Ex Parte Muller

Board of Patent Appeals and Interferences

Oct 10, 2003

09420306 (B.P.A.I. Oct. 10, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte INGO MULLER
____________
Appeal No. 2003-1575
Application No. 09/420,306
____________
ON BRIEF
____________
Before McQUADE, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2 to 4,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2003-1575
Application No. 09/420,306
Page 2
BACKGROUND
The appellant's invention relates to a massaging apparatus for massaging body
areas of a person (specification, p. 1). A copy of the dependent claims under appeal is
set forth in the appendix to the appellant's brief. Claim 4, the only independent claim on
appeal, reads as follows:
A massaging apparatus, movable over the skin of a person in a given
operating direction, said apparatus comprising;
a suction chamber enclosing a suction space, said chamber comprising a
first and a second chamber wall, spaced from each other, and extending
substantially transverse to the operating direction and a third and a fourth
chamber wall, spaced from each other, extending substantially parallel to the
operating direction, and connected to the first and second chamber wall, said
suction chamber being open in an area for facing the skin,
a pump, for generating a partial vacuum inside the suction chamber for
forming a skin fold and drawing said skin fold into the suction chamber when the
massaging apparatus is disposed on the skin of a person, said pump
communicating with the suction chamber via an air-transfer duct,
two rollers, each having a circumferential surface for contacting the skin of
a person, each rotatable about a pair of roller axes extending transversely to the
operating direction,
a motor and drive transmission for driving the rollers in a same direction of
rotation, speed vectors of circumferential areas of the circumferential surfaces
which face said skin oriented opposite to the operating direction, one of the
rollers, disposed in the front of said apparatus, as viewed in the operating
direction, arranged inside the suction chamber, and the other of the rollers,
disposed in the rear of the apparatus, as viewed in the operating direction,
arranged outside of the suction chamber wherein;
the circumferential surface of the roller, disposed in the front of the
apparatus, as viewed in the operating direction, consists of as material having a
friction value higher than that of the material of the circumferential surface of the
roller, disposed in the rear of the apparatus, when viewed in the operating
direction.
Appeal No. 2003-1575
Application No. 09/420,306
Page 3
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Bleeker et al. (Bleeker) 6,017,320 Jan. 25, 2000
Bergmann GB 2558 June 28, 1890
Claims 2 to 4 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Bleeker in view of Bergmann.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the final
rejection (Paper No. 10, mailed June 19, 2001) and the answer (Paper No. 17, mailed
September 17, 2002) for the examiner's complete reasoning in support of the rejection,
and to the brief (Paper No. 16, filed June 18, 2002) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
Appeal No. 2003-1575
Application No. 09/420,306
Page 4
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 2 to 4 under 35 U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal.
Bleeker's invention relates to a massaging apparatus comprising two rollers
which are each rotatable about one of two mutually parallel spaced-apart roller
spindles, these rollers are to be placed onto the skin of a person with their
circumferential surfaces and are rotationally drivable in a given direction of rotation
when the massaging apparatus with its two rollers is moved over the skin of a person in
Appeal No. 2003-1575
Application No. 09/420,306
Page 5
a given operating direction which extends transversely to the roller spindles. The
massaging apparatus further comprises a suction chamber in the area of the two
rollers, this suction chamber enclosing a suction space and comprising two transverse
walls, which extend substantially perpendicularly to the roller spindles, and two
longitudinal walls, which extend parallel to the roller spindles, are connected to the two
transverse walls, and each has a free end adjacent the circumferential surface of a
roller, this suction chamber being open in its area which faces a person's skin when
the rollers are applied to the skin of a person and is connected to a pump for the
transfer of air via an air-transfer connection, the pump--with the rollers applied to
the skin of a person--being capable of generating a partial vacuum in the suction
chamber in order to form a skin fold which is drawn into the suction chamber.
Figures 1-6 show a massaging apparatus in accordance with a first embodiment
of Bleeker's invention wherein both the forward roller 30 and the rearward roller 31 are
outside of the suction chamber 56. Figure 9 is a highly diagrammatic sectional view of
a massaging apparatus in accordance with another embodiment of Bleeker's invention
wherein the forward roller 30 is within the suction chamber 56 and the rearward roller
31 is outside the suction chamber 56. Figure 10 shows a highly diagrammatic sectional
view of a massaging apparatus in accordance with a further embodiment of Bleeker's
Appeal No. 2003-1575
Application No. 09/420,306
Page 6
invention wherein the forward roller 30 is outside the suction chamber 56 and the
rearward roller 31 is within the suction chamber 56.
Bleeker teaches (column 7, lines 52-65) that
the forward roller 30, viewed in the given operating direction 29, is wholly made
of a comparatively hard material, the circumferential surface 37 of the roller 30
advantageously having a surface roughness ranging between 0 µm and 2 µm.
The interior of the rearward roller 31, viewed in the operating direction 29, is also
made of a comparatively hard material but is surrounded by a shell of a
comparatively soft material, the circumferential surface 38 of the rearward roller
31 having a higher surface roughness than the circumferential surface 37 of the
forward roller 30. The surface roughness of the circumferential surface 38 of the
rearward roller 31 may range approximately between 3 µm and 6 µm.
Bergmann discloses an apparatus for shampooing, which may be used for this
purpose alone, or for simultaneously shampooing, beating and rubbing the body. The
apparatus as shown in Figure 9 includes a knobbed roll a, a smooth roll c and a handle
g. Bergmann teaches (page 2, lines 41-44) that (1) the knobbed roll a consists of a
metal core provided with a knobbed covering of india rubber or other suitable material;
and (2) the smooth roll c is made of metal covered with wash leather or other similar
soft material.
In the rejection of claim 4 in the answer (pp. 3-4), the examiner (1) ascertained
that Bleeker differs from the present invention in that Bleeker's rearward roller 31 has a
Appeal No. 2003-1575
Application No. 09/420,306
Page 7
1 Thus, in the rejection of independent claim 4, the examiner does not rely on the teachings of
Bergmann.
2 We have also reviewed the reference to Bergmann but find nothing therein which makes up for
the deficiency of Bleeker discussed above.
higher roughness than the forward roller 30 rather than the forward roller having a
higher roughness than the rearward roller as recited in claim 4; and (2) concluded that
reversal of Bleeker's rollers such that having the forward roller 30 with higher roughness
than the rearward roller would not have modified the operation of Bleeker's device and
that if one of ordinary skill in the art desired to change the massaging effect, one would
have looked to Bleeker's device and seen that reversing the location of Bleeker's
rollers, would be able to provide different massaging effects.1
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree. In that regard, the teachings of Bleeker do not in any way
teach or suggest that Bleeker's forward roller 30 in the embodiment of Figure 9 wherein
the forward roller 30 is within the suction chamber 56 have a higher roughness than the
rearward roller 31. In fact, Bleeker teaches the exact opposite. To supply this omission
in the teachings of Bleeker, the examiner made the above-noted determination that this
difference would have been obvious to an artisan. However, this determination has not
been supported by any evidence that would have led an artisan to arrive at the claimed
invention. Thus, the examiner has not presented a prima facie case of obviousness.2
Appeal No. 2003-1575
Application No. 09/420,306
Page 8
In our view, the only suggestion for modifying Bleeker in the manner proposed by
the examiner to arrive at the claimed invention stems from hindsight knowledge derived
from the appellant's own disclosure. The use of such hindsight knowledge to support
an obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the examiner to reject
independent claim 4, and claims 2 and 3 dependent thereon, under 35 U.S.C. § 103 is
reversed.
Appeal No. 2003-1575
Application No. 09/420,306
Page 9
CONCLUSION
To summarize, the decision of the examiner to reject claims 2 to 4 under
35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2003-1575
Application No. 09/420,306
Page 10
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
JVN/jg