Appeal 2007-0099
Application 10/260,443
Examiner. As a consequence of our review, we will reverse the obviousness
rejection of claims 13, 15, and 21 through 23.
Independent claim 13 recites, in pertinent part, "a plurality of tines . . .
each said tine terminating in a sharp tissue penetrating tip." The Examiner
asserts (Answer 3-4) that Ford discloses sharp tines because "'sharp' is a
relative term. Statements of intended use have no patentable significance."
Appellant, on the other hand, argues (Br. 10-11) that Ford teaches teeth with
dull points so as to avoid scratching or cutting a person's scalp. Further,
Appellant states (Br. 11) that it would not have been obvious to modify Ford
to include sharp teeth as "such a modification would be contrary to the
express teachings of Ford."
We agree with Appellant. Ford explicitly teaches dull points which
will not scratch, which is the exact opposite of sharp tips that will penetrate
tissue. As to the Examiner's suggestion that the limitation of a sharp tissue
penetrating tip constitutes a statement of intended use, the Examiner should
realize that "tissue penetrating" defines that the tip must be sharp enough to
penetrate tissue. In other words, the so-called intended use defines the
structure and, therefore, does have patentable significance. Since Ford
expressly teaches away from the claim limitation, Ford fails to satisfy the
claim language.
The Examiner combines Koppel with Ford, since, according to the
Examiner (Answer 4), Ford fails to disclose the spacing between the two
arrays of tines. The Examiner contends (Answer 4) that Koppel teaches
spacing the tines 1-2 millimeters to remove nits, and, therefore, that it would
have been obvious to space the teeth of Ford 1-2 millimeters "to provide
optimum results in removing nits from human hair." Appellant explains
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