Ex Parte Pfenniger et al

Board of Patent Appeals and Interferences

Oct 14, 2009

11369965 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIPP PFENNIGER, ADRIAN PFENNIGER,
and FRANZ FISCHER
____________________

Appeal 2009-002977
Application 11/369,965
Technology Center 3700
____________________

Decided: October 14, 2009
____________________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Philipp Pfenniger et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-19, 22-24, and 30-34. Claims 35 and
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36 have been canceled. An oral hearing was held on September 15, 2009.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention pertains to an electrically operated
personal-care device, such as an electric toothbrush. See Spec. 1, para.
[0002]. Claim 1, reproduced below, with paragraphing added, is
representative of the subject matter on appeal.
1. Electrically operated personal-care device
having a body defining a handle region and a head
region, and having functional components that are
arranged, at least in part, within the body and
comprise an electrically operated functional unit
and an electrical supply device for the functional
unit, the electrical supply device having or being
connectable to an energy store,
wherein the body comprises a first housing
part and a second housing part forming a closure
and connectable to the first housing part,
wherein, in a closed state of the closure, the
first and second housing part enclose an inner
space that is able to house the energy store,
wherein an electrically conductive
connection between the functional unit and the
electrical supply device is interrupted in an open
state of the closure and
wherein the closure comprises an inner first
part to which electrical components including a
push switch are fitted and a sleeve-like second part
including a hard-component element and a flexible
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soft-component switching membrane whereas the
inner first part and the sleeve-like second part are
connected to one another such that the push switch
is located behind the flexible soft-component
switching membrane and is able to switch the
functional unit on or off in the closed state of the
closure.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mochel US 5,261,430 Nov. 16, 1993
Scheiner US 5,572,762 Nov. 12, 1996
Huang US 6,513,947 B1 Feb. 4, 2003
Pfenniger US 2003/0037391 A1 Feb. 27, 2003
Choi US 2004/0168270 A1 Sept. 2, 2004

The following Examiner’s rejections are before us for review:
1. Claims 1-17 and 22-24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pfenniger, Scheiner, and Huang;
2. Claims 1-3, 5-17, and 22-24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mochel, Huang, and Pfenniger;
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mochel, Huang, and Pfenniger;
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mochel and Huang;
5. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pfenniger, Scheiner, Huang, and Choi;
6. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mochel, Huang, and Choi;
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7. Claims 30-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pfenniger, Choi, and Huang;
8. Claims 30-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mochel and Choi;
9. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pfenniger, Scheiner, and Huang; and
10. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mochel, Pfenniger, and Huang.

ISSUE
As to most of the rejections, Appellants argue that the cited references
cannot be combined, that there is no reason to combine the references, and
that the combined references fail to teach certain claimed features. E.g.,
App. Br. 15; Reply Br. 2. Thus, the common issue before us is:
Have Appellants shown that the Examiner erred in concluding that the
claimed subject matter would have been obvious, in light of the cited
references’ teachings, to a person of ordinary skill in the art?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. An ordinary meaning of “integral” includes “[a] complete unit;
a whole.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed. 2007).
2. Pfenniger discloses an electrically operated toothbrush.
Pfenniger, para. [0019]; fig. 2. At the rear end of the toothbrush handle 2 is
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a closure cap 12, which closes off a cavity (hollow space) 13 in the handle.
Id., para [0020]. The closure cap is secured to the handle by means of a
bayonet fastener. Id. The rear hollow space 13a in the handle receives a
battery, which is supported on one end by the closure. Id., para. [0021]. The
toothbrush’s motor is connected to one battery terminal by means of
electrical connecting line 19 via the closure cap 12. Id. A further electrical
connecting line 20 connects the other battery terminal to an on-off switch 21.
Id. The switch 21 is located on the handle. Id., para. [0021], fig. 2.
3. Scheiner teaches a toothbrush with a switch device 30 that
includes a push-button 32, and that is located at the end of the toothbrush’s
handle. Scheiner, col. 3, ll. 58-61, fig. 1. Scheiner discloses that the end
cover 36 may be formed using a compliant sheet material such as a
membrane 38 for covering the push-button. Id., col. 4, ll. 31-35.
4. Huang discloses a flashlight having a head assembly and a rear
assembly. Huang, col. 2, ll. 60-62. The rear assembly comprises a battery
compartment 2, a hollow rear barrel 4, a rubber push button 6, an abutment
cylinder 8, a conductive metal block 10, a first spring 12, an engagement
cylinder 14 (which is formed of a hard plastic material), an insulator washer
16, a pin member 18, and a second spring 20. Id., col. 2, ll. 62-67; col. 3,
ll. 25-26; fig. 5. These rear assembly components, other than the battery
compartment itself, together serve as a closure for the end of the battery
compartment. Huang, col. 2, l. 67 - col. 3, l. 7; fig. 5. Rear barrel 4 has
internal threads that engage external threads on the battery compartment 2.
Id., col. 3, ll. 1-7. The conductive metal block 10, pin member 18, and
spring 12 comprise an on-off push switch and are fitted in the abutment
cylinder 8 and engagement cylinder 14, which in turn are contained within
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the sleeve-like hollow rear barrel 4. Id., col. 2, l. 61- col. 3, l. 4; fig. 5. The
switch is located behind the rubber push button 6. Id., fig. 5. The push
button 6 is clamped between hollow rear barrel 4 and abutment cylinder 8,
thus forming a water-resistant switch. Id., col. 4, ll. 4-10; fig. 5.
5. Mochel discloses a battery powered, hand held device for oral
hygiene such as flossing, brushing and gum stimulation, and for personal-
care such as shaving, massaging and manicuring. Mochel, col. 1, ll. 7-10;
col. 4, ll. 1-2; fig. 1. At the end of Mochel’s handle is a removable end cap 5
with switch lever 6 of an electrical switch. Id., col. 3, ll. 9-12; fig.1. The
end cap serves as a closure for the battery compartment. See id., figs. 1, 2.
6. Choi discloses an electrically operated toothbrush having three
switches (SW1, SW2, SW3) on the side portion of the case 10 (the handle).
Choi, paras. [0002], [0041]; fig. 2. Speed control switch SW2 controls the
rotation speed of the toothbrush heads. Id., para. [0041].

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103). In KSR, the Supreme Court emphasized
“the need for caution in granting a patent based on the combination of
elements found in the prior art.” Id. at 415.
A reference is considered to be in an analogous art where it “is either
in the field of the applicant’s endeavor or is reasonably pertinent to the
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problem with which the inventor was concerned[.]” In re Kahn, 441 F.3d
977, 986-87 (Fed. Cir. 2006) (citation omitted). “References are selected as
being reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.” Id. at 987(citation omitted).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result 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).

ANALYSIS
Rejection No. 1: The rejection of claims 1-17 and 22-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Pfenniger, Scheiner, and Huang
Appellants argue independent claims 1 and 23 as a group, and offer
additional arguments for dependent claims 2, 4, 10, 15, and 24. App. Br. 14-
19. As for the remaining dependent claims subject to this rejection (claims
3, 5-9, 11-14, 16, 17, and 22), Appellants do not present separate arguments
for patentability but merely assert that they are allowable as depending from
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claim 1. See App. Br. 17. Thus, Appellants argue claims 1, 3, 5-9, 11-14,
16, 17, 22, and 23 as a group, and we select claim 1 as the representative
claim. 37 C.F.R. § 41.37(c)(1)(vii) (2009). We consider separately the
additional arguments pertaining to dependent claims 2, 4, 10, 15, and 24.
Independent Claims 1 and 23
Claim 1 recites an electrically operated personal-care device with a
closure on the end, where the closure comprises an inner first part containing
a push switch, a sleeve-like second part and a flexible membrane behind
which is the switch. Pfenniger discloses an electrically operated toothbrush
with a closure on the end. Fact 2. Pfenniger has an on-off switch, but the
switch is not located in the closure. See id.; Ans. 4. The Examiner points to
Scheiner for the teaching of a toothbrush with a switch located at the end of
the handle. Ans. 4; see Fact 3. Huang teaches a closure on the end of
flashlight having a switch under a rubber push button. Fact 4. Huang’s
closure has an inner first part (abutment cylinder 8 and engagement cylinder
14) fitted with switch components, and a sleeve-like second part (hollow
rear barrel 4). Id. It would have been prima facie obvious to move
Pfenniger’s switch to the toothbrush’s end, as suggested by Scheiner, and to
modify Pfenniger’s closure to have the recited inner and sleeve-like parts
along with a flexible membrane over a push switch as suggested by Huang.
Because the references’ suggestions provide a rational reason for one to
modify Pfenniger so as to arrive at the claimed subject matter, we are not
persuaded by Appellants’ argument (App. Br. 17; Reply Br. 2) that the
rejection is based on impermissible hindsight.
Appellants argue that Huang is non-analogous art because the
disclosed device is a flashlight rather than a personal-care device or a
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toothbrush. App. Br. 15. However, both Huang’s flashlight and Appellants’
claimed invention are hand held, battery operated devices. Further, one of
ordinary skill would consider Huang reasonably pertinent to the problem
addressed by Appellants’ end closure having a push switch under a flexible
membrane. Thus, Huang is analogous art.
Appellants similarly argue that “one of ordinary skill in the art would
not have looked to the non-analogous art of Huang” because Huang utilizes a
momentary push button which would be awkward for a personal-care device.
App. Br. 17; see also Reply Br. 5. As the Examiner notes, the language of
claim 1 does not specify the type of switch, and thus does not exclude a
momentary switch. Ans. 19. Further, one of ordinary skill would have
recognized that the switch could be a non-momentary one if the design needs
so dictated. Cf. KSR Int’l Co., 550 U.S. at 421 (“When there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp.”) Thus, we do not
agree with Appellants’ assertion, Reply Br. 5, that “one of ordinary skill in the
art would not have looked to the teachings of Huang . . .” because of its use of
a momentary switch.”
Appellants argue that it is not possible to combine the teachings of
Pfenniger and Huang because they “have incompatible differences.” App.
Br. 15. Appellants assert that Huang’s flashlight’s metal handle is a
conductor in the switching circuit, that such a necessary metal handle would
be undesirable for personal-care devices, and that Huang’s switch would not
work with Pfenniger’s device having an insulating plastic cover and utilizing
wires and bayonet connections to complete the circuit. App. Br. 15-16;
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Reply 3-4. However, Appellants arguments incorrectly focus on whether the
embodiments of the two references could be physically combined, rather
than what the combined teachings of those references would have suggested
to one of ordinary skill. Keller, 642 F.2d at 425. The pertinent teaching of
Huang is a closure having an inner first part, a sleeve-like second part and a
push switch under a flexible membrane. The references’ combined
teachings yield a device with a modified closure, not a toothbrush with a
flashlight end screwed onto the handle as Appellants suggest. Appellants
have not provided any persuasive evidence or argument sufficient to show
that the proposed modification of Pfenniger’s device would have been
beyond the level of ordinary skill in the art. Neither have Appellants
provided any persuasive evidence or argument sufficient to show that the
proposed modification would have been more than a predictable use of the
prior art elements according to their established functions. We cannot
accept Appellants’ implied premise that the ordinary artisan would be at a
loss as to how to complete the circuit in the modified device.
Appellants also argue that Huang’s configuration, with the membrane
clamped between two metal parts, “is complicated and does not ensure water
tightness.” App. Br. 17. This argument is not commensurate with the
language of claim 1, which does not exclude “complicated” structures or
require water tightness. Cf. App. Br. 17 (relying on the language of
dependent claims 2 and 24 as support of this argument).
Claim 1 also recites that “an electrically conductive connection
between the functional unit and the electrical supply device is interrupted in
an open state of the closure.” Appellants appear to argue that the Examiner
has not established why or how one of ordinary skill would modify
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Pfenniger’s device to perform this function. Reply Br. 2. In the unmodified
Pfenniger device, the motor is electrically connected to the battery via the
closure, Fact 2, therefore the removal of the closure would break the circuit.
The modified closure would maintain this functionality. As such,
Appellants’ argument does not persuade us of error.
Appellants have not shown error in the Examiner’s rejection of claim
1 as obvious over Pfenniger, Scheiner, and Huang. We affirm the rejection
of claim 1 and of claims 3, 5-9, 11-14, 16, 17, 22, and 23, which fall with
claim 1.
Dependent Claim 2
Claim 2 recites that “the switching membrane is integrally molded
with the closure.” Appellants argue that Huang’s membrane is clamped
between metal rather than being integrally molded with the closure. App.
Br. 17. The Examiner construes the claim “to mean that the switching
member and the closure are contacting thus forming an integral connection
between the two.” Ans. 20.
The Specification describes the use of materials having an affinity for
each other such that the membrane is connected to the hard, structural
component during an injection molding process. Spec. 4, para. [0015]. We
interpret “integrally molded,” in light of the Specification and the ordinary
meaning of “integral,” Fact 1, as requiring the membrane to be adhered to
the closure, as if the parts were formed as a complete unit by a molding
process. That is, the claim requires more than mere contact after assembly.
Huang’s closure, in which the membrane is clamped between metal parts,
does not have the structural characteristics of two components molded
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together. As such, we do not sustain the rejection of claim 2 as obvious over
Pfenniger, Scheiner, and Huang.
Dependent Claim 4
Claim 4 recites that “the closure is attached by a bayonet coupling.”
Appellants argue that Huang’s closure is screwed on, and there is no
rationale provided as to how Huang’s switch can be fitted with Pfenniger’s
bayonet coupling and still perform the switching function. App. Br. 18. The
Examiner concluded that it would be obvious to use the known bayonet
connection rather than Huang’s threaded connection because they are
equivalents. Ans. 21. The Examiner found that using a bayonet coupling
will still provide an electrical connection between the closure and the
handle. Id.
As discussed above, the proposed combination of references results in
a device with the modified closure of Pfenniger, not a toothbrush having a
flashlight end screwed to the handle. Pfenniger’s unmodified closure
utilizes a bayonet coupling (which apparently serves to electrically connect
the battery to the motor). See Fact 2. Thus, the combined references teach
Appellants’ device having a closure attached by a bayonet coupling.
Appellants have not shown error in the Examiner’s rejection of claim 4.
Dependent Claim 10
Claim 10 recites that the cylindrical first part and sleeve-like second
part are connected in a non-releasable manner. Appellants argue that
Huang’s components have a threaded connection, and thus are releasable.
App. Br. 19. The Examiner states:
In response, the parts are only releasable if the user actually
releases them. If the user does not unscrew the parts from each
other, then they are considered non-releasable.
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Ans. 21. Appellants are correct that “non-releasable” refers to a connection
that lacks the capability of being released, Reply Br. 9. See Spec. 25, para.
[0103] (“The two closure parts 132, 134 are then preferably permanently
connected to one another, for example by snap-action, welding or gluing.”).
Huang’s threaded connection is capable of being released. Thus, we cannot
sustain the rejection of claim 10.
Dependent Claim 15
Claim 15 requires a contact element in the closure (in accordance with
parent claim 13) having a contact strip between the switch and the functional
unit (e.g., the motor), and a spring as the conducting connection between the
switch and the energy store. The Examiner’s findings regarding this
rejection are unclear. In the context of other rejections, the Examiner found
that Huang’s element 14 is a contact strip. Ans. 15, 16. Appellants point out
that element 14 is plastic, and therefore non-conductive. App. Br. 18; see
Fact 4. The Examiner responds that “the contact strip of Pfenniger is
electrically conductive and could be used with the switch of Huang . . . .”
Ans. 21. However, it is not clear as to what Pfenniger element has been
found to be the recited contact strip, and the Examiner has not adequately
articulated how the references would be modified so as to render obvious the
claimed contact strip and spring configuration. As such, we cannot sustain
the rejection of claim 15.
Dependent Claim 24
Claim 24 recites that closure’s sleeve-like second part “is
manufactured in a multi-component injection molding process, wherein the
hard and the soft component form a bond during the injection molding
process.” Appellants argue that Huang’s hard and soft components are not
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injection molded and thus do not form a tight bond. Reply Br. 7. Appellants
note that Huang’s rubber membrane is clamped between two metal parts.
App Br 18; see Fact 4. The Examiner construed the limitation as a product-
by-process limitation, stated that “the product itself does not depend on the
process for making it,” and found that Huang’s product is essentially similar
to that of the claimed invention. Ans. 20. Appellants respond by asserting
that the injection molding process imparts a distinguishing structural
characteristic in that it “can achieve an affinity between soft and hard
components that achieves a connection.” Reply Br. 7 (citing Spec. para.
[0014], but presumably referring to para. [0015]).
Claim 24, which, as Appellants and the Examiner seem to agree, is
written in product-by-process form, and requires a structure in which the
hard and soft components are bonded together as if manufactured in a multi-
component injection molding process. Huang’s device, where the rubber
push button is clamped between two metal components, lacks the required
characteristic. Thus, we do not agree with the Examiner’s finding that
Huang’s structure is substantially similar to the claimed structure, and we do
not sustain the rejection of claim 24.

Rejection No. 2: The rejection of claims 1-3, 5-17 and 22-24, under 35
U.S.C. § 103(a) as being unpatentable over Mochel, Huang, and Pfenniger
Appellants argue the rejected claims as a group. App. Br. 19-20. We
select claim 1 as the representative claim, and claims 2, 3, 5-17 and 22-24
stand or fall with claim 1.
The basis of this rejection is similar to the previous rejection, except
that the primary reference is now Mochel. Mochel discloses a battery
powered personal-care device with a slide switch on an end closure. Fact 5.
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The Examiner again relies on Huang for the teaching of the recited inner
first and sleeve-like second closure parts and the membrane covered push
switch. Ans. 7-8.
Appellants likewise again argue that Huang’s flashlight disclosure is
non-analogous art, and assert that, for this reason, the rejection lacks
articulated reasoning as to why one would look to Huang and incorporate its
teachings into Mochel’s personal-care device. App. Br. 20. The Examiner
reasoned that:
It would have been obvious to one of ordinary skill in the art to
modify the switch of Mochel with a push button switch as
taught by Huang since substitution of one known element for
another would have yielded predictable results to one of
ordinary skill in the art at the time of the invention.
Ans. 8. The Examiner also found that “both [Mochel’s and Huang’s]
closures and switches perform the same function of turning a device on or
off and sealing the rear opening in the housing.” Id.
As we indicated above, both Huang’s flashlight and Appellants’
claimed invention are hand held, battery operated devices, and one of
ordinary skill would consider Huang reasonably pertinent to the problem
addressed by Appellants’ end closure having a push switch under a flexible
membrane. Thus, we again determine that Huang is analogous art. We also
determine that the Examiner has articulated a rational reason as to why one
would combine Mochel and Huang.
Appellants additionally reiterate two arguments previously made in
the context of the first rejection – the momentary switch argument and the
argument that the resulting combination would have to have Huang’s
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electrically conductive handle to complete the circuit. App. Br. 20. For the
same reasons discussed above, we do not find those arguments persuasive.
Appellants have not shown error in the Examiner’s rejection of claims
1-3, 5-17, and 22-24 as obvious over Mochel, Huang, and Pfenniger.

Rejection No. 3: The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Mochel, Huang, and Pfenniger
Claim 4 recites that the closure is attached by a bayonet coupling.
Although Appellants recognize that Pfenniger discloses such a closure, they
assert that the Examiner’s rejection “fails to provide an articulated reasoning
as to how the Huang switch could be integrated into such a closure and
operate as an on and off switch.” App. Br. 20. In the Reply Brief,
Appellants simply refer back to the unpersuasive arguments made in the
context of the first rejection. See Reply Br. 10.
The Examiner reasoned that it would have been obvious to modify
Mochel in view of Huang and Pfenniger because Huang’s threaded
connection and Pfenniger’s bayonet connection are known in the art as
equivalent connection means, and that using the bayonet connection will
provide electrical coupling when the closure is connected to the handle.
Ans. 23. Appellants have not persuaded us that the Examiner’s reasoning is
not rational, or that the rejection is otherwise deficient. Accordingly, we
affirm the rejection of claim 4 as obvious over Mochel, Huang, and
Pfenniger.

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Rejection No. 4: The rejection of claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Mochel and Huang
Appellants’ sole argument in contesting this rejection is that “[c]laim
12 is allowable for its dependence on an allowable base claim and for the
additional features recited therein.” App. Br. 20. Claim 12 depends from
claim 11 which depends from claim 9 which depends from independent
claim 1. For the reasons discussed above, Appellants have not shown error
in the rejection of those claims. Further, Appellants have not explained with
specificity as to why the additional features recited in claim 12 merit
reversal of the rejection. Thus, Appellants have not shown error in the
rejection of claim 12 as obvious over Mochel and Huang.

Rejection No. 5: The rejection of claims 18 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Pfenniger, Scheiner, Huang, and Choi
Claim 18 depends from claim 1 and requires “a second switch that
acts as a primary on/off-switching element for the device, wherein the push
switch is able to activate an alternative operating state.” Claim 19 depends
from claim 18 and further requires that “the alternative operating state is a
reduction of vibrating motion achieved by reduction of an operating voltage
applied to the vibration element.”
Choi discloses an electrically operated toothbrush having multiple
switches on the side of the handle, where one of the switches controls the
rotation speed of the toothbrush heads. Fact 6. The Examiner concluded
that it would have been obvious, based on the teachings of Choi, for the
modified Pfenniger device (as discussed above) to have two switches
including a speed control switch on the end closure. Ans. 10.
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Appellants argue “[t]here is no teaching of a switch provided on a
closure or an appreciation that because the closure is removable, the
alternative state of operation can be changed through replacement of the
closure.” App. Br. 21. Neither argument is persuasive. As already
discussed, Huang teaches a switch on a closure, see Fact 4, and the modified
Pfenniger device would also have a switch on the closure. Appellants’
argument concerning changing the alternative state of operation through
replacement of the closure is not commensurate with the language of either
claim 18 or 19, which do not require such functionality.
Appellants also argue that “there is no express teaching of a reduction
in voltage as recited in claim 19.” App. Br. 21. The Examiner found that
Choi’s speed control switch inherently reduces the speed by reducing the
voltage. Ans. 23. We construe claim 19, consistent with Appellants’
argument and the Examiner’s apparent understanding, to require an
electrical component that produces the recited alternative operating state of
reduced vibration by reducing the operating voltage. Cf. Spec., paras.
[0100], [0101] (explaining that the switch diverts electricity to electrical
component 124 which produces an alternative operating state). We agree
with Appellants’ assertion, Reply Br. 10, that there are ways to control speed
other than by changing the voltage. Therefore, operation of Choi’s switch
does not necessarily have a component that reduces the voltage, and the
Examiner has failed to make a prima facie showing of inherency. See
Robertson, 169 F.3d at 745.
We affirm the rejection of claim 18, but reverse the rejection of
claim 19.

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Rejection No. 6: The rejection of claims 18 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Mochel, Huang, and Choi
Appellants reiterate the same arguments as those made for the
previous rejection. App. Br. 21-22; Reply Br. 11. For the same reasons
discussed in the context of Rejection No. 5, we again conclude that
Appellants have not shown error in the rejection of claim 18, but have
shown error in the rejection of claim 19.

Rejection No. 7: The rejection of claims 30-32 under 35 U.S.C. § 103(a) as
being unpatentable over Pfenniger, Choi, and Huang
Independent claim 30
Claim 30 recites a primary on/off switch in the first housing part (e.g.,
the handle) and a secondary switch in the second housing part (the closure)
to activate the alternative operating state. The Examiner found that
Pfenniger teaches a toothbrush having a switch on the handle, that Choi
teaches a plurality of switches on a toothbrush handle, and that Huang
teaches a switch on a closure. Ans. 11-12; Facts 2, 4, 5. The Examiner
concluded that the combination of these teachings renders the claimed
subject matter obvious. Ans. 12.
We are not persuaded by Appellants’ argument, App. Br. 22, that
Choi’s teaching of switches located together on the handle would lead one
only to only modify Pfenniger by placing an additional switch on the handle
rather than the closure as claimed. Huang provides the suggestion to place a
switch on the closure, and Appellants do not direct our attention to any
disclosure in Choi that would discourage this modification of Pfenniger’s
device. Similarly, we are not persuaded by the implied argument, Reply Br.
11-12, that Huang’s teaching of a momentary on/off switch and Pfenniger’s
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teaching of a switch on the handle discourage one from modifying Pfenniger
to have a second switch on the closure. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton,” and, “in many cases, . . .
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” KSR Int’l Co., 550 U.S. at 420-21.
Appellants argue that “the applied references fail to teach or provide a
reason to provide first and second switches as claimed . . . .” Reply Br. 11.
This argument is not persuasive because the references do provide a
suggestion for the proposed modification, and because the Supreme Court
has rejected the rigid requirement of a teaching, suggestion or motivation.
KSR Int’l Co., 550 U.S. at 418-19.
Appellants have not shown error in this rejection of claim 30.
Dependent claim 31
Claim 31 recites that “the alternative operating state is activated by
changing of a voltage.” Similar to their arguments made in the context of
claim 19, Appellants argue that the references do not disclose achieving the
alternative operating state by changing the voltage. App. Br. 22; Reply Br.
12. We interpret claim 31, consistent with Appellants’ argument, as
requiring a component that activates the alternative operating state by
changing the voltage. The Examiner’s finding that Choi teaches a speed
reducing switch, Ans. 25, is insufficient to show the inherency of such a
voltage changing component. Thus, we are constrained to reverse the
rejection of claim 31, and of claim 32 which depends from claim 31.

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Rejection No. 8: The rejection of claims 30-32 under 35 U.S.C. § 103(a) as
being unpatentable over Mochel and Choi
Appellants argue that there is no reason to combine Mochel’s teaching
of a personal-care device having a switch at the closure and Choi’s teaching
of multiple switches on the handle so as to have a switch on the closure and
another switch on the handle as recited in claim 30. App. Br. 23. However,
to place Choi’s speed control switch on Mochel’s closure would have been
prima facie obvious at least as the combination of prior art elements
according to known methods to yield predictable results. See KSR Int’l Co.,
550 U.S. at 416. Appellants have not persuaded us of error in the
Examiner’s conclusion of obviousness of claim 30.
For the same reasons set forth in the context of the previous rejection,
we reverse the rejection of claims 31 and 32.

Rejection No. 9: The rejection of claims 33 and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Pfenniger, Scheiner, and Huang
Claim 33, similar to the previously discussed claim 15, recites a
closure having two electrical contacts – a contact strip and a spring element
that passes through a recess in the contact strip. The Examiner again first
identified Huang’s non-conductive, plastic engagement cylinder 14 as the
recited contact strip and pin member 18 as the spring element passing
through the contact strip. Ans. 15. The Examiner then refers to the “contact
strip of Pfenniger,” maintains that Huang’s pin member 18 is a spring, and
concludes that one of ordinary skill would have recognized the
modifications necessary to make the Huang switch and the Pfenniger closure
operable. Ans. 26. However, it is not enough to show that the combination
would be operable because the claim recites a specific positional relationship
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between the contact strip and the spring element. We determine that the
Examiner has not adequately articulated a reasonable rationale underlying
the conclusion that Appellants’ claimed closure having a spring element
passing through a contact strip would have been obvious. As such, we are
constrained to reverse the rejection of claim 33, and of its dependent
claim 34.

Rejection No. 10: The rejection of claims 33 and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Mochel, Pfenniger, and Huang
As with the previous rejection, the Examiner found Huang’s
engagement cylinder 14 and pin member 18 to correspond to the recited
contact strip and the spring element, respectively, of claim 33. Ans. 16. The
engagement cylinder is formed of a hard plastic material, Fact 4, and thus
would not be considered by one of ordinary skill to be the recited electrically
conductive contact strip. The Examiner has not adequately articulated how
the references would be modified so as to render obvious the claimed
configuration in which the spring element passes through the contact strip.
As such, we cannot sustain the rejection of claim 33 or of claim 34, which
depends therefrom.

CONCLUSIONS
Rejection No. 1: Appellants have not shown that the Examiner erred
in concluding that claims 1, 3-9, 11-14, 16, 17, 22, and 23 would have been
obvious over Pfenniger, Scheiner, and Huang. However, Appellants have
shown that the Examiner erred in rejecting claims 2, 10, 15, and 24 as
obvious over Pfenniger, Scheiner, and Huang.
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Rejection No. 2: Appellants have not shown that the Examiner erred
in concluding that claims 1-3, 5-17 and 22-24 would have been obvious over
Mochel, Huang, and Pfenniger.
Rejection No. 3: Appellants have not shown that the Examiner erred
in concluding that claim 4 would have been obvious over Mochel, Huang,
and Pfenniger.
Rejection No. 4: Appellants have not shown that the Examiner erred
in concluding that claim 12 would have been obvious over Mochel and
Huang.
Rejection No. 5: Appellants have not shown that the Examiner erred
in concluding that claim 18 would have been obvious over Pfenniger,
Scheiner, Huang, and Choi. However, Appellants have shown that the
Examiner erred in rejecting claim 19 as obvious over Pfenniger, Scheiner,
Huang, and Choi.
Rejection No. 6: Appellants have not shown that the Examiner erred
in concluding that claim 18 would have been obvious over Mochel, Huang,
and Choi. However, Appellants have shown that the Examiner erred in
rejecting claim 19 as obvious over Mochel, Huang, and Choi.
Rejection No. 7: Appellants have not shown that the Examiner erred
in concluding that claim 30 would have been obvious over Pfenniger, Choi,
and Huang. However, Appellants have shown that the Examiner erred in
rejecting claims 31 and 32 as obvious over Pfenniger, Choi, and Huang.
Rejection No. 8: Appellants have not shown that the Examiner erred
in concluding that claim 30 would have been obvious over Mochel and Choi.
However, Appellants have shown that the Examiner erred in rejecting claims
31 and 32 as obvious over Mochel and Choi.
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Rejection No. 9: Appellants have shown that the Examiner erred in
rejecting claims 33 and 34 as obvious over Pfenniger, Scheiner, and Huang.
Rejection No. 10: Appellants have shown that the Examiner erred in
rejecting claims 33 and 34 as obvious over Mochel, Pfenniger, and Huang.

DECISION
The decision of the Examiner to reject claims 19 and 31-34 is
reversed. The decision of the Examiner to reject claims 1-18, 22-24, and 30
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) (2007).

AFFIRMED-IN-PART

Klh

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