Appeal No. 2006-1504 Page 9
Application No. 09/935,297
invention having reviewed Lacey would have necessarily envisioned such, as opposed to, for
example, a device having fingers of the dimensions and flexibility possessed by the appellant’s
claimed invention. Moreover, as pointed out above, the appellant’s claims do not require any
more with respect to a head-receiving space than is illustrated in Appendix B.
The appellant also argues that Lacey does not disclose or suggest that the fingers are
resilient, as called for in each of appellant’s claims on appeal. While Lacey certainly does not
use the term “resilient” in describing the head massage device, all materials are resilient to some
degree, in that they possess the ability to recover their size and shape after deformation within
the elastic range, with the elastic limits varying from one material to another. Accordingly, any
material used for the fingers of the Lacey device would meet the definition of “resilient” offered
by the appellant on page 10 of the reply brief. Moreover, the appellant’s specification, at page 5,
gives some guidance as to the degree and nature of resilience required of the fingers of the
invention. According to the specification, “[t]he characteristics of resilience and pliability of the
fingers 12 can be achieved by making the fingers 12 from wire.” Lacey’s illustration of the head
massage device shows a plurality of fingers resembling very long thin strands or rods or wires,
giving the impression of members of similar resilience.
In light of the above, the appellant’s arguments are not persuasive of any error on the part
of the examiner in rejecting claims 1-4, 6-8, 10-17, 19-27 and 29-32. The rejection of these
claims as being unpatentable over Lacey in view of Rabin or Blachly is thus sustained.
The like rejection of claims 9, 18, 28 and 33, however, is not sustained. Each of these
claims recites that the free end of each finger is terminated in a bulb or ball structure neither
illustrated nor described in Lacey. The examiner’s apparent position (answer, p. 8) that the
common inventorship of the Lacey design and the present application can somehow serve to fill
the gaps in the description in Lacey with the disclosure in the present application is misguided
and unfounded.
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