Ex Parte Pollack

Board of Patent Appeals and Interferences

Mar 24, 2004

09939993 (B.P.A.I. Mar. 24, 2004)

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for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHIRLEY POLLACK
____________
Appeal No. 2004-0160
Application No. 09/939,993
____________
HEARD: March 4, 2004
____________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Shirley Pollack appeals from the examiner’s final rejection of
claims 1-7 and 13-15. Claims 8-12, the only other claims pending
in the application, have been withdrawn from consideration pursuant
to 37 CFR § 1.142(b) as not being readable on the elected
invention.

Appeal No. 2004-0160
Application No. 09/939,993
1 Our understanding of this German language reference is
derived in part from a translation thereof prepared on behalf of
the Patent and Trademark Office. It is our understanding that
the examiner is relying not only on the German reference, but
also on an English language abstract thereof prepared by Derwent.
Copies of both the translation and the Derwent abstract are
attached to this opinion.
2
Appellant’s invention “relates generally to forced air dryers
and, more specifically, to a forced air dryer designed to dry an
infant’s bottom during the diaper changing process” (specification,
page 1). A further understanding of the invention can be derived
from a reading of exemplary claim 1, which appears in the appendix
to appellant’s main brief.
The references relied upon by the examiner in the final
rejection as evidence of obviousness are:
Martin 1,660,802 Feb. 28, 1928
Caruso 3,836,750 Sept. 17, 1974
Chimera 5,394,620 Mar. 07, 1995
Mintgen1 (DE’484) 2,637,484 April 20, 1978
(German Patent)
The following rejections under 35 U.S.C. § 103(a) are before
us for review:
(1) claims 1-3, 5-7, 13 and 15, rejected as being unpatentable
over DE 2,637,484 (hereinafter, DE ‘484) in view of Caruso;
Appeal No. 2004-0160
Application No. 09/939,993
3
(2) claim 4, rejected as being unpatentable over DE ‘484 in
view of Caruso, and further in view of Martin; and
(3) claim 14, rejected as being unpatentable over DE ‘484 in
view of Caruso, and further in view of Chimera.
Reference is made to appellant’s main and reply briefs (Paper
Nos. 10 and 12) and to the examiner’s final rejection and answer
(Paper Nos. 8 and 11) for the respective positions of appellant and
the examiner regarding the merits of these rejections.
Discussion
At the outset, appellant contends (main brief, pages 3-6;
reply brief, pages 1-2) that DE ‘484 is nonanalogous art. In an
obviousness determination under 35 U.S.C. § 103(a), the question of
whether an applied reference constitutes analogous art is normally
considered to be a threshold issue. However, in the view we take
in this appeal, even if we assume that DE ‘484 is analogous art,
the obviousness rejections made by the examiner in the final
rejection and maintained in the answer are not well founded.
As noted above, appellant’s invention is directed to a forced
air dryer designed to dry an infant’s bottom. Using representative
claim 1 as a guide, the claimed subject matter on appeal is a
device for drying a moist region of a person’s body comprising a
housing having an air inlet and an air outlet, an electric fan
Appeal No. 2004-0160
Application No. 09/939,993
2On page 10 of the specification, appellant discloses a
number of means for venting air to avoid air flow blockage. One
such means is illustrated in Figure 7, the elected species, where
an end piece 86 includes lateral holes 88 to allow air to flow
out if the outermost end 102 of the end piece is blocked. As
shown in Figure 7 and described in the specification, holes 88
are normally closed by flaps 90, which are opened by air pressure
if the outermost end of the end piece is blocked.
4
mounting within the housing, an electric power source connected to
the electric fan, an end piece having an outermost end protruding
from the air inlet, and “means for venting air to the atmosphere,
bypassing the air outlet if the outermost end of the air outlet is
blocked, such that overheating of the fan is avoided.”2
The DE ‘484 reference pertains to a small hand-held device for
producing currents of warm air for thawing frozen vehicle door
locks. The DE ‘484 device comprises a housing enclosing an
electric motor driven fan 16 and an electric heating element 13.
The fan motor and heating element are powered by batteries 12. A
switch 19, 20, 24 is provided at the upper end of the housing for
simultaneously controlling the fan motor and the heating element.
The housing is provided with a rubber nozzle 1 at the lower end of
the housing from which warm air emerges.
Caruso, the secondary reference in each of the examiner’s
rejections, is directed to a hair dryer having a mobile housing 12
containing a pump 40 and a source of radiant heat 60, 64. A
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Application No. 09/939,993
5
flexible conduit 80 is connected to an outlet of the housing and
directs heat and air to a desired location. The end of the conduit
terminates in a nozzle 82 having a central discharge port 84 at the
end of an elongated projection, and a ring of ports 86 radially
disposed around the projection. Because ports 86 are closer to the
end of conduit 80 than port 84, ports 86 “prevent the development
of substantial back pressure in conduit 80 if port 84 is closed due
to contact with a person’s scalp” (column 3, lines 45-47).
In support of the standing rejection of the appealed claims
under 35 U.S.C. § 103(a), the examiner considers that DE ‘484
discloses all elements called for in independent claims 1, 6 and
13, except for the “means for venting” of claims 1 and 6, and the
corresponding “opening in the housing of the air outlet for venting
air . . .” of claim 13. To account for this difference, the
examiner turns to Caruso, contending (final rejection, page 3) that
the port arrangement of Caruso’s nozzle demonstrates that it is
conventional and well known in the art to provide means for venting
air from a forced air drier if the main outlet is blocked in order
to prevent the development of substantial back pressure. The
examiner posits that it would have been obvious to provide a
similar venting means in DE’ 484 since, in the examiner’s view, “DE
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Application No. 09/939,993
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‘484 is equally susceptible to the same outlet blockage problem
contemplated by Caruso” (answer, page 12).
We appreciate that Caruso teaches a forced air dryer having
venting means adjacent the main air outlet for venting air if the
main air outlet is blocked in order to prevent the development of
substantial back pressure. Our difficulty with the examiner’s
rejection lies in the examiner’s determination that outlet blockage
and resulting back pressure is a cause of concern in DE ‘484. The
examiner has pointed to nothing in DE ‘484, and we are aware of
nothing, that supports this position. Accordingly, the examiner’s
determination (answer, paragraph bridging pages 12-13) that one of
ordinary skill in the art would look to Caruso to fashion a remedy
for the alleged back pressure buildup problem in DE ‘484 is not
well founded. In this regard, the Derwent abstract of DE ‘484
states that the rubber nozzle at the lower end of the housing from
which warm air emerges is interchangeable to suit different
vehicles. Based on this disclosure, it is reasonable to assume
that the rubber nozzle of DE ‘484 is intended to be in close
proximity and/or contact with the lock and its surrounding door
structure in order to direct the entirety of the hot air flow
toward and into the frozen lock, which mode of operation would cast
Appeal No. 2004-0160
Application No. 09/939,993
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doubt on the examiner’s position that DE ‘484 is susceptible to the
same outlet blockage and back pressure problem as Caruso.
The mere fact that the prior art could be modified does not
make such a modification obvious absent suggestion of the
desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Moreover, where the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification
would not have been obvious. Id. In the present case, we fail to
perceive any clear teaching, suggestion or incentive in the
combined teachings of DE ‘484 and Caruso that would have led one of
ordinary skill in the art to modify the heater device of DE ‘484 in
the manner proposed by the examiner. It appears to us that the
only suggestion for doing so is found in the hindsight accorded one
who first viewed appellant’s disclosure. This, of course, is not a
proper basis for a rejection under 35 U.S.C. § 103. See In re
Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
In light of the foregoing, we cannot sustain the standing
rejection of claims 1-3, 5-7, 13 and 15 as being unpatentable over
DE ‘484 in view of Caruso.
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Application No. 09/939,993
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We have also reviewed the Martin and Chimera references
additionally replied upon by the examiner in the rejections of
claims 4 and 14, respectively, but find nothing in these additional
references that makes up for the deficiencies of DE ‘484 and Caruso
discussed above. Accordingly, we also cannot sustain the standing
rejections of claims 4 and 14.
Remand
This case is remanded to the examiner for consideration of the
following matters.
Caruso discloses a device that responds to many limitations of
the appealed claims. Using claim 1 as a guide, Caruso discloses a
device for drying a moist region of a person’s body (the hair and
scalp) comprising, a housing 12 having an air inlet 54 and an air
outlet 80, 84, an electric fan 40 mounted within the housing, so as
to blow air toward the air outlet, an electric power source 56
connected to the electric fan, an end piece (nozzle 82) protruding
from the air outlet, and a means (radially disposed ports 86) for
venting air to the atmosphere, bypassing the air outlet, if the
outermost end 84 of the air outlet is blocked. Thus, Caruso would
appear to meet all the limitations of at least claim 1, with the
possible exception of the requirement that the end piece has a
“resilient” outermost end.
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Application No. 09/939,993
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Chimera likewise discloses a device that responds to many
limitations of the appealed claims. Again using claim 1 as a
guide, Chimera discloses a device for drying a moist region of a
person’s body comprising, a housing 10 having an air inlet 14 and
an air outlet 16, an electric fan 22 mounted within the housing, so
as to blow air toward the air outlet, an electric power source 20
connected to the electric fan, and an end nozzle protruding from
the air outlet. Chimera discloses a variety of end nozzles for use
with the dryer device thereof, including the Figure 2 end nozzle
that includes a brush 33 at the end thereof. It reasonably appears
that in the event the outermost end of the air outlet is blocked
air would vent to the atmosphere, at least to some degree, from
between the bristles of the brush of Chimera’s Figure 2 end nozzle.
In light of appellant’s disclosure on page 10 of the specification
regarding various nozzle structures that correspond to the claimed
“means for venting,” the examiner should consider whether the
Figure 2 end nozzle of Chimera is the same as or an equivalent of
any of appellant’s nozzle structures.
The examiner should also consider whether it would have been
obvious to incorporate an end nozzle structure like that disclosed
in Caruso at elements 82-86 in the dryer of Chimera for the purpose
of preventing excessive back pressure, it being noted in this
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regard that Chimera discloses at column 4, lines 63-68, a concern
for preventing excessive heat in the tube 14.
The examiner should reevaluate the patentability of the
appealed claims in light of Caruso and Chimera, either alone or in
combination with any other prior art of which the examiner may be
aware.
Summary
The decision of the examiner is finally rejecting the appealed
claims reversed.
This application is remanded to the examiner for consideration
of the matters discussed above.
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Application No. 09/939,993
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REVERSED; REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/lp
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Application No. 09/939,993
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ALLEN M. KRASS
GIFFORD, KRASS
280 N. OLD WOODWARD, SUITE 400
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