inter alia, the
following disclosure of Ferber:
The prior art body massagers are relatively complex and utilize
many components ....
For example, . . . [m]any prior art body massagers require
two motors, one for translating the massage mechanism, and the
other for imparting the massage effect from the massage
mechanism. Accordingly, these drawbacks of the prior art add
both cost and weight to the prior art body massagers.
A goal of the present invention is to provide a simplified
body massager having improvements in massage function,
portability and cost in view of the prior art.
Id. at 11—12 (citing Ferber, 1:13—30) (emphasis omitted).
We are not persuaded that Ferber teaches away from the proposed
combination. Ferber explains that cost and weight may increase in
massagers with two motors, one for translation and one for massage, which
Ferber describes as rotational massage. See, e.g., Ferber, 1:13—30, 1:41 44.
However, Ferber does not address the relative merits of using of two motors,
when one motor controls translation and the other motor imparts two
different types of massage effect (rotation and reciprocation), as taught by
Lin. As the Examiner correctly notes, although including a second motor
may increase cost and/or weight, “the advantage of enhancing the
therapeutic massaging effect may outweigh the disadvantage of adding cost
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Application 13/871,549
and weight to the massager.” Ans. 5 (mailed Aug. 26, 2014). Appellants do
not address persuasively the Examiner’s reasoning that the proposed
modification would provide “a better massage” by imparting both rotational
kneading and reciprocating impinging effect. Final Act. 4; Ans. 4.
As our reviewing court has stated, “a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (citation omitted); see also Winner Int 7 Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullity its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”); see also In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016). Accordingly, Appellants have not demonstrated
Examiner error on this basis.
Appellants also contend that “[t]he intended purpose and the principle
of operation of [Ferber] are to eliminate a second motor by performing both
functions with one motor.3 The proposed modification renders [Ferber]
unsatisfactory for its intended purpose and changes the principle of
operation of [Ferber].” Appeal Br. 12.
We are unpersuaded by this argument. Appellants’ identification of
Ferber’s intended purpose and principle of operation is overly narrow.
3 By “both functions,” we understand Appellants to refer to, first, translating
the massage mechanism and, second, imparting rotary massage effect. See,
e.g., Ferber, 1:22-27, 4:49-52, 5:8-11.
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Application 13/871,549
Although Ferber explains that certain prior art massagers were costly and
heavy due to the presence of two motors, Ferber does not limit the invention
to solving only that narrow problem. Ferber, 1:19—27 (discussing prior art
two-motor massagers, “[f]or example”). Rather, Ferber explains that the
“goal” of the invention is to “provide a simplified body massager having
improvements in massage function, portability and cost.” Id. at 1:28—30; see
also id. at 7:64—8:3 (“[T]he body massager 10 provides an efficient,
portable, lightweight, sturdy massage apparatus.”). Accordingly, we agree
with the Examiner that Ferber’s intended purpose is to impart massaging
effect. Ans. 4—5. Appellants do not show persuasively that the proposed
modification in view of Lin renders Ferber unsatisfactory for its intended
purpose of imparting massaging effect. Appeal Br. 12. Indeed, the
proposed modification furthers Ferber’s goal of improving massage function
by providing rotary and reciprocating massage. See Ferber, 1:28—30.
Further, we disagree with Appellants’ characterization of Ferber’s principle
of operation as being “to eliminate a second motor by performing both
functions with one motor.” Appeal Br. 12. Rather than a principle of
operation, this characteristic is an exemplary advantage provided by Ferber’s
invention. We addressed this advantage above in the discussion of
Appellants’ argument that Ferber teaches away from the Examiner’s
proposed modification. Appellants’ argument on this point remains
unavailing.
We are also unpersuaded by Appellants’ argument that Lin’s first
motor is not mounted to the carriage. Appeal Br. 12—13. The Examiner’s
rejection does not rely upon Lin’s first motor. Rather, the Examiner finds,
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Application 13/871,549
correctly, that Ferber claims a first motor mounted to the carriage. Final
Act. 3^4; Ferber, 4:45—46, 11:14 (claim 22). The Examiner’s rejection relies
upon Lin solely for its teaching of a second motor. Adv. Act. 3 (mailed Apr.
16, 2014); Ans. 6.
Finally, we are unpersuaded by Appellants’ conclusory argument that
the Examiner “does not provide any reason for supporting a pair of motors
on the carriage for translating the carriage and rotating the massage
members.” Appeal Br. 13. As discussed above, the Examiner explicitly
discusses the reasoning for the proposed modification, namely, providing an
improved massage that includes rotational kneading and reciprocating
impinging. Final Act. 4. Appellants’ argument does not address these
reasons persuasively. Appeal Br. 13.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DECISION
The rejection of claims 1—4 and 6—21 is AFFIRMED.
AFFIRMED
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