10486197 (B.P.A.I. May. 9, 2012)

Ex Parte Plebuch et al

Board of Patent Appeals and InterferencesMay 9, 2012

10486197 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/486,197 02/13/2004 Harald Plebuch 04014 6173 23338 7590 05/10/2012 DENNISON, SCHULTZ & MACDONALD 1727 KING STREET SUITE 105 ALEXANDRIA, VA 22314 EXAMINER MERCIER, MELISSA S ART UNIT PAPER NUMBER 1615 MAIL DATE DELIVERY MODE 05/10/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte HARALD PLEBUCH and ERIKA FUNK __________ Appeal 2011-012828 Application 10/486,197 Technology Center 1600 __________ Before ERIC GRIMES, MELANIE L. MCCOLLUM, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to a device containing crystals. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-012828 Application 10/486,197 2 STATEMENT OF THE CASE “The invention relates to the use of a mixture of crystals for the stimulation of the thymus gland.” (Spec. 1, ll. 5-6.) “[T]he crystal mixture can be arranged in a receptacle equipped with perforations that in turn is designed as a piece of jewelry . . . hanging from a chain in the area of the thymus gland.” (Id. at 3, ll. 1-7.) Claims 30-40 are on appeal. Claim 30 is representative and reads as follows: 30. A device comprising a receptacle in cuboid form having openings in at least two longitudinal walls thereof, and having therein crystals of natural silicon dioxide in form of rock crystal and crystals of natural ring silicate in form of tourmaline, the crystals being arranged in piles or rows of rock crystal and piles or rows of tourmaline, the piles or rows disposed beside or on top of each other, the rock crystal and tourmaline being present in a weight ratio of 7:1 to 3:1. The Examiner rejected the claims as follows:  claims 30-35 and 37-40 under 35 U.S.C. § 103(a) as unpatentable over Pepin1 and “Crystals and Gemstones”;2 and  claim 36 under 35 U.S.C. § 103(a) as unpatentable over Pepin, “Crytals and Gemstones,” and Karawin.3 1 David E. J. Pepin, US 4,184,344, issued Jan. 22, 1980. 2 Crystals and Gemstones, Facts About Crystals And Gemstones, available online Feb. 8, 1999, accessed at web.archive.org/web/20010202070900/http://www.crystalinks.com/gemston es.html on Dec. 28, 2009. 3 Kenneth J. Karawin, US 3,748,712, issued July 31, 1973. Appeal 2011-012828 Application 10/486,197 3 OBVIOUSNESS The Issue The Examiner’s position is that Pepin described a rectangular pendant in cuboid form “with 3 circular opening[s] for stone placement” on all of the longitudinal sides. (Ans. 4-5.) According to the Examiner, “Pepin does not disclose the combination of quartz and tourmaline in his device or the beneficial properties of using the specific crystals, but rather discloses the choice of stones used is for ornamental purposes.” (Id. at 5.) The Examiner found the “Crystals and Gemstones” reference disclosed therapeutic/holistic properties of various crystals and gemstones, including that quartz provides emotional balance and tourmaline dispels fear, negativity, grief and promotes health. (Id.) The Examiner concluded: It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any crystal combination in order to provide the taught holistic effects since crystals are routinely used in jewelry devices and are well known to provide holistic effects as evidenced by the Crystals and Gemstones article since the Pepin reference discloses that any combination that provides the desire[d] aesthetic effect can be utilized. (Id.) Appellants contend that “statements in the Office Action are not correct; Pepin does not in any way disclose or suggest the placement of stones in the article of jewelry disclosed.” (App. Br. 8.) To support their argument that no gemstones are involved in Pepin’s pendant, Appellants point to Pepin’s (i) description of the pendant’s rotor having three vertically stacked and differently colored sections; (ii) disclosure that the type of pigment for coloring the rotor sections is a matter of choice; and (iii) description of a second embodiment using colored bands. (Id. at 9-10.) Appeal 2011-012828 Application 10/486,197 4 Appellants summarize: “There is no disclosure or suggestion of providing colored stones in the interior of the pendant.” (Id. at 10, emphasis deleted.) The Examiner responds: While the Examiner has conceded numerous times that Pepin does not disclose the recited crystals, the crystals serve as an ornamental function, and based on the disclosure and design of Pepin, the skilled artisan would immediately envision that the colored lenses could be altered to colored stones in order to provide the desired aesthetic effect. (Ans. 6.) Discussion The Appeal Brief’s review of the evidence demonstrates that Pepin did not describe using stones in its pendant. Appellants have therefore established that the rejection’s finding that Pepin “discloses the choice of stones used is for ornamental purposes” is not supported by the evidence. The Answer’s “Response to Argument” section alleges that despite the lack of evidence, “the skilled artisan would immediately envision that the colored lenses could be altered to colored stones in order to provide the desired aesthetic effect.” The rejection did not point to it, but we note that Pepin disclosed “a set of three vertically spaced apertures which may be thought of as ‘lenses.’” (Pepin, col. 2, ll. 38-39.) Neither the rejection nor the responsive argument gives a persuasive explanation showing that a person of ordinary skill in the art would have taken Pepin’s description of apertures to be a description of colored lenses. Nothing in the record is identified to support the idea that a person of ordinary skill would have envisioned Appeal 2011-012828 Application 10/486,197 5 replacing the apertures with gemstones. As the rejections lack an objective evidentiary basis, they must be reversed. SUMMARY We reverse the rejection of claims 30-35 and 37-40 under 35 U.S.C. § 103(a) as unpatentable over Pepin and “Crystals and Gemstones.” We reverse the rejection of claim 36 under 35 U.S.C. § 103(a) as unpatentable over Pepin, “Crytals and Gemstones,” and Karawin. REVERSED lp