Ex Parte Pivaroff

Board of Patent Appeals and Interferences

Jun 26, 2003

09473792 (B.P.A.I. Jun. 26, 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written for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAKE W. PIVAROFF
____________
Appeal No. 2002-2305
Application No. 09/473,792
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 9, 10, 11, 13, 15 and 17, the only claims
remaining in this application. Claims 2 through 8, 12, 14, 16
and 18 have been canceled.
As noted on page 1 of the specification, appellant's
invention relates to a deep muscle stimulation device which uses
percussion and mechanical vibrations that reach deep into the
Appeal No. 2002-2305
Application No. 09/473,792
2
muscle tissue, to stimulate proprioceptive functions. Of
importance to appellant is the fact that the deep muscle
stimulation device therein includes a reciprocating hollow head
(44) formed of titanium and containing a quantity of granular
material (50), wherein the granular material is loosely held in
the head and fills only between one-quarter and one-half the
volume of the hollow head. On page 4 of the specification,
appellant indicates that various mixtures of granular materials,
such as diamond, ruby, copper, bloodstone, garnet, malachite or
carbon, produce improved and superior results, with the
particular mixture of 10 grains of diamond, 25 grains of ruby,
200 grains of copper and 100 grains of carbon providing "improved
and extraordinary" results.
Based on appellant's groupings of the claims found on page 6
of the brief, we see independent claim 1 and dependent claim 9 as
being representative. Those claims read as follows:
1. A deep muscle stimulation device comprising, in combination:
a body having an elongated hollow handle with an on/off
switch, an electrical connection and an electrical motor held
herein;
a hollow top housing being connected to the elongated hollow
handle;
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Application No. 09/473,792
3
a cam element having a finger held therein held in the
hollow top housing;
the cam element coupled to the electric motor to translate
rotary motion of a shaft of the electric motor to reciprocating
motion of a titanium hollow head;
the titanium hollow head being attached to a linkage means
coupled to the finger to allow reciprocation of the hollow head a
predetermined amount, in a rapid manner, determined by the speed
of the electrical motor;
the titanium hollow head having a hollow inner chamber with
granular material held therein and filing between 1/4 and ½ of
the volume of the hollow inner chamber; and
the hollow inner chamber having approximately 10 grains of
granular diamonds, 25 grains of granular rubies, 200 grains of
granular copper and 100 grains of carbon therein.
9. The deep muscle stimulation device of claim 1 wherein the
hollow head is comprised of a titanium hollow body and a titanium
cap secured to the hollow body, and the titanium cap is secured
to the linkage means.
The prior art references of record relied upon by the
examiner in rejecting the appealed claim are:
Priest 1,787,211 Dec. 30, 1930
Kamazawa 4,827,914 May 9, 1989
Claims 1, 11, 13, 15 and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kamazawa.
Appeal No. 2002-2305
Application No. 09/473,792
1 Based on the comments found on page 7 of the examiner's
answer, we understand that the 12 pages of test results filed
with Paper No. 8 on October 1, 2001 have also been entered and
considered by the examiner.
4
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kamazawa in view of Priest.
Rather than reiterate the examiner's full commentary
regarding the above-noted rejections and the conflicting
viewpoints advanced by appellant and the examiner regarding those
rejections, we make reference to the examiner's answer (Paper No.
11, mailed May 1, 2002) for the reasoning in support of the
rejections, and to appellant's brief (Paper No. 10, filed
December 10, 2001) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, to the declaration filed May
14, 2001,1 and to the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
have made the determinations which follow.
Appeal No. 2002-2305
Application No. 09/473,792
5
The examiner's reasoning in rejecting claims 1, 11, 13, 15
and 17 under 35 U.S.C. § 103(a) on the basis of the teachings
found in Kamazawa is set forth on pages 4-5 of the answer.
Essentially, the examiner is of the view that Kamazawa teaches a
vibrator or deep muscle stimulation device like that set forth in
the independent claims on appeal, except that the device in
Kamazawa does not include 1) an on/off switch, 2) the use of the
particular mixture of granular material specified in the claims
(i.e., a mixture including granular diamonds and rubies along
with granular copper and carbon), or 3) the specified amounts of
such granular materials totaling 335 grains. According to the
examiner, the feature of providing an on/off switch, a particular
mixture of granular material including diamonds and rubies, and
the feature of choosing particular amounts of the granular
materials totaling 335 grains, are each "considered as an obvious
design choice." The examiner's reasons for such conclusions are
set forth as follows on pages 4 and 5 of the answer:
the feature of choosing a granular material from a
mixture of granular diamonds and rubies along with the
copper and carbon is considered as an obvious design
choice since it appears that Kamazawa's device would
perform equally well with the mixture choosing formed
of granular diamonds, rubies, copper and carbon. In
addition, since appellant fails to provide supports on
how and why the additional diamond and rubies being
able to produce improved and superior results, it is
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the examiner's position that choosing a different
combination of the mixture which including granular
diamonds and rubies is simply a matter of design and
fails to patentably define over the prior art.
Furthermore, the feature of choosing a particular
amount of the mixture such as 335 grains of a mixture
of granular diamonds, rubies, copper and carbon, or
approximately 10 grains of granular diamonds, 25 grains
of granular rubies, 200 grains of granular copper and
100 grains of carbon is considered as an obvious design
choice since it appears that such ratio does not
provide any additional advantage benefit so that the
specific amount of elements is not a criticality.
Kamazawa does not explicitly disclose the on/off
switch. However, the feature of having a switch is
considered as an obvious design choice since it is
necessary and well known in the art.
In rejecting claims 9 and 10 under 35 U.S.C. § 103(a) on the
basis of the collective teachings found in Kamazawa and Priest,
the examiner contends that
Kamazawa's hollow head lacks a titanium cap being
secured to the hollow body. However, Priest teaches
vibrating head having a nut 33 (cap) being coupled to a
body 32 for mounting the body 32 to a drive shaft 28.
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was
made to provide Kamazawa's head with a cap as taught by
Priest, in order to replace the head more easier. In
addition, the feature of making the cap of titanium
material is considered as an obvious design preference
since titanium is a well known material in the art and
the material is not a criticality in appellant's
invention (see page 4, lines 2-3 of appellant's
specification) (answer, page 6).

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Appellant disagrees with the examiner's assertions that the
features noted by the examiner to be missing from Kamazawa are
merely matters of obvious design choice, and contends that the
examiner has engaged in a classic case of hindsight
reconstruction. More particularly, appellant urges that the
examiner has not given any reason or justification for why the
specific choice of materials as claimed by appellant would have
been an obvious design choice. Appellant also argues that since
there is no motivation or suggestion in Kamazawa, alone or when
considered with Priest, to use the specifically claimed materials
in the specifically claimed amounts, the examiner's rejection of
the claims on appeal is improper. As for the rejection of
dependent claim 9, appellant notes that item (33) of Priest,
pointed to by the examiner as being a "cap," is a nut to hold the
applicator (32) to the shaft (31) and is not a cap, and thus
would not have been suggestive of a titanium cap like that
required in claim 9.
After reviewing the applied references (Kamazawa and Priest)
and considering the teachings one of ordinary skill in the art at
the time of appellant's invention would have fairly derived from
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Application No. 09/473,792
8
them, we must agree with appellant's assessment of the rejections
before us on appeal.
Kamazawa discloses a motorized vibrator (e.g., Figs. 3-4)
including, inter alia, a titanium hollow head (casing 132)
mounted for reciprocating movement, in a rapid manner, determined
by the speed of the electric motor (120), said head containing a
powdery or granular material (148) enclosed movably in the
cylindrical space (140) defined therein and with said material
being present in an amount of from about 30 to 80% of the total
volume of the space (140). In column 5, lines 44+, Kamazawa
notes that the powdery or granular material (148) may be formed
of, for example, "a metallic material such as gold, silver,
copper, iron, silicon, germanium and niobium, a material coated
with such a metallic material, activated carbon, or ceramics."
In the portion of the specification bridging columns 5 and 6 of
the patent, Kamazawa indicates that movement of the elastic
cylindrical member (142) and granular material (148) within the
cylindrical space (140) of the hollow head produces heat, and
that a "hot effect" on the body part may thus be obtained without
using a particular heating means such as an electric heater.
Appeal No. 2002-2305
Application No. 09/473,792
2 In light of our determination that the examiner has failed
to make out a prima facie case of obviousness, we find it
unnecessary to comment further on appellant's declaration filed
May 14, 2001 or the 12 pages of test results filed on October 1,
2001.
9
Notably absent from Kamazawa is any mention or suggestion of
granular gem stones, such as diamonds or rubies, or any reason to
consider such precious gems as appropriate for use in Kamazawa's
vibrator. Thus, given Kamazawa's apparent preference for powdery
or granular metallic material and the lack of any teaching or
suggestion of granular precious gems, like the diamonds or rubies
used in appellant's claimed deep muscle stimulation device, we
must agree with appellant that there is no basis (i.e.,
motivation or suggestion) in Kamazawa, alone or when considered
with Priest, to use the specifically claimed materials in the
specifically claimed amounts as defined in appellant's claims on
appeal, and that the examiner's rejection of claims 1, 11, 13, 15
and 17 on appeal under 35 U.S.C. § 103 is improper.2
As for the examiners reasoning in rejecting claims 9 and 10
under 35 U.S.C. § 103(a) on the basis of the collective teachings
of Kamazawa and Priest (answer, pages 6 and 8), we find the
proposition that one of ordinary skill in the art would have
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considered the nut (33) of Priest to be a "cap" and the
examiner's conclusion (answer, page 8) that "a person of ordinary
skill in the art could have appreciated that Kamazawa's head
(applicator) could include a cap in view of the Priest's teaching
so that the head (applicator) could be removed or replaced more
easier," to be totally without support and based entirely on an
improper hindsight reconstruction of the claimed subject matter
clearly devised after having read appellant's specification and
claims.
As is apparent from the foregoing, it is our determination
that the examiner has failed to establish a prima facie case of
obviousness with regard to the subject matter of claims 1, 9, 10,
11, 13, 15 and 17 on appeal. Thus, the rejections posited by the
examiner have not been sustained and the decision of the examiner
to reject those claims under 35 U.S.C. § 103(a) either on the
basis of Kamazawa alone or based on the collective teachings of
Kamazawa and Priest, is reversed.
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Application No. 09/473,792
11
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2002-2305
Application No. 09/473,792
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JAMES G O'NEILL
3151 AIRWAY AVENUE
SUITE K 105
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