Ex Parte Welt et al

Board of Patent Appeals and Interferences

Sep 22, 2008

10390047 (B.P.A.I. Sep. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
THEODORE WELT and JONATHAN H. WEISBERG
__________

Appeal 2008-4404
Application 10/390,047
Technology Center 3700
__________

Decided: September 22, 2008
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 18-30. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2008-4404
Application 10/390,047

STATEMENT OF THE CASE
The claims are directed to a gum massager. Claim 18 is
representative of the claims on appeal, and reads as follows:
18. A device for massaging the gum of a user comprising:
an elongate handle having a first end portion and a second end
portion; and
a gum massaging head including a resilient massaging element
mounted on said second end portion of said elongate handle member,
wherein said massaging head is mounted on said second end portion
by means of a ball and socket type of joint, configured such that said gum
massaging head can perform limited oscillation movement in a plurality of
planes relative to said elongate handle, such that said resilient massaging
element adapts to the contours of said gum being massaged when pushed
thereagainst.

The Examiner relies on the following references:
Wheeler US 1,153,409 Sep. 14, 1915
Metzler US 1,892,068 Dec. 27, 1932
Youngclaus, Jr. US 4,347,839 Sep. 7, 1982

We affirm.

ISSUE (New Matter)
The Examiner rejects claim 18 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Ans. 6).
Specifically, the Examiner contends that the claim contains the limitation
that “the gum massaging head can perform limited oscillation movement ‘in
a plurality of planes’, which was not described in the original disclosure . . .
in such a way as to reasonably convey to one skilled in the relevant art that
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the inventor(s), at the time the application was filed, had possession of the
claimed invention.” (Id. at 6-7.)
Appellants argue that the use of the phrase “oscillating movement” “is
“definitive in describing movement in a plurality of planes.” (Reply Br.
10.) Moreover, Appellants assert, “it is clear to one skill in the art, that a
ball and socket joint, by its very nature, is associated with the provision of
motion in a plurality of planes.” (Id. at 12.) Thus, Appellants contend,
“the added matter is supported by the original disclosure” (App. Br. 12).
Thus, the issue on appeal is: Whether the disclosure of “oscillating
movement,” as well as the disclosure of a “ball and socket joint” in the
application as originally filed provides written description support for the
limitation that the gum massaging head can perform limited oscillation
movement “in a plurality of planes”?

PRINCIPLES OF LAW
The disclosure as originally filed need not provide “in haec verba
support for the claimed subject matter at issue,” rather, the disclosure should
convey to one skilled in the art that the inventor had possession of the
invention at the time of filing. Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (citations omitted).

ANALYSIS
We agree with Appellants for the reasons set forth in the Reply Brief
(Reply Br. 9-13) that the disclosure as filed provides written description
support for the limitation objected to by the Examiner.
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CONCLUSION
Thus, we conclude that the disclosure of “oscillating movement,” as
well as the disclosure of a “ball and socket joint” in the application as
originally filed provides written description support for the limitation that
the gum massaging head can perform limited oscillation movement “in a
plurality of planes,” and the rejection is reversed.

ISSUE (Anticipation)
The Examiner contends that claims 18, 19, 21, and 26-28 are
anticipated by Wheeler.
Appellants contend that the gum massager of Wheeler is not capable
of performing “limited oscillation movement in a plurality of planes relative
to said elongate handle, such that said resilient massaging element adapts to
the contours of said gum being massaged when pushed thereagainst.”
Thus, the issue on Appeal is: Whether the Examiner has established
by a preponderance of the evidence that the gum massager of Wheeler is
capable of performing “limited oscillation movement in a plurality of planes
relative to said elongate handle, such that said resilient massaging element
adapts to the contours of said gum being massaged when pushed
thereagainst”?

FINDINGS OF FACT
FF1 “The present invention relates to a gum massager device.” (Spec. ¶1.)
FF2 The gum massager is made of a resilient rubber or plastic material
(Spec. ¶45).
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FF3 According to Appellants, Figure 15 shows a ball and socket type joint
as recited in claim 18 (Reply Br. 11).
FF4 Figure 15 of the instant disclosure is reproduced below.

Figure 15 shows a replaceable gum massager head (100), which has a ball
shaped portion (108) that press-fits into a corresponding shaped socket (110)
(Spec. ¶64). The Specification teaches that “[a]part from providing a
replaceable gum massaging head 100, there is also provided a limited
oscillation of gum massager head 100 relative to elongate handle member
106 by virtue of the ball-and-socket connection 108 and 110 respectively.”
(Id.)
FF5 The Examiner rejects claims 18, 19, 21, and 26-28 under 35 U.S.C.
§ 102(b) as being anticipated by Wheeler (Ans. 3).
FF6 The Examiner relies on Figures 1-3 of Wheeler, reproduced below.

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Figure 1 of Wheeler shows a gum massager applied to a tooth brush handle
(Wheeler, ll. 54-55). Figure 2 shows an enlargement of the gum massager,
showing the pivot on which it is mounted, and Figure 3 shows the gum
massager detached from the pivot to which it is mounted (id. at ll. 55-62).
FF7 According to the Examiner, the gum massager of Wheeler comprises
“an elongate handle 11 . . . having a first end portion and a second end
portion . . .; a gum massaging head 1 mounted on said second end portion of
said elongate handle member . . ., wherein said gum massaging head is
mounted on said second end portion by means of a ball 9 and socket type of
joint 6 (best seen in figs. 2-3).” (Ans. 3.)
FF8 The Examiner finds that the use of a ball head 9 to attach the
massager, wherein the ball head is received in opening or socket 6, allows
the massager to rotate with limited angular movements in a plurality of
angular directions relative to said elongate handle and allows the head to
maintain contact with the natural contours of the surface of said gum (Ans.
3-4).
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FF9 The Examiner finds further that the massaging head is generally
configured as a bell shape and “includes at least one resilient protrusion 2
extending from said recessed inner surface so as to improve the massaging
contact thereof on the gums; wherein said at least one resilient protrusion
includes a plurality of said protrusions 2 (fig. 1-2); wherein said at least one
resilient protrusion includes at least one protrusion having a predetermined
geometric shape of a cylindrical shape (fig. 2).” (Ans. 4.)
FF10 Wheeler teaches a gum massager that may be mounted to a tooth
brush handle, being capable of rotary movement (Wheeler, ll. 16-21).
FF11 The massager may be made of rubber or another resilient material
(Wheeler, ll. 22-26). The massager is “covered with small conical
projections, the axes of the cones being substantially coincident with the
radii of [the] semi-spherical surface, the whole being mounted to rotate.”
(Wheeler, ll. 35-38.)
FF12 According to Wheeler, the massager is “detachably mounted to rotate
on a pivot at substantially right angles to the longitudinal axis of a tooth
brush or other suitable handle.” (Wheeler, ll. 27-30.)

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Moreover, our mandate is to give claims their broadest reasonable
interpretation. In re American Academy Of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004). “An essential purpose of patent examination is
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to fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989). In addition, it is during prosecution that applicants have “the
opportunity to amend the claims to obtain more precise claim coverage.”
American Academy, 367 F.3d at 1364.

ANALYSIS
The contested limitation of claim 18 recites: “wherein said massaging
head is mounted on said second end portion by means of a ball and socket
type of joint, configured such that said gum massaging head can perform
limited oscillation movement in a plurality of planes relative to said elongate
handle, such that said resilient massaging element adapts to the contours of
said gum being massaged when pushed thereagainst.”
Appellants do not argue that the massaging head of Wheeler: is
mounted on said second end portion and a ball and socket type of joint; or
that the massaging head of Wheeler is made from a resilient material.
Rather, the issue is whether the massaging head “can perform limited
oscillation movement in a plurality of planes relative to said elongate handle,
such that said resilient massaging element adapts to the contours of said gum
being massaged when pushed thereagainst.”
Giving that limitation its broadest reasonable interpretation, a
massaging head that can perform any oscillation movement in a plurality of
planes, even a very limited amount, that allows any portion of the resilient
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head of the massaging element to adapt to the contour of the gum, would
anticipate the massaging head of claim 18.
Appellants argue that “the massaging head shown therein has a
structure that specifically constrains the head to perform movement in one
plane only, namely, the plane perpendicular to the pivot of the head.”
(Reply Br. 13.) Wheeler teaches, Appellants assert, that the movement of
the gum massaging “is constrained ‘to rotate on a pivot at substantially right
angles to the longitudinal axis of the . . . handle.’” (Reply Br. 14 (quoting
Wheeler col. 1, ll. 27-30).) Moreover, Appellants argue, Wheeler teaches,
and claims in claim 2, “that the back surface of the massaging head is
substantially flat,” and thus the “only intended motion of the massaging head
is to rotate about its pivot.” (Reply Br. 14.)
Appellants’ arguments are not found to be convincing. Wheeler
teaches the use of a resilient material in conjunction with a ball and socket
joint, and as Appellants note, “it is clear to one of skill in the art, that a ball
and socket joint, by its very nature, is associated with the provision of
motion in a plurality of planes.” (Reply Br. 12.) Moreover, while Wheeler
teaches that the massager is “detachably mounted to rotate on a pivot at
substantially right angles to the longitudinal axis of a tooth brush or other
suitable handle” (FF12), the use of “substantially” implies that while most of
the movement may be at right angles to the longitudinal axis of a tooth
brush, there would be a small amount of movement that would not occur at
those right angles. Thus, we agree with the Examiner’s finding that the
combination of the ball and socket joint and the use of a resilient material in
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the massaging head of Wheeler would allow for some oscillating movement
in a plurality of planes.
Appellants assert that in Wheeler, “additional structural elements were
specifically required in order to limit the motion of the massing head in a
single plane only. These additional structural elements are the substantially
flat back surface of the semi-circular massaging head and the matching flat
surface of the handle.” (App. Br. 12-13.)
As discussed above, all that is required by claim 18 is any amount of
limited oscillation that allows any part of the gum massager of Wheeler,
including the resilient conical projections, to move in a plurality of planes.
Moreover, while Appellants argue that the flat back surface of the semi-
circular massaging head and the matching flat surface of the handle would
eliminate such movement (and based on the claim construction, they would
have to completely eliminate such movement), they have not provided any
evidence to that effect, and arguments of counsel cannot take the place of
evidence in the record. In re Scarbrough, 500 F.2d 560, 566 (CCPA 1974).
Appellants argue further that “the ball and socket joint shown in
Wheeler is not an essential element of the device, and is not used to bestow
the special properties of a ball and socket joint, but is only one optional
manner of constraining the head to perform the planar rotational movement
described in Wheeler.” (Reply Br. 14.) Moreover, Appellants assert,
Wheeler specifically teaches the advantages of having a single axis of
rotation, such as reducing the danger of injury to the gums (Reply Br. 14).
According to Appellants,
[n]owhere, to the best of the appellants’ understanding, does
Wheeler mention or suggest the use of a ball and socket type of
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joint to enable the gum massaging head to perform “limited
oscillation movement in a plurality of planes relative to said
elongate handle, such that said resilient massaging element
adapts to the contours of said gum being massaged when
pushed thereagainst”, as recited in claim 18.

(Reply Br. 15.)
Moreover, Appellants argue, while Wheeler recognizes “the need for
flexibility to aid in the manipulation of the gum massaging device, . . .
Wheeler did not suggest the use of the ball and socket joint to provide
this function.” (Reply Br. 15.)
The fact that the ball and socket joint of Wheeler is “not an essential
element of the device” is irrelevant to the anticipation analysis; all that is
required is that the prior art teach every limitation of the claimed invention,
whether inherently or explicitly. See, e.g., Upsher-Smith Laboratories, Inc.
v. Pamlab, LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (noting that the
question of whether a reference teaches away from the invention is
inappropriate under the anticipation analysis). Moreover, as to the fact that
Wheeler did not teach that the ball and socket joint to allow movement in a
plurality of planes also does not preclude a finding of anticipation, as
inherent anticipation does not require intent or recognition that a prior art
process achieve a result which is claimed. MEHL/Biophile Intern. Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Finally, as we have
already noted, Wheeler’s use of the term “substantially” in noting that the
massager is “mounted to rotate on a pivot at substantially right angles to the
longitudinal axis of a tooth brush or other suitable handle” (FF12) implies
that there is some small amount of movement that is not at right angles to the
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longitudinal axis, and all that is required by the claim is that small amount of
movement.

CONCLUSION
Thus, we agree that the Examiner has established by a preponderance
of the evidence that the gum massager of Wheeler is capable of performing
“limited oscillation movement in a plurality of planes relative to said
elongate handle, such that said resilient massaging element adapts to the
contours of said gum being massaged when pushed thereagainst,” and the
rejection is affirmed as to claim 18. As Appellants do not argue claims 19,
21, and 26-28 separately, the rejection is affirmed as to those claims as well.
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE (Obviousness)
The Examiner contends that claims 20, 22-25, 29, and 30 are obvious
over Wheeler alone, or in combination with another reference.
Appellants contend “the currently claimed invention cannot be
regarded as being obvious in the light of Wheeler alone, or in the light of
Wheeler in combination with any other prior art, since over 90 years has
elapsed since issue of Wheeler.” (Reply Br. 20.)
Thus, the issue on Appeal is: Whether the age of the Wheeler
reference, in and of itself, is sufficient to overcome the Examiner’s
rejections of obviousness over Wheeler alone, or in combination with
another reference?

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FINDINGS OF FACT
FF13 The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
obvious over Wheeler alone (Ans. 4).
FF14 The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as being
obvious over Wheeler as combined with Youngclaus, Jr. (Ans. 5).
FF15 The Examiner rejects claims 23-25, 29, and 30 under 35 U.S.C. §
103(a) as being obvious over Wheeler as combined with Metzler (Ans. 5).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
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Finally, “[t]he 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 (CCPA 1977).

ANALYSIS
Appellants assert that “the number of prior art patents cited, both by
[A]ppellants in an Information Disclosure Statement, and by the [E]xaminer,
indicate that the art did try to solve the same problem, and did have assumed
knowledge of all previous references, but did not suggest the invention as
described in claims 20, 22-25 and 29-30 of the present application.” (Reply
Br. 20.) The number of references alone, however, is not evidence that the
art tried and failed to solve the problem. In addition, Appellants point to
nowhere in those references where it is shown that the art tried, and failed, to
solve the problem.

CONCLUSIONS OF LAW
Thus, we conclude that the age of the Wheeler reference, in and of
itself, is not sufficient to overcome the Examiner’s rejections of obviousness
over Wheeler alone, or in combination with another reference, and the
obviousness rejections are affirmed.

SUMMARY
In summary:
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We reverse the rejection of claim 18 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
but
we affirm the rejection of claims 18, 19, 21, and 26-28 under 35
U.S.C. § 102(b) as being anticipated by Wheeler;
the rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious
over Wheeler alone;
the rejection of claim 22 under 35 U.S.C. § 103(a) as being obvious
over Wheeler as combined with Youngclaus, Jr,; as well as
the rejection of claims 23-25, 29, and 30 under 35 U.S.C. § 103(a) as
being obvious over Wheeler as combined with Metzler.

TIME LIMTS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc
VeriFresh Ltd.
P.O.B. 4604
Jerusalem 91046 IL ISRAEL
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