Ex Parte Saha

Board of Patent Appeals and Interferences

May 20, 2011

11219616 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ATANU SAHA
____________

Appeal 2009-014467
Application 11/219,616
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014467
Application 11/219,616

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STATEMENT OF THE CASE
Atanu Saha (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 102(b) claims 1-8,
10 and 16 as anticipated by Remsnyder (US 4,164,644, issued Aug. 14,
1979); and under 35 U.S.C. § 103(a) claim 9 as unpatentable over
Remsnyder and Hogg (US 6,437,295 B1, issued Aug. 20, 2002), claims 11-
15, 17-27, 38-41, 43 and 44 as unpatentable over Remsnyder and Guo (US
5,169,025, issued Dec. 8, 1992), claims 28-32 and 37 as unpatentable over
Hogg and Remsnyder, and claims 33-36 as unpatentable over Hogg,
Remsnyder and Guo. Claim 42 has been canceled. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
The Appellant’s invention relates to a system for heating substances
such as, massage oils, lotions, gels, and waxes, wherein the system includes
a heater and a separate container for heating and dispensing such substances.
Spec. 1, para. [0001] and fig. 1.
Claims 1 and 28 are representative of the claimed invention and read
as follows:
1. A system for heating a substance to be applied to a
human body, said system comprising:
a container for holding the substance to be heated;
a base unit separate from the container;
at least one heating element connected to said base unit; and
an on-off switch in electrical connection with said at least one
heating element;
wherein said base unit is configured to receive said container
and to heat the substance therein through said at least one heating
element, wherein said at least one heating element is configured to
heat the substance in said container to substantially body
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temperature, such that the substance is safe for application to skin of
a human body, and wherein said switch is configured such that when
said base unit receives said container, said container causes said
switch to move to an on position, thereby turning on said at least one
heating element.

28. A method for heating a substance to be applied to a
human body, said method comprising the steps of:
adding the substance to a container;
placing said container on a base unit comprising at least one
heating element such that said container causes an on-off switch
in electrical connection with said at least one heating element to
move to an on position, thereby turning on said at least one
heating element;
heating the substance through said at least one heating element
to substantially body temperature;
dispensing the heated substance from said container; and
applying the heated substance to skin of the human body.
SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

OPINION
Claims 1-27, 38-41, 43 and 44
Independent claim 1 recites a system for heating a substance to be
applied to a human body, wherein the system includes at least one heating
element “configured to heat the substance in a container to substantially
body temperature, such that the substance is safe for application to skin of a
human body.” Br., Claims Appendix. The Examiner takes the position that
the recitation “configured to heat the substance in a container to substantially
body temperature, such that the substance is safe for application to skin of a
human body” is a functional limitation, which is satisfied by the device of
Remsnyder, because the heating device of Remsnyder is “directed to be used
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for human skin.” Ans. 16. More specifically, the Examiner opines that
thermo-responsive switch 56 of Remsnyder senses a “predetermined
minimum temperature” to interrupt the electrical circuit to the unit and that
this “predetermined temperature” can be any temperature desired by a user,
including substantially body temperature, such that the substance is safe for
application to skin of a human body. Ans. 13 and 16-17. We disagree with
the Examiner’s position for the following reasons.
In this case, we find that Remsnyder teaches a system for heating
a substance, i.e., coffee (Remsnyder, col. 1, ll. 10-11), that includes an
electrical heater unit 10 (base unit) having a heating element 18 for heating
the substance (coffee) in a container 12, wherein the electrical heater unit 10
(base unit) includes a pressure responsive (on/off) switch 54 and a thermo-
responsive (on/off) switch 56, wherein the pressure responsive (on/off)
switch 54 is responsive to a predetermined minimum quantity of liquid
(substance) within the container and the thermo-responsive (on/off) switch
56 is responsive to a predetermined excessive temperature of electrical
heating unit 10. Remsnyder, col. 3, ll. 7-10 and 35-38 and figs. 4-6. As
such, we agree with Appellant that the “predetermined minimum
temperature” of Remsnyder, refers to a “maximum temperature above which
operation of the device is dangerous.” Br. 5. See also Remsnyder, col. 3, ll.
47-51. Moreover, a person of ordinary skill in the art would have readily
recognized that the “predetermined minimum temperature” of Remsnyder is
the boiling temperature of the substance being heated, specifically, the
boiling temperature of water used to make coffee (195° F-205° F),1 which is
significantly higher than body temperature (98.6° F). Thus, Remsnyder’s

1 http://books.google.com/ (search “Researching a topic?” for “brewing
coffee water temperature”).
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“predetermined minimum temperature” would be well above body
temperature and hence, would result in the liquid (substance) being heated to
a temperature that would not be safe for application to the skin of a human
body, as the Examiner proposes.
Furthermore, Remsnyder teaches that when the liquid (substance)
within the container 12 boils down to a level below a predetermined level
the pressure responsive (on/off) switch 54 deactivates the unit. However, if
this fails, the thermo-responsive (on/off) switch 56 will then sense the
“predetermined minimum temperature” and act to interrupt the electrical
circuit. Remsnyder, col. 3, ll. 39-54. Hence, although we appreciate the
Examiner’s position that the “predetermined minimum temperature” can be
any temperature desired by a user, including body temperature, such that the
substance is safe for application to skin of a human body, there is no
indication in Remsnyder that the “predetermined minimum temperature” at
which thermo-responsive (on/off) switch 56 cuts off power is adjustable by a
user. Therefore, because thermo-responsive (on-off) switch 56 responds to a
“predetermined minimum temperature” of electrical heater unit 10 (base
unit) well above body temperature and Remsnyder does not teach the ability
to adjust the “predetermined minimum temperature,” heating element 18 of
Remsnyder’s device is not configured to “heat the substance … to
substantially body temperature such that the substance is safe for application
to skin of a human body,” as called for by independent claim 1.
Therefore, for the foregoing reasons, we cannot sustain the rejection
of independent claim 1 and its dependent claims 2-8, 10, and 16 under
35 U.S.C. § 102(b) as anticipated by Remsnyder.
Regarding claim 9, the addition of Hogg does not remedy the
deficiencies of Remsnyder as described above. Therefore, for the foregoing
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reasons, we cannot sustain the rejection of claim 9 under 35 U.S.C. § 103(a)
as unpatentable over Remsnyder and Hogg.
Similarly, the addition of Guo does not cure the deficiencies of
Remsnyder as described above. As such, the rejection of claims 11-15, 17-
27, 38-41, 43, and 44 as unpatentable over Remsnyder and Guo also cannot
be sustained.
Claims 28-37
Appellant first argues that the temperatures disclosed in Remsnyder
would be inappropriate and dangerous if used to heat a substance to be
applied to human skin as disclosed in Hogg. Br. 8. We find Appellant’s
argument unpersuasive because it is not commensurate with the Examiner’s
rejection. The Examiner is not proposing to heat the substance of Hogg
using the device of Remsnyder, but rather to incorporate the pressure-
sensitive switch of Remsnyder into the device of Hogg. See Ans. 9.
Appellant next argues that the control knob of Hogg provides more
control over the heating device than would the on/off switch of Remsnyder;
as such, incorporating the on/off switch of Remsnyder into the heating
device of Hogg would “decrease the utility of the heating device of Hogg.”
Br. 8. At the outset, we note that Appellant has not provided any evidence
to show that the control knob of Hogg provides more control over the
heating device than the on/off switch of Remsnyder or that modifying the
heating device of Hogg with the on/off switch of Remsnyder would decrease
the utility of the heating device of Hogg. An attorney’s arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
In this case, the Examiner found, and we agree, that Hogg discloses
all the limitations of independent claim 28 with the exception of a pressure-
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responsive switch. Ans. 8. We further agree with the Examiner that
Remsnyder discloses the use of a pressure-responsive switch in a heating
unit. Ans. 9. As such, we find that placing the pressure-responsive switch
of Remsnyder into the system of Hogg would not have been uniquely
challenging to a person of ordinary skill in the art, because it is no more than
“the mere application of a known technique to a piece of prior art ready for
improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 421 (2007).
The modification appears to be the product not of innovation but of ordinary
skill and common sense. An improvement that is nothing more than the
predictable use of prior art elements according to their established functions
is likely to be obvious. Id.
As such, we agree with the Examiner that it would have been
obvious to one of ordinary skill in the art at the time of invention to
incorporate the pressure-responsive switch of Remsnyder into the electrical
heating system of Hogg “in order to activate the heating system [of Hogg]
when the container is on the heating plate and deactivate the heating
system when the container is off the base.” Ans. 9.
In conclusion, for the foregoing reasons, the rejection of independent
claim 28 under 35 U.S.C. § 103(a) as being unpatentable over Hogg and
Remsnyder is sustained.
Regarding the rejection of claims 29-32 and 37, Appellant does not
present any additional arguments. Br. 8. As such, the rejection of claims
29-32 and 37 as unpatentable over Hogg and Remsnyder is likewise
sustained.
With respect to the rejection of claims 33-36, Appellant does not
present any additional arguments from those presented above with respect to
the rejection of independent claim 28 under 35 U.S.C. § 103(a) as
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unpatentable over Hogg and Remsnyder. Br. 8-9. Accordingly, for the
reasons discussed above, we shall also sustain the rejection under 35 U.S.C.
§ 103(a) of claims 33-36 as unpatentable over Hogg, Remsnyder, and Guo.

NEW GROUNDS OF REJECTION
We make the following additional new grounds of rejection pursuant
to 37 C.F.R. § 41.50(b).
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hogg and Remsnyder.
Hogg discloses a system 10 for heating a substance 30 (lotion) to be
applied to a human body. (See claim 1). The system 10 includes a container
20 for holding the substance 30 (lotion) to be heated, a base unit 12 separate
from container 20, at least one heating element 32 connected to the base unit
12, wherein base unit 12 is configured to receive container 20 and to heat the
substance 30 (lotion) therein through the at least one heating element 32,
wherein the at least one heating element 32 is configured to heat the
substance 30 (lotion) in the container 20 to substantially body temperature,
such that the substance 30 (lotion) is safe for application to skin of a human
body. Hogg, col. 1, ll. 4-6, figs. 1-2 and claim 1.
Hogg fails to disclose a pressure-responsive switch in electrical
connection with the at least one heating element, wherein the switch is
configured such that when the base unit receives the container, the container
causes the switch to move to an on position, thereby turning on the at least
one heating element.
Remsnyder discloses a system for heating a substance that includes an
pressure-responsive switch 54 in electrical connection with the at least one
heating element 18, wherein the pressure responsive switch 54 is configured
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such that when the base unit 10 receives the container 12, the container 12
causes the switch 54 to move to an on position, thereby turning on the at
least one heating element 18. Remsnyder, col. 2, l. 33 through col. 3, l. 4
and figs. 4-5. Remsnyder further discloses that the switch 54 is a well-
known safety feature that is incorporated into a heating unit to prevent the
heating unit from overheating. Remsnyder, col. 1, ll. 11-20. Hence, it
would have been obvious for a person of ordinary skill in the art to provide
the pressure-responsive switch of Remsnyder to the heating system of Hogg,
in order to prevent the system from overheating.
In light of the above, we conclude that independent claim 1 is
unpatentable under 35 U.S.C. § 103(a) over Hogg and Remsnyder. With
respect to claims 2-16 and 38-40, although we decline to reject every claim
under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize
that our decision does not mean the remaining claims are patentable. Rather,
we merely leave the patentability determination of these claims to the
Examiner. See MPEP § 1213.02.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hogg and Guo.
In comparison to independent claim 1, independent claim 17 includes
the container, base unit and heating element limitations of independent
claim 1 and adds the limitation of a glove separate from the base unit and
configured to detachably receive the container such that the glove covers at
least one of the one or more container surfaces. Br., Claims Appendix.
Hogg discloses all the limitations of independent claim 17 with the
exception of a glove separate from the base unit and configured to
detachably receive the container such that the glove covers at least one of the
one or more container surfaces. Hogg, col. 1, ll. 4-6 and figs. 1-2. Guo
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discloses a glove 10 configured to detachably receive a container 70 such
that the glove 10 covers at least one of the one or more container surfaces.
See Guo, figs. 5-6. Guo further discloses that the glove is used to isolate and
maintain the temperature of the liquid in the container and to make the
container convenient for the user to hold. Guo, col. 2, ll. 35-38 and 49-52.
Hence, it would have been obvious for a person of ordinary skill in the art to
provide the glove of Guo to the heating system of Hogg, in order to isolate
and maintain the temperature of the liquid in the container and to make the
container convenient for the user to hold.
In light of the above, we conclude that independent claim 17 is
unpatentable under 35 U.S.C. § 103(a) over Hogg and Guo. With respect to
claims 18-27, 41, 43 and 44 although we decline to reject every claim under
our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that
our decision does not mean the remaining claims are patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.
DECISION
The decision of the Examiner is affirmed as to claims 28-37 and
reversed as to claims 1-27, 38-41, 43 and 44.
We enter new grounds of rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Hogg and Remsnyder.
We enter new grounds of rejection of claim 17 under 35 U.S.C.
§ 103(a) as unpatentable over Hogg and Guo.
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides "Appellant may
file a single request for rehearing within two months from the date of the
original decision of the Board."
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In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

JRG