11576107 (P.T.A.B. Jan. 30, 2014)

Ex Parte Gratsias et al

Patent Trial and Appeal BoardJan 30, 2014

11576107 (P.T.A.B. Jan. 30, 2014)

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. 11/576,107 06/04/2007 Spiros Gratsias 011348-041-999 6300 20583 7590 01/30/2014 JONES DAY 222 EAST 41ST ST NEW YORK, NY 10017 EXAMINER PAYER, HWEI SIU CHOU ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 01/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SPIROS GRATSIAS, IOANNIS BOZIKIS, and DIMITRIS EFTHIMIADIS ____________________ Appeal 2012-002714 Application 11/576,107 Technology Center 3700 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BART A. GERSTENBLITH, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002714 Application 11/576,107 2 STATEMENT OF THE CASE Spiros Gratsias et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 21 and 33-37. App. Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claim 21 is the sole independent claims and reads: 21. A vibrating wet shaver comprising: a hollow handle, a shaving head borne by the handle, an electric vibrator fixed to the handle, for transmitting vibrations to the shaving head through the handle, and a control circuit adapted to adjust a vibration frequency generated by the electric vibrator among several vibration frequencies, wherein the control circuit includes two actuating members, a first actuating member adapted to be voluntarily actuated by a user for increasing a vibration frequency generated by the electric vibrator and a second actuating member adapted to be voluntarily actuated by a user for decreasing and switching off the vibration frequency generated by the electric vibrator. 1 The Appeal Brief does not include page numbering. Herein, we refer to its pages beginning with the first page being numbered “page 1” and the successive pages being numbered “page 2,” etc. Appeal 2012-002714 Application 11/576,107 3 REJECTION Appellants seek review of the rejection of claims 21 and 33-36 under 35 U.S.C. § 103(a) as being unpatentable over Fischer (US 2005/0172493 A1; published Aug. 11, 2005), Althaus (US 5,214,851; issued Jun. 1, 1993), and Battaglia (US 5,088,037; issued Feb. 11, 1992). 2 ANALYSIS The Examiner found Fischer discloses the claimed vibrating wet shaver except that the vibration frequency of Fischer’s shaver “is not adjustable (i.e. “one single setting”). Ans. 5. The Examiner relied on Althaus for disclosure of a vibrating wet shaver with a switch so that two speeds can be established for its motor, with “two different vibration frequencies.” Id. (citing Fischer, col. 5, ll. 10-13; fig. 1). The Examiner concluded that it would have been obvious to modify Fisher “by including a switch in the control circuit for adjusting the vibration frequency to either higher or lower to suit one’s particular shaving needs as taught by Althaus.” Id. The Examiner found that Althaus’ vibration frequency can only be adjusted between two settings. Id. at 6. The Examiner further found that Battaglia teaches providing two actuating members for controlling the 2 Claim 37 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Fischer, Althaus, Battaglia, and Patrick (US 6,836,966 B2; issued Jan. 4, 2005). Ans. 6. Appellants indicate that claim 37 is appealed (App. Br. 2); however, only the rejection of claims 21 and 33-36 is listed for review (id. at 3) and no arguments are presented contesting the rejection of claim 37. Thus, we summarily sustain the rejection. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection when Appellant did not contest the rejection on appeal). Appeal 2012-002714 Application 11/576,107 4 intensity of a variable (volume/sound of an electronic device), with a first actuating member (53) adapted to be voluntarily actuated by a user for increasing the volume, and a second actuating member (54) adapted to be voluntarily actuated by the user for “decreasing and eventually switching off the volume.” Id. The Examiner concluded that it would have been obvious to further modify Fischer by having the vibration frequency adjusted by two actuating members to ensure that a desired setting is achieved. Id. Appellants contend that Battaglia does not disclose “switching off” the volume. App. Br. 3. In response, the Examiner stated “Battaglia’s volume decrease pushbutton (54) inherently possesses the function of decreasing the volume to zero (i.e. mute) by continuously pushing the button (54) to reduce the volume to zero and thus switching off the volume (i.e. mute).” Ans. 6 (emphasis added). The Examiner did not cite to any particular portion of Battaglia to support this finding. We note that the only description of the “button 54” in Battaglia states “[t]he volume of the audio tone signal generated by the sound signaling means 26 can be adjusted by operating the volume increase button 53 or the volume decrease button 54 respectively.” See Battaglia, col. 6, ll. 3-6 (emphasis added). While this disclosure indicates that the volume decrease button 54 can be operated to adjust the volume, it does not explicitly describe reducing the volume to zero by operating volume decrease button 54 (i.e., “switching off” the volume). Moreover, the Examiner has not identified any other evidence that establishes the volume decrease button 54 necessarily can be operated to adjust the volume to zero. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result Appeal 2012-002714 Application 11/576,107 5 from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). The Examiner has not provided sufficient evidence to establish that Battaglia inherently, that is, necessarily, discloses “switching off” the volume by operating volume decrease button 54. Regarding the Examiner’s discussion of “an AT &T cellular phone by SAMSUNG” (Ans. 7), Appellants correctly note that the Examiner did not provide any evidence to establish that this phone qualifies as prior art with respect to the present application. Reply Br. 3. Regardless, the rejection is based on the combination of Fischer, Althaus, and Battaglia, and not an AT&T cellular phone by Samsung. We do not sustain the rejection of claim 21, or its dependent claims 33-36. DECISION The Examiner’s decision rejecting claims 21 and 33-36 is REVERSED, and rejecting claim 37 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls