Tapani Taskinen et al.

Patent Trials and Appeals Board

Oct 28, 2020

13991197 - (D) (P.T.A.B. Oct. 28, 2020)

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.
13/991,197 06/03/2013 Tapani Taskinen 3502-1289 6686
466 7590 10/28/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
10/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pair_nixon@firsttofile.com
ptomail@nixonvan.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAPANI TASKINEN and AKI BACKMAN
Appeal 2020-002596
Application 13/991,197
Technology Center 3700
Before JOHN C. KERINS, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20–26 and 28–40. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as HLD
Healthy Life Devices OY. Appeal Br. 2.
Appeal 2020-002596
Application 13/991,197

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CLAIMED SUBJECT MATTER
The claims are directed to a massage apparatus. Claim 20, reproduced
below, is illustrative of the claimed subject matter:
20. An adjustable massage apparatus, comprising:
a central unit comprising a low-pressure pump;
a treatment head, a massage effect being realized based
on a suction effect created in association with the treatment
head, the treatment head comprising a surface to be faced in
contact against skin, a frame, and a low-pressure chamber
including a hose connection point and being arranged in
connection with the surface; and
a low-pressure hose that connects the central unit to the
treatment head, the low-pressure hose having i) a first end
portion with a valve and ii) a second end,
wherein the second end of the low-pressure hose is
connected to the low-pressure pump, and
wherein the first end portion of the low-pressure hose is
connected to the hose connection point of the low-pressure
chamber with the valve located at the at the hose connection
point of the low-pressure chamber so that the hose, via the
valve, provides sole low-pressure flow to the treatment head;
wherein with the surface in contact against the skin, a
low-pressure is provided by the low-pressure pump, via the
low-pressure hose, in the low-pressure chamber for creating a
low-pressure suction at the skin in order to lift tissue of the
skin; and
the valve being adjustable for adjusting the low-pressure
suction created in the low-pressure chamber, via the low-
pressure hose, so that pressure in the low-pressure chamber is
oscillating between an upper limit and a lower limit,
wherein said low-pressure hose is arranged as a pressure
reservoir that accelerates pressure variations in the low-pressure
chamber, and
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Application 13/991,197

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wherein the apparatus is configured so that the low-
pressure in the low-pressure hose is arranged to be higher than
the upper limit or lower than the lower limit when the valve is
closed for achieving the upper limit or the lower limit more
quickly upon opening of the valve.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lockwood US 2003/0014022 A1 Jan. 16, 2003
Rosenberg US 2006/0211958 A1 Sept. 21, 2006
Greenburg US 2008/0091126 A1 Apr. 17, 2008
Taskinen US 2008/0200778 A1 Aug. 21, 2008
Khen WO 2008/063478 A1 May 29, 2008
REJECTIONS
Claims 20–22 and 28–40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Taskinen, Khen, and Lockwood.
Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taskinen, Khen, Lockwood, and Rosenberg.
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taskinen, Khen, Lockwood, and Greenburg.
OPINION
A dispositive issue in this appeal is whether Lockwood qualifies as
analogous art.2 Appellant contends it is not. Appeal Br. 18; Reply Br. 7.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC

2 Lockwood is relied on in each of the Examiner’s rejections.
Appeal 2020-002596
Application 13/991,197

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v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325). The
Examiner finds that Lockwood is in the same field of endeavor as the
pending application, and makes no assertion regarding whether Lockwood is
reasonably pertinent to any particular problem with which the inventor was
involved.3 Ans. 10.
“[T]he field of endeavor test . . . requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d at
1325. “This test does not make the assessment of the field of endeavor a
wholly subjective call for the examiner.” Id. at 1326. Rather, “[t]he
examiner and the Board must have a basis in the application and its claimed
invention for limiting or expanding the scope of the field of endeavor.” Id.
The Examiner makes no findings regarding whether Lockwood is
analogous art and, instead, simply concludes that “Lockwood is in the same
field of endeavor of vacuum treatment devices for a user,” and “[t]hus,

3 We decline to make any findings as to the particular problem with which
the inventor is involved in the present application or whether Lockwood is
reasonably pertinent to that problem.
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Lockwood is relevant.” Ans. 10. We are left with no finding supported by
evidence to support this conclusion.
Moreover, we find that Appellant’s field of endeavor is, in fact, not
“vacuum treatment devices for a user” generically. Rather, Appellant’s field
of endeavor is massage devices. This is evidenced by the characterization of
the Application’s technical field, the discussion of the prior art, the
description of the invention, the figure, the detailed description, and the
claims. Indeed, there is no reference to any application of the purported
invention to anything other than a massage device.
Accordingly, the Examiner fails to establish that Lockwood is
analogous art. We do not sustain the Examiner’s decision to reject claims
20–26 and 28–40 for this reason alone.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
20–22, 28–
40
103(a) Taskinen, Khen,
Lockwood
20–22, 28–
40
23, 24 103(a) Taskinen, Khen,
Lockwood,
Rosenberg
23, 24
25, 26 103(a) Taskinen, Khen,
Lockwood,
Greenburg
25, 26
Overall
Outcome
20–26, 28–
40

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Application 13/991,197

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REVERSED