Ex Parte Mark

Board of Patent Appeals and Interferences

Jan 13, 2005

10101732 (B.P.A.I. Jan. 13, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte PHILIP MARK

Appeal No. 2005-0262
Application No. 10/101,732

ON BRIEF

Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claim 6.
Claim 6 is reproduced below:
6. A hand held vibrating instrument comprising an elongated
tubular housing for grasping to be used manually similar to a
conventional pen or pencil writing instrument comprising:
said elongated tubular housing having an elongated internal
chamber having a proximate end and a distal end:
connecting means being a socket mounted on said distal end
for connecting a tool to said instrument;
said tool has a male threaded portion at its proximate end,
terminating with a radially extending flange located in the
direction of a distal end of the tool, the flange has a rod
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Application No. 10/101,732
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portion at the other side of the flange which terminates in a
cylindrical portion that is larger than the said rod, the
cylindrical portion terminates in another rod portion that is
smaller in diameter than the said cylindrical portion,
said tool being constructed of a resilient material;
said socket having a distally facing opening and a female
threaded recess therein adapted and constructed to accept and
retain thereinto the male threaded portion of said tool;
a motor means being mounted within said internal chamber,
said motor means including a rotatable shaft, a weight
eccentrically mounted on said shaft, the rotation of said shaft
rotates said weight and produces a rapid vibration at said distal
end;
battery means mounted within said internal chamber for
providing electrical energy to operate said motor means;
switch means for controlling operation of said motor means,
said switch means being mounted in said housing;
a disc means, said disc means mounted on said housing, and
being integral therewith, said disc means being reciprocable
radially and being movable between a position to operate said
switch means into an activating position and into a deactivating
position, said disc being manually depressable to move the switch
means to said activating or deactivating position.
The examiner relies upon the following references as
evidence of obviousness:
Held et al. (Held) 2,917,758 Dec. 22, 1959
Sven 5,247,218 Sep. 21, 1993
Mark Des. 392,465 Mar. 24, 1998
Appellant's claimed invention is directed to a hand held
vibrating instrument of the recited structure.
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Application No. 10/101,732
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Appealed claim 6 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sven in view of Mark and Held.
We have carefully reviewed the respective positions advanced
by appellant and the examiner. In so doing, we find that the
examiner has established a prima facie case of obviousness for
the claimed subject matter that has not been rebutted by
appellant. Accordingly, we will sustain the examiner's rejection
for the reasons set forth in the Answer.
Appellant does not dispute the examiner's factual
determination that Sven discloses a hand held vibrating
instrument comprising all the recited features with the exception
of the configuration of the claimed tool and the claimed disc
means for operating the electrical switch. Indeed, appellant
acknowledges that "[t]he examiner is correct in reciting the
elements found both in Sven and the only claim in the present
matter" (page 1 of Brief, last paragraph). Appellant also does
not contest the examiner's legal conclusion that it would have
been obvious for one of ordinary skill in the art to modify the
instrument of Sven with the tool of Mark and the disc of Held.
Rather, appellant submits the following:
However, a reference to Mark does not appear to be of
record either in the present application nor its
parent. As the last name of the inventor-applicant in
both applications is Mark, perchance the examiner is
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Application No. 10/101,732
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relying on Mark's own teachings either from the parent
or the present continuation-in-part. It is submitted
that neither reference can be relied upon a fortiori
the combination of Sven, Mark and Held it [sic, et] al,
fails and claim 6, here on appeal cannot be held
anticipated.
(Page 2 of Brief, penultimate paragraph). Hence, appellant's
sole argument on appeal is that Mark is not of record. The
examiner responds as follows in the paragraph bridging pages 5
and 6 of the Answer:
The applicant argues that the reference
Des. 392,465 issued to Mark is not a prior art.
The examiner acknowledges that the inventor of
Des. 392,465 is the same inventor of the present
application. However, the date of patent of
Des. 392,465 is March 24th, 1998 while the filing date
of the parent application serial number 09/711,305 is
November 14th, 2000. In addition, it is noted that
Des. 392,465 is listed in PTO-892 and mailed with the
Final Rejection to the applicant on April 10th, 2003.
Therefore, Mark is a record in the application serial
number 10/101,732 filed March 21st, 2002.

Our review of the examiner's Final Rejection reveals the
examiner's citation of Mark as a reference in the Final
Rejection. Since appellant has not refuted the examiner's
reasonable position in a Reply Brief or the like, and has not
presented any substantive argument against the propriety of the
examiner's combination of references which factually supports the
conclusion of obviousness, we must sustain the examiner's
rejection. Appellant has furnished no argument, let alone
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Application No. 10/101,732
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evidence, that he has not received the examiner's citation of the
Mark reference on Form PTO-892.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims 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 )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-0262
Application No. 10/101,732
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Eric P. Schellin
6831 Cloisters Drive
McLean, VA 22101