Ex Parte Lyapko

Board of Patent Appeals and Interferences

Apr 20, 2007

10031161 (B.P.A.I. Apr. 20, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
_____________ 6
7
BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
_____________ 10
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Ex parte NIKOLAI GRIGORIEVICH LYAPKO 12
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Appeal No. 2006-2049 15
Application No. 10/031,161 16
Technology Center 3700 17
______________ 18
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Decided: April 20, 2007 20
_______________ 21
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Before TERRY J. OWENS, LINDA E. HORNER, and JOSEPH A. FISCHETTI, 23
Administrative Patent Judges. 24
25
OWENS, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
30
The Appellant appeals from a rejection of claims 19-34, which are all of the 31
pending claims. 32
THE INVENTION 33
The Appellant claims a device for reflexotherapy (i.e., acupuncture). 34
Claim 19 is illustrative: 35
Appeal 2006-2049
Application 10/031,161

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19. A device for reflexotherapy, comprising: 1
2
an elastic base member being in plasticized condition in the course of 3
heating, and being an integral structure upon curing; and 4
5
needles provided each with one squeezed thickened end and one 6
sharpened end, said squeezed thickened ends being embedded in said elastic 7
base member when in said plasticized condition so that upon curing of said 8
elastic base member at least said squeezed thickened end of each needle is 9
squeezed in said integral structure of said elastic base member, and said 10
remaining sharpened end of each needle protrudes from said integral 11
structure. 12
13
THE REFERENCES 14
Leupold US 3,923,064 Dec. 2, 1975 15
Gelfer US 5,250,067 Oct. 5, 1993 16
Yoneda (as translated) JP 7[1995]-100181 Apr. 18, 1995 17
THE REJECTIONS 18
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 19, 21, 19
23, 27, 29 and 31 over Gelfer in view of Leupold, and claims 20, 22, 24-26, 28, 30 20
and 32-34 over Gelfer in view of Leupold and Yoneda. 21
OPINION 22
The rejections are affirmed as to claims 19, 21, 23, and 25, and reversed as 23
to claims 20, 22, 24, and 26-34. The Appellant does not provide a substantive 24
argument as to the separate patentability of claims 21, 23, and 25 that depend from 25
claim 19, which is the sole independent claim among those claims (Br. 13-21). 26
Therefore, regarding the claims whose rejection is affirmed, we address only 27
claim 19. Claims 21, 23, and 25 fall with claim 19. See 28
37 C.F.R. § 41.37(c)(1)(vii)(2004). 29
Appeal 2006-2049
Application 10/031,161

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Claim 19 1
Gelfer discloses “an acupuncture treatment device comprising a flexible 2
pad adapted to be pressed against a person’s skin to stimulate blood circulation and 3
safely relieve pain caused by stress, exercise or accident” (Gelfer, col. 1, ll. 9-13). 4
The flexible pad comprises a flexible backing sheet (10) that “can be canvas, or 5
heavy cloth, or a thin sheet of non-woven plastic material” (Gelfer, col. 3, ll. 7-9). 6
In one embodiment one face of the flexible backing sheet has spaced-apart rigid 7
blocks (11) affixed to it (Gelfer, col. 2, ll. 16-19). “Each rigid block has one or 8
more sharp edged protuberances [14, 15] extending away from the sheet so that 9
when the pad is pressed against a person’s skin the sharp edges penetrate or 10
depress the skin to exert an acupuncture effect” (Gelfer, col. 2, ll. 19-23). “The 11
protuberances may be conical in nature, in which case the sharp edges will be 12
defined by the sharpened pointed ends of the conical elements” (Gelfer, col. 2, 13
ll. 23-26; figs. 3, 4). In another embodiment each acupuncture block comprises an 14
elongated, rectangular cross-section bar (19) that is adhesively attached to the 15
flexible backing sheet and has convergent side surfaces (22) extending away from 16
the sheet to form an elongated knife edge (23) (Gelfer, col. 4, ll. 42-48; figs. 5, 6). 17
Leupold discloses an acupuncture device comprising a plastic holder (1) 18
having the shape of a finger ring (Leupold, col. 2, ll. 60-61). In one embodiment 19
the holder has a flat depression surrounding a preshaped part (8) having a widened 20
flange (9) embedded in the holder and having a dull or rounded tip (7) projecting 21
above the flat depression (Leupold, col. 3, ll. 1-3, 6-10, 14-16; col. 4, ll. 12-13; 22
fig. 3). The holder’s plastic is molded around the embedded widened flange to 23
permanently affix the preshaped part to the plastic holder (Leupold, col. 3, ll. 10-24
16). 25
Appeal 2006-2049
Application 10/031,161

4

The Appellant argues that Gelfer’s nonwoven plastic material (Gelfer, col. 3, 1
ll. 8-9) is not disclosed as being elastic (Br. 14-15), and that a flexible article is not 2
necessarily elastic (Reply Br. 3). The dictionary definitions of “elastic” include 3
“capable of being easily stretched or expanded and resuming former shape: 4
FLEXIBLE”.1 Hence, it reasonably appears that Gelfer’s disclosure of a plastic 5
material that is flexible (Gelfer, col. 3, ll. 4-9) would have fairly suggested, to one 6
of ordinary skill in the art, a plastic material that is elastic. 7
The Appellant argues that the Appellant’s claims recite needles, whereas 8
Gelfer discloses needle-like protuberances (Reply Br. 2). Gelfer discloses that 9
“each protuberance can be a conical needle element” (Abstract). Moreover, the 10
dictionary definitions of “needle” include “a slender pointed object resembling a 11
needle: as (1) : a pointed crystal (2): a sharp rock (3): OBELISK”.2 Thus, Gelfer’s 12
conical needle element reasonably can be considered a needle or, as a minimum, 13
suggestive of a needle. 14
The Appellant argues that Leupold’s preshaped part 8 is not a needle and 15
does not have a sharpened end, and that Leopold’s holder has a rigid pressure plate 16
(Br. 15-16). That argument is not well taken because the Appellant is attacking the 17
reference individually when the rejection is based on a combination of references. 18
See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981); In re 19
Young, 403 F.2d 754, 757-58, 159 USPQ 725, 728 (CCPA 1968). The Examiner 20
relies upon Gelfer for a disclosure of a needle and an elastic base member 21
(Answer 3). 22

1 Webster’s New Collegiate Dictionary 365 (G. & C. Merriam 1973).
2 Webster’s New Collegiate Dictionary, supra note 1, at 768.
Appeal 2006-2049
Application 10/031,161

5

The Appellant argues that Gelfer’s elongated bar 19 is not a needle (Br. 13). 1
As pointed out above, Gelfer’s conical needle element either is a needle, or at least 2
would have fairly suggested a needle to one of ordinary skill in the art. Gelfer 3
discloses attaching the elongated bar directly to the flexible backing sheet (Gelfer, 4
col. 4, ll. 45-48; figs. 5, 6), but does not disclose such direct attachment of the 5
conical needle element. Instead, the conical needle element is attached to a rigid 6
block which is attached to the flexible backing sheet (Gelfer, col. 3, ll. 4-7; figs. 3, 7
4). For attachment of the conical needle element directly to the flexible backing 8
sheet to have been prima facie obvious to one of ordinary skill in the art, the 9
applied prior art must have provided one of ordinary skill in the art with both a 10
motivation to provide that attachment and a reasonable expectation of success in 11
doing so. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 12
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). 13
One of ordinary skill in the art would have been motivated to eliminate the rigid 14
block to eliminate the cost associated with it. See In re Thompson, 545 F.2d 1290, 15
1294, 192 USPQ 275, 277 (CCPA 1976); In re Clinton, 527 F.2d 1226, 1229, 188 16
USPQ 365, 367 (CCPA 1976). Leupold discloses that embedding in plastic a 17
widened flange at the base of a preshaped acupuncture protuberance as the plastic 18
is molded permanently affixes the protuberance to the plastic (Leupold, col. 3, 19
ll. 10-16). That disclosure would have provided one of ordinary skill in the art 20
with a reasonable expectation of success in permanently affixing Gelfer’s conical 21
needle element to the flexible plastic backing sheet by forming a widened flange at 22
the base of that element and embedding the widened flange in the flexible plastic 23
material. Therefore, embedding the base portion of Gelfer’s conical needle 24
element in the flexible plastic backing material would have been prima facie 25
obvious to one of ordinary skill in the art. 26
Appeal 2006-2049
Application 10/031,161

6

The Appellant argues that the applied prior art does not disclose a squeezed 1
thickened end of a needle (Br. 15). The squeezing is the tight clamping of the 2
thickened end by the base material after the base material has cooled 3
(Specification 9:26-28). Consequently, it reasonably appears when Leupold’s 4
plastic is molded around the preshaped part’s widened flange (Leupold, col. 3, 5
ll. 10-16), the widened flange likewise is squeezed when the plastic has cooled. 6
The Appellant argues that “there is no reason given in the final rejection to 7
support the proposed combination [of Gelfer and Leupold], other than the 8
statement ‘it would have been obvious to one skilled in the art to embed the 9
needles having a thickened end head within the base, as taught by Leupold, for the 10
purpose of stabilizing the anchoring of the needles to the base, to thus prevent the 11
needles from breaking off’” (Br. 18). The Examiner’s reason quoted by the 12
Appellant is plausible, and the Appellant has provided no substantive argument as 13
to why it is incorrect. 14
The Appellant sets forth a laundry list of boilerplate legal arguments (Br. 19-15
21). Those arguments are not well taken because no substantive reasoning is 16
provided in support of the arguments. 17
For the above reasons we are not convinced of reversible error in the 18
Examiner’s rejection of claim 19 or claims 21, 23, and 25 that fall therewith. 19
Claims 27-34 20
Claim 27 requires an elastic base member consisting of two layers, and 21
needles each having a squeezed thickened end disposed between the two layers, 22
joined together with the two layers, and fastened substantially in an area of joint 23
between the two layers. 24
The Examiner argues that “it would have been obvious to one having 25
ordinary skill in the art at the time the invention was made to select two or more 26
Appeal 2006-2049
Application 10/031,161

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layers of plastic material to form the sheet, with the needles embedded between the 1
layers in the base member, as taught and suggested by Leupold, since it has been 2
held that constructing a formerly integral structure in various elements (layers) 3
involves only routine skill in the art” (Answer 4). For a prima facie case of 4
obviousness to be established, the teachings from the prior art itself must appear to 5
have suggested the claimed subject matter to one of ordinary skill in the art. See In 6
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). Leupold 7
does not disclose two base member layers, and the Examiner has not explained 8
how the applied references would have fairly suggested, to one of ordinary skill in 9
the art, a two layer base member, let alone the location and fastening of the 10
needle’s squeezed end at the joint between the two layers as required by the 11
Appellant’s claim 27. 12
The Examiner, therefore, has not established a prima facie case of 13
obviousness of the invention claimed in the Appellant’s claim 27 or its dependent 14
claims 28-34. 15
Claims 20, 22, 24, and 26 16
Yoneda discloses an acupuncture device comprising, in one embodiment, a 17
base plate (1) having thereon sharp conical projections (2) that provide an effect 18
analogous to a needle (Yoneda, p. 4, ¶ 0011). In another embodiment a 19
pedestal (13) is attached to a base plate (10), and an intradermal needle (12) 20
projects through a hole in the pedestal and is fixed in place by pressure-sensitive 21
adhesive tape (16) (Yoneda, pp. 5-6, ¶ 0015; fig. 7). 22
The Appellant’s claim 20 depends from claim 19 and requires that “an 23
external surface of said base member is provided with lugs surrounding said 24
needles.” 25
Appeal 2006-2049
Application 10/031,161

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The Examiner relies upon Yoneda’s pedestal as corresponding to the 1
Appellant’s lugs, and argues that “it would have been obvious to one skilled in the 2
art to modify the needle of Gelfer/Leupold to have lugs disposed on the base 3
member and surrounding the needles, as taught by Yoneda, for the purpose of 4
providing a lug to serve as stabilizing means that allows for increased retention of 5
the needle” (Answer 5). Yoneda’s needle projects through a hole in the pedestal 6
without contacting the portion of the pedestal surrounding the hole, and is held in 7
place by pressure-sensitive adhesive tape (Yoneda, pp. 5-6, ¶ 0015; fig. 8). The 8
pedestal does not appear to stabilize the needle or increase its retention. Moreover, 9
Yoneda does not use the pedestal in the embodiment having a sharp conical 10
projection (2) (Yoneda, p. 4, ¶ 0011; fig. 1) that is similar to Gelfer’s conical 11
needle element (Gelfer, figs. 3, 4). Thus, the record indicates that the Examiner’s 12
reason for placing Yoneda’s pedestal around Gelfer’s conical needle element 13
comes from the Appellant’s disclosure rather than coming from the applied prior 14
art. The record, therefore, indicates that the Examiner used impermissible 15
hindsight in rejecting the Appellant’s claim 20 and its dependent claims 22, 24 16
and 26. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 17
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re 18
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, 19
we conclude that the Examiner has not established a prima facie case of 20
obviousness of the invention claimed in those claims. 21
DECISION 22
The rejection under 35 U.S.C. § 103 of claims 19, 21, 23, 27, 29, and 31 23
over Gelfer in view of Leupold is affirmed as to claims 19, 21, and 23, and 24
reversed as to claims 27, 29, and 31. The rejection under 35 U.S.C. § 103 of 25
claims 20, 22, 24-26, 28, 30, and 32-34 over Gelfer in view of Leupold and 26
Appeal 2006-2049
Application 10/031,161

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Yoneda is affirmed as to claim 25 and reversed as to claims 20, 22, 24, 26, 28, 30, 1
and 32-34. 2
No time period for taking any subsequent action in connection with this 3
appeal may be extended under 37 C.F.R. § 1.136(a)(2006). 4
AFFIRMED-IN-PART 5
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Irving M Weiner 16
Weiner & Burt 17
PO Box 186 18
Harrisville, MI 48740 19