Ex Parte Pidcock

Board of Patent Appeals and Interferences

Feb 28, 2012

11274361 (B.P.A.I. Feb. 28, 2012)

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.
11/274,361 11/15/2005 Ralph M. Pidcock PPI-101US 5419
35775 7590 02/29/2012
DESIGN IP, P.C.
5100 W. TILGHMAN STREET
SUITE 205
ALLENTOWN, PA 18104
EXAMINER
DIXON, ANNETTE FREDRICKA
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
02/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RALPH M. PIDCOCK
____________

Appeal 2010-008521
Application 11/274,361
Technology Center 3700
____________

Before JENNIFER D. BAHR, KEN B. BARRETT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008521
Application 11/274,361

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

REJECTIONS
The following rejections are before us for review:
claims 1-5 under 35 U.S.C. § 102(b) as anticipated by Psiharis
(US 2,253,210, issued Aug. 19, 1941);
claims 1, 3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Purvis (US 6,283,930 B1, issued Sep. 4, 2001) and Shevick (US
4,973,183, issued Nov. 27, 1990); and
claim 1 under 35 U.S.C. § 102(b) as anticipated by Purvis.

CLAIMED SUBJECT MATTER
The claimed subject matter pertains to a massaging device support
with a knob like handle 70 or adapted to mate with a threaded handle 14 via
bore 78 and a flexible member 87, 110 mounted to the support by clips.
Spec. 14; see also figs. 17, 19.
Claims 1, 4 and 5 are independent claims.1 Claim 1 is representative
of the subject matter on appeal, and recites2:

1 We note that the versions of claims 1 and 4 listed in the Claims Appendix
in the Appeal Brief, filed Dec. 7, 2009, have minor typographical errors, as
compared to claims 1 and 4 rejected in the Final Office Action. A correct
version of claims 1 and 4 can be seen in the Supplemental Amendment, at
pages 2-3, “Listing of Claims”, filed Dec. 2, 2008.
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1. A two-piece massaging device for permitting a
user to perform external body massage, comprising
in combination
a support having a first end to hold separate
and distinctly shaped interchangeable non-rotating
flexible massaging elements;
a second end of said support adapted to
permit a user to either use the massaging elements
interchangeably as a hand-held device or
removably position the massaging device with
interchangeably massaging elements on a handle;
and
a removable single one piece flexible
massaging element removably positioned on a first
end of said support, said flexible massaging
element disposed in an arc-shaped configuration.

OPINION
Rejection of claims 1-5 as anticipated by Psiharis
The Examiner finds Psiharis’ massaging device and toothbrush 10
corresponds to the massaging element and support, respectively, as recited in
claims 1, 4 and 5. Ans. 3. More specifically, the Examiner finds “flexible
massaging element (30, Figures 4, 5, 6, 8, and 9) disposed in an arc-shaped
configuration (Figure 3).”3 The Appellant contends that Psiharis’ device as
shown in Figure 3 “is in the shape of an arc, it is not disposed in an arc-
shaped configuration on the handle 10.” App. Br. 11. As such it is
necessary to construe the limitation “said flexible massaging element
disposed in an arc-shaped configuration” as recited in claim 1.

2 Claim 1 as recited is taken from the listing of claims filed Dec. 2, 2008.
3 Figure 3 depicts a sectional elevation taken across line 3-3 in Figure 1.
Page 1, col. 1, ll. 24, 25.
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A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1 calls for a
two-piece massaging device comprising in combination a support and “a
removable single one piece flexible massaging element removably
positioned on a first end of said support, said flexible massaging element
disposed in an arc-shaped configuration.” It is notable that the term
“configuration” is defined as “the relative disposition or arrangement of the
parts or elements of a thing.” (DICTIONARY.COM UNABRIDGED,
http://dictionary.reference.com/browse/configuration (last visited Feb. 17,
2012)(“configuration,” def. 1)). As such “said flexible massaging element
disposed in an arc-shaped configuration” is construed as requiring an
arrangement of the support and the single one piece flexible massaging
element such that the flexible massaging element takes the configuration of
an arc when disposed on the end of the support. The Appellant’s Figures 17
and 19 support this construction - the figures depict support device 70 with
the massaging elements 110 and 87, respectively, in an arc-shaped
configuration.
Returning to the Examiner’s finding that Psiharis’ Figure 3 depicts
flexible massaging elements 30 disposed in an arc-shaped configuration, the
most apparent arc-shape in Figure 3 is shown by the shape of groove 24.
However, arrangement of toothbrush 10 and groove 24 of massaging
element 30 is not such that the massaging element itself is disposed on the
support in an arc-shape configuration.
Alternatively, the Examiner finds that Figures 1-9 show contacting
surfaces between the massaging element and the toothbrush disposed in an
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Application 11/274,361

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arc-shaped configuration. Ans. 7. However, the Examiner has not
adequately and clearly explained how Psiharis’s massaging element is found
to be disposed in an arc-shape configuration. More specifically, Figure 3
depicts a cross-section of toothbrush head 12 and massaging element
portions 19, 20, 22. It is not readily apparent from this figure how Psiharis’s
massaging element is disposed in an arc-shaped configuration. Additionally,
the mating portions of the toothbrush and the massaging element in Figures
1, 2, and 4-7 appear consistent with Figure 3. Regarding Psiharis’s
alternative embodiment in Figure 8, the resilient edge portion 46 is disclosed
as either being cemented or integral with the toothbrush head 44. As such,
even if the arrangement of the toothbrush head 44 and the resilient edge
portion 46 is disposed in an arc-shape configuration, the resilient edge
portion 46 is not removable as called for by claim 1. Page 2, col. 1, ll. 57-
62. As for the alternative embodiment of Figure 9, the configuration of the
contacting surface between resilient element 52 and toothbrush head 50 is
not evident from the figure and is otherwise undisclosed. See Page 2, col. 1,
ll. 63-70.
Thus the rejection of claims 1-3 as anticipated by Psiharis is not
sustained. Independent claims 4 and 5 include similar limitations as claim 1.
For the foregoing reasons, the rejection of claims 4 and 5 is also not
sustained.

Rejection of claims 1, 3 and 5 as unpatentable over Purvis and Shevick
Claim 1
Purvis discloses a massage brush 10 having a vibratory brush-head
subassembly 12, having inner and outer body halves 42, 44. Col. 3, ll. 34,
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35, col. 4, ll. 34-36. The Examiner finds that halves 42, 44 correspond to the
first and second end of the support as recited in claim 1. Purvis also
discloses a bristle carrier 18 on the vibratory head subassembly 12. Col. 5,
ll. 29-32, col. 4, ll. 59-63. The Examiner finds that Purvis’ bristle carrier 18,
along with bristles 14, is a removable massaging element. Ans. 5, 8; see col.
3, ll. 40-44. The Examiner finds Purvis discloses all other features of claim
1 except that bristle carrier 18 and bristles 14 are not a single one-piece
construction. See Ans. 4-5, 8.
The Examiner also determines that “it would have been obvious to
one having ordinary skill in the art at the time the invention was made to
make the flexible massaging element of one piece.” Ans. 5 (citing to
Howard v. Detroit Stove Works, 150 U.S. 164 (1893)). The Examiner
further finds “Shevick teaches a single one-piece flexible massaging element
(20) for the purpose of imparting a massaging effect during the application
of the device. (Column 3, Lines 27-40)”; and concludes that it would have
been obvious to one having ordinary skill to modify the device of Purvis
with Shevick’s teaching to provide massaging to a body portion. Id. The
Appellant points out that Shevick’s device dispenses soap (App. Br. 13,
Reply Br. 7), and submits that the Examiner constructs the rejection from the
Appellant’s own teaching. Reply Br. 7. However, the Examiner’s
articulated reasoning for modifying Purvis’ massage elements is based on
rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
The Appellant contends the flexible massaging elements are not
disclosed by the prior art. App. Br. 12. However it appears the Appellant
misapprehended the Examiner’s application of Purvis and Shevick. See
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App. Br. 13. The Examiner does not find that Purvis’ outer-surface ridges,
i.e., ribs 24, 26, correspond to the claimed flexible massaging elements. Id.,
Purvis, col. 4, ll. 9-17 and fig. 1. Rather the Examiner finds that the
combination of Purvis’ bristle carrier 18 and bristles 14, as modified by
Shevick’s unitary construction, corresponds to the flexible massaging
element as recited in claim 1. Ans. 8; see also Shevick, col. 2, ll. 64, 65
(disclosing the elements 30 as massaging fingers). The Appellant also
contends that Shevick’s finger-like projections are not intended to be used
when massaging an aching muscle or a remote location on a user’s body.
App. Br. 13, Reply Br. 6, 7. However massaging aching muscles or a
remote body location is not commensurate with the scope of claim 1. Claim
1 merely requires a massaging device for permitting a user to perform
external body massage. The Examiner’s determination that claim 1 reads on
bristle carrier 18 and bristles 14, as modified by Shevick’s unitary
construction, is adequately supported.
The Appellant contends that Purvis’ device cannot be mounted on a
handle. App. Br. 13. Even assuming that Purvis’s device cannot be
mounted on a handle, the claim provides another alternative. Claim 1 recites
“a second end of said support adapted to permit a user to either [(1)] use the
massaging elements interchangeably as a hand-held device or [(2)]
removably position the massaging device with interchangeably massaging
elements on a handle.” Emphasis added. The term “or” is a disjunctive term
requiring only one of the two limitations to be found in the prior art to be
properly rejected. In other words, since the limitations are alternatives, only
one of the alternatives, not both, is required to be found by the Examiner. In
this case, the Examiner finds Purvis’ outer body half 44 is adapted to permit
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a user to use the massage element 18, 14 as a hand-held device. Ans. 5.
Moreover, the Appellant acknowledges that Purvis’ device can be handheld.
App. Br. 13.
Lastly, the Examiner finds Figure 5 of Purvis depicts bristle carrier 18
disposed in an arc-shaped configuration. Ans. 5. To the extent that the
Appellant contends otherwise (see App. Br. 12), the Appellant’s contention
is unpersuasive.
For the foregoing reasons, the rejection of claim 1 as unpatentable
over Purvis and Shevick is sustained.
Claim 3
In addition to relying on the arguments for claim 1, the Appellant
separately argues for claim 3 that
If Appellant's device were obvious, in view
of the need for and the availability of massage
devices of all shapes and sizes, a device such as
Appellant's would have been on the market by
now. This is true since the Purvis device was
available as early as 2001 and Shevick as early as
1990.
App. Br. 13. However, it is well established that the mere age of the
references is not persuasive of the unobviousness of the combination of their
teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem. In re Wright, 569
F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977). Absent a showing of
long-felt need or the failure of others, the mere passage of time without the
claimed invention is not evidence of nonobviousness. Iron Grip Barbell
Company, Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004).
The Appellant does not provide sufficient evidence to outweigh the evidence
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of obviousness. Thus, the rejection of claim 3 as unpatentable over Purvis
and Shevick is sustained.
Claim 5
In addition to relying on the arguments for claims 1 and 3, the
Appellant argues for claim 5 that the Examiner has used impermissible
hindsight. App. Br. 14. The Appellant’s argument is not persuasive because
it is conclusory and lacks adequate support. Thus the rejection of claim 5 as
unpatentable over Purvis and Shevick is sustained.
Rejection of claim 1 as anticipated by Purvis
Our affirmance of the rejection of claim 1 as unpatentable over Purvis
and Shevick constitutes a general affirmance of the decision of the Examiner
on that claim. See 37 C.F.R. § 41.50(a) (2011). Thus we do not address the
Examiner’s rejection of claim 1 as anticipated by Purvis because claim 1 is
affirmed under a different ground.

DECISION
We AFFIRM the rejections of claims 1, 3 and 5.
We REVERSE the rejections of claims 2 and 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2011). See 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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