Ex Parte 6780079 et al

Board of Patent Appeals and Interferences

Aug 31, 2010

90008081 (B.P.A.I. Aug. 31, 2010)

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.
90/008,081 10/16/2006 6780079 33057.48 1999
32300 7590 09/01/2010
BRIGGS AND MORGAN P.A.
2200 IDS CENTER
80 SOUTH 8TH ST
MINNEAPOLIS, MN 55402
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/01/2010 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 MUZZY PRODUCTS CORPORATION1
Appellant
____________________

Appeal 2009-011350
Reexamination Control 90/008,081
Patent US 6,780,079 B22
Technology Center 3900
____________________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE, Vice Chief Administrative Patent Judge,
SCOTT R. BOALICK, DANIEL S. SONG and KEN B. BARRETT,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR RECONSIDERATION
OF THE EXAMINER'S SUBSTANTIAL NEW
QUESTION OF PATENTABILITY DETERMINATION3

1 Muzzy Products Corporation is the real party in interest (App. Br. 2).
2 Issued August 24, 2004 to John Musacchia, Jr. (hereinafter "'079 patent")
from Application Number 09/174,868 (hereinafter "'868 application").
3 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The present ex parte reexamination of the '079 patent was instituted
based on the request of a Third Party Requester on July 11, 2006. The
Patent Owner (hereinafter "Appellant") challenges the Examiner's finding of
a substantial new question of patentability (hereinafter "SNQ"). (App. Br. 4,
5). We construe Appellant's challenge as a request for reconsideration of the
Examiner's SNQ determination. The authority to review issues related to
SNQ has been delegated to the Chief Judge of the Board of Patent Appeals
and Interferences. 75 Fed. Reg. 36357-58 (June 25, 2010). We have
jurisdiction over this matter pursuant to the further delegation of that
authority from the Chief Judge.
In addition to the SNQ issue, Appellant appeals the Examiner's
rejection of claims 1-17. For the reasons given below, the procedural SNQ
issue is dispositive, and we do not reach the merits of the rejection.
The '079 patent is the subject of the judicial proceeding styled Muzzy
Products Corporation v. Primos, Inc., U.S. District Court – Georgia
Northern (Rome), 4:05cv182 (Ans. 2). This action has been stayed pending
the resolution of this reexamination proceeding (Ans. 2).
During the prosecution of the '868 application, which issued as the
'079 patent, an appeal to the Board was made (Appeal No. 2004-0430), the
decision having been mailed March 11, 2004 (hereinafter "prior Decision").
The prior Decision reversed the rejection and remanded the case to the
Examiner for further consideration. The '079 patent issued in due course.
In the present appeal, we REMAND for the reason set forth below.

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THE INVENTION
The '079 patent being reexamined is directed to a hunting device
known as a "game call," which is used to generate a sound that attracts an
animal to be hunted (col. 1, ll. 8-32). The hunting device 10 may be secured
to the hunter's thigh and includes an elevating device 150 which elevates the
game call portion 30 with its sound emanating surface 32 so that the sound
generated can "escape to ambient." (Col. 4, ll. 14-21; col. 5, l. 40 - col. 6, l.
10; Fig. 9). Figure 9 of the '079 patent is reproduced below.

Figure 9 of the '079 patent reproduced above shows a perspective
view of one embodiment of the hunting device including an elevating device
150 which elevates the game call portion 30 of the hunting device 10.
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Representative claim 1 reads as follows (App. Br. 28, Claims App'x.,
emphasis added):
1. A hunting device for producing sound comprising:
(a) a one-piece game call and elevating device, wherein
sound is produced, said game call having a scratch surface
separated from a sound emanating surface, the sound emanating
surface having apertures through which the sound in said game
call escapes the game call; and
(b) a body attachment assembly, connected to said
elevating device, designed to releasably attach the game call
and elevating device to the body of a user of the hunting
device;
the elevating device elevating the sound emanating
surface of said game call such that the sound emanating surface
is not in contact with a user when the body attachment
assembly is attached to the body of a user, thereby providing an
unencumbered path for the sound to escape the game call and
reach ambient.

ISSUE
The dispositive issue raised in the present appeal is whether a SNQ
can be established based on the same prior art reference, which is being
considered in the reexamination for the same purpose as that during the
original prosecution, in view of reconsideration of statements made in a
Declaration of record in the original examination.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Original Examination
1. During the original examination of the '868 application which
eventually issued as the '079 patent, the claims were rejected under 35
U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091, issued Mar.
4, 1997, to Mr. John Musacchia (hereinafter "Musacchia"), the Examiner
stating that while "Musacchia does not disclose a hunting device for
producing sounds that has a unitary construction[]," "unitary construction of
the hunting device would have been obvious to one of ordinary skill in the
art, since this would aid in the portability and usage of the device." (Non-
final Rejection 3, Aug. 2, 1999).
2. In response, the inventor, Mr. John Musacchia Jr., filed a
Declaration seeking to establish non-obviousness through long-felt need
stating, inter alia:
A. "I am one of skill in the art of game calls. I developed
the present game call device after noting several complaints by
others in the art that a separate game call and holding device was
disadvantageous." (¶ 2).
B. "First, I understand the [long-felt] need must have
been a persistent one that was recognized by those of ordinary skill
in the art. In this regard, the game call of the present invention
overcomes problems first recognized by others in the art, namely
those using my father's '091 game call holder." (¶ 6).
C. "My father and I noted from responses to his '091
holder that others were trying to develop a superior unitary game
call device, but there were many prior unsuccessful attempts to do
so." (¶ 8).
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(Decl. of Mr. John Musacchia Jr., ¶¶ 2, 6, 8, Feb. 2, 2000 (hereinafter
"Declaration")).
3. After extensive prosecution, the original Examiner maintained
the rejection of the claims over Musacchia stating that "Musacchia discloses
the claimed invention except for the game call device constructed as one
piece" and that "[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to form the game call device as
one piece, since it has been held that forming in one piece an article which
has formerly been formed in two pieces and put together involves only
routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164
(1893)." (Final Rejection 5, Sept. 24, 2002).
4. During the prosecution, the original Examiner also referred to
the Declaration and stated that "[t]he affidavit has been fully considered by
the examiner, but does not overcome the rejection" because of the lack of
objective evidence "to account for long-felt need which must be recognized,
persistent, and not solved by others." (Final Rejection 7, Aug. 1, 2000).
5. After further prosecution, the Applicant appealed to the Board
(App. Br., Mar. 24, 2003).
6. In the original Examiner's Answer, the Examiner stated that
"Appellant's arguments and 37 CFR 1.132 Affidavit have been given full
consideration but they have not changed the Examiner's position." (Ans. 4,
Apr. 29, 2003).
7. The original Board panel reversed the original Examiner's
rejection stating that there is no per se rule that "forming several pieces
integrally as a one-piece structure would have been obvious . . . [,]" and "in
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this case, one must determine if it would have been obvious to one of
ordinary skill in the art at the time the invention was made to make
Musacchia's separate call and platform as a one-piece structure." (Original
Decision 4-5, Mar. 11, 2004).
8. The original Examiner issued a Notice of Allowance in
response to the Board's decision and the application ultimately issued as the
'079 patent (Notice of Allowance, Mar. 25, 2004).

Reexamination
9. The Central Reexamination Unit (hereinafter "CRU") Examiner
granted a third party request for reexamination of the '079 patent, stating that
the statements in the Declaration were only considered in context of
long-felt need and not as admissions. (Order 2-4, Dec. 7, 2006). In
particular, the CRU Examiner states:
Based upon the record of the earlier concluded examination, the
examiner in the earlier concluded examination did not consider the
declaration nor the statements made in the remarks relating to
long-felt need with respect to a motivation to modify Musacchia
'091 such that the device of the reference is of one-piece
construction. Thus, the requester has presented Musacchia '091 in
a new light in view of the inventor's declaration such that a
reasonable examiner would consider Musacchia '091 and the
declaration important in deciding whether any claim of the patent
for which reexamination is requested is patentable.
(Order 3-4, Dec. 7, 2006).
10. The CRU Examiner rejected claims 1-17 under 35 U.S.C.
§ 103(a) as obvious over Musacchia (Ans. 3).

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PRINCIPLES OF LAW
35 U.S.C. § 303(a) (2006) states, in pertinent part:
The existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed publication
was previously cited by or to the Office or considered by the
Office.

In applying this statutory language, the Federal Circuit stated that "to
decide whether a reference that was previously considered by the PTO
creates a substantial new question of patentability, the PTO should evaluate
the context in which the reference was previously considered and the scope
of the prior consideration and determine whether the reference is now being
considered for a substantially different purpose." In re Swanson, 540 F.3d
1368, 1380 (2008) (concluding that prior art used as a secondary reference in
an obviousness rejection was sufficient to establish SNQ when considered as
an anticipatory reference) (citing H.R.Rep. No. 107-120, at 3 ("The
appropriate test to determine whether a 'substantial new question of
patentability' exists should not merely look at the number of references or
whether they were previously considered or cited but their combination in
the appropriate context of a new light as it bears on the question of the
validity of the patent.")).
"[A]n 'argument already decided by the Office, whether during the
original examination or an earlier reexamination' cannot raise a new question
of patentability . . . . As [the Federal Circuit] explained in In re Recreative
Technologies Corp., the substantial new question requirement 'guard[s]
against simply repeating the prior examination on the same issues and
arguments' and bars 'a second examination, on the identical ground that had
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previously been raised and overcome.'" Id. (Citations omitted).
"Determining the scope of an examiner's previous consideration of a
reference will generally require an analysis of the record of the prior
proceedings to determine if and how the examiner used the reference in
making his initial decisions . . . . While the standard is more flexible than
before [the 2002 amendment to § 303], we are mindful that Congress
intended that the courts continue to 'judiciously interpret the 'substantial new
question' standard to prevent cases of abusive tactics and harassment of
patentees through reexamination.'" Id. at 1380-81 (citing H.R.Rep.No. 107-
120, at 3).

ANALYSIS
Prior to challenging the Examiner's substantive obviousness rejection,
the Appellant requested the termination of the reexamination proceeding
because no SNQ exists (App. Br. 5). In particular, the Appellant argued that
there is no SNQ because the same question of patentability now asserted by
the CRU Examiner – that is, whether it would have been obvious to make
Musacchia's game call and the elevating device "one-piece" – was fully
considered during the original examination (App. Br. 10-15).
The USPTO has recently clarified the procedure for seeking review of
issues pertaining to a SNQ. See "Clarification on the Procedure for Seeking
Review of a Finding of a Substantial New Question of Patentability in Ex
Parte Reexamination Proceedings", 75 Fed. Reg. 36357-58 (June 25, 2010)
(hereinafter "Notice") (delegating the authority to review issues related to
the Examiner's determination that a reference raises a SNQ to the Chief
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Administrative Patent Judge, who may further delegate this authority to a
panel of Administrative Patent Judges deciding the appeal in the ex parte
reexamination proceeding).
In the present appeal, the reexamination of the '079 patent was ordered
prior to the date of the Notice. See Order Granting Request for
Reexamination, December 7, 2006. Nonetheless, the Notice provides that:
for ex parte reexamination proceedings ordered prior to June
25, 2010, if the patent owner presents the SNQ [substantial new
question of patentability] issue in its appeal brief, the BPAI
panel will review the procedural SNQ issue along with its
review of any rejections in an appeal and will enter a final
agency decision accordingly.
75 Fed. Reg. 36357.
Hence, we address the SNQ issue on appeal. The Examiner contends
that the Declaration filed during the prosecution of the '079 patent was only
considered as to whether it demonstrated long-felt need, and not considered
by either the original Examiner or the original Board panel as including
admissions (Ans. 12, 16). In this regard, the CRU Examiner states that,
when considered as admissions, the statements of the Declaration:
provide evidence of obviousness, which was specifically pointed
out as missing in the prior examination, and therefore, cast
Musacchia '091 in a new light. The teachings of Musacchia '091
considered in conjunction with the admissions are a new question
of patentability not previously considered. As such, the teachings
of Musacchia '091, in conjunction with the admissions in the
record, raise a substantial new question of patentability.
(Ans. 14).
The CRU Examiner maintains that the rejection of claims 1-17 is
proper in view of Musacchia's disclosure of the claimed invention except for
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the "one-piece" construction (Ans. 3-9) and the admissions evidence, the
CRU Examiner concluding:
Thus, in light of this [admissions] evidence, it would have
been obvious to one of ordinary skill in the art at the time of
invention to modify the game call device of Musacchia '091 to a
one-piece game call and elevating device because the admissions
by the applicant in his declaration and remarks show that a one-
piece design was considered desirable by those of skill in the art
and would predictably result in preventing the loss of game calls,
maintaining a true sound, and reducing the cost of the game call.
Furthermore, in light of the admission evidence, one of ordinary
skill in the art would have known that there are a finite number of
identified, predictable solutions known in the art that would solve
the recognized problems or needs. One of ordinary skill in the art
would have recognized that pursuing the identified, predictable
solution of using a one-piece configuration would result in the
claimed invention with a reasonable expectation of success.
(Ans. 10-11).
We disagree with the CRU Examiner's finding that a SNQ exists
because the prior art Musacchia reference was previously considered during
the original examination for the same or substantially the same purpose as it
is now being considered in the reexamination. See In re Swanson, 540 F.3d
at 1380. Both the original Examiner and the CRU Examiner rejected
Appellant's claims as obvious over a single reference: the Musacchia ‘091
patent. (See FF 1, 3, 10 and Ans. 10-11). The original Examiner relied on
Musacchia for the disclosure of the claimed invention except for the
one-piece construction. (FF 1, 3, 7). The CRU Examiner relies on
Musacchia for the disclosure of the claimed invention except for the one-
piece construction. (Ans. 9). Thus, the question of patentability in both
examinations is whether it would have been obvious to one of ordinary skill
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in the art to make Musacchia's game call and elevating device in "one-
piece."
While the CRU Examiner may be correct in asserting that the original
Examiner and the previous Board panel considered the statements in the
Declaration only in the context of long-felt need (FF 4, 9; Ans. 12, 16), these
statements do not alter the purpose for which the CRU Examiner now relies
on the Musacchia reference for finding the existence of a SNQ. In
particular, the CRU Examiner does not apply the statements in the
Declaration to gain any new understanding as to the teachings of the
Musacchia reference, but rather, uses the statements merely to reach a
different legal conclusion as to obviousness. While the CRU Examiner
asserts that the statements in the Declaration casts Musacchia in a "new
light" (Ans. 14), the CRU Examiner's position suggests that the CRU
Examiner is viewing the Declaration, not the Musacchia reference, in a new
light.
In view of the above, we find the statements in the Declaration
insufficient to establish a SNQ. Hence, the Examiner's finding of a SNQ is
incorrect, and we remand the case back to the CRU Examiner for
termination of the reexamination. We do not reach the Appellant's
arguments (App. Br. 21-26) directed to the merits of the substantive
obviousness rejection of claims 1-17.

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CONCLUSION
We conclude that there is no substantial new question of patentability,
and the case is REMANDED for further action consistent with this decision.

REMANDED

bim

FOR APPELLANT:
BRIGGS AND MORGAN, P.A.
80 SOUTH EIGHTH STREET
2200 IDS CENTER
MINNEAPOLIS, MN 55402

FOR THIRD PARTY REQUESTER:
HOLLAND & HART, LLP
P.O. BOX 11583
SALT LAKE CITY, UT 84147-0583