Ex Parte Werner et al

Patent Trial and Appeal Board

Jan 14, 2013

12164825 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWIN A. WERNER and MATTHEW K. ANDIS
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Appeal 2012-001532
Application 12/164,825
Technology Center 3600
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
grooming tool. The Examiner has rejected the claims as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-7, 11-16, and 18-20 are on appeal (Supp. App. Br. 4).
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Claims 1, 13, and 18 are each independent and are set forth in the Claims

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Claims 8-10 and 17 are also pending but have been withdrawn from
consideration (Supp. App. Br. 4).
Appeal 2012-001532
Application 12/164,825

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Appendix to the Appeal Brief (App. Br. 15-18). Claim 1 is illustrative and
reads as follows:
1. A hair grooming tool comprising:
a housing defining a cavity, the housing including a grooming end and
a handle end that define a longitudinal axis of the housing;
a vibratory motor assembly positioned within the cavity and
configured to vibrate the housing; and
a pet-engaging member coupled to the housing at the grooming end,
the pet-engaging member having a planar surface and teeth defined along an
edge thereof, the planar surface and the edge positioned transverse to the
longitudinal axis of the housing;
wherein vibration of the housing enables constant motion of the hair
tool and movement of the pet-engaging member as the pet-engaging member
is pulled through hair to remove loose hair without cutting the hair.
Claims 1-4, 6, 11-16, 18, and 19 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Komatsu et al. (US 3,853,133, Dec. 10, 1974)
(Ans. 4).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over
Komatsu in view of McKay (US 2008/0052850 A1, Mar. 6, 2008) (Ans. 8).
Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious
over Komatsu in view of Hwang (US 6,722,374 B2, Apr. 20, 2004) (Ans. 8).
ANTICIPATION
Appellants argue that Komatsu fails to teach
a pet-engaging member having a planar surface with teeth
defined along an edge of the surface, and being positioned such
that the edge and the planar surface are transverse to the
longitudinal axis/dimension of a housing, the longitudinal axis
of the housing being defined by a grooming end and a handle
end of the housing.
(App. Br. 9.) We agree. We therefore reverse the anticipation rejection for
the reasons set forth in the Appeal and Reply Briefs.
Appeal 2012-001532
Application 12/164,825

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OBVIOUSNESS
In rejecting claim 5, the Examiner additionally relies on McKay for
teaching a battery (Ans. 8). In rejecting claims 7 and 20, the Examiner
additionally relies on Hwang for teaching a protector (id.). However, the
Examiner has not set forth a prima facie case that it would have been
obvious to overcome the deficiency in Komatsu discussed above. We
therefore also reverse the obviousness rejections.

REVERSED

cdc