11974390 (B.P.A.I. Sep. 14, 2011)

Ex Parte Abbas

Board of Patent Appeals and InterferencesSep 14, 2011

11974390 (B.P.A.I. Sep. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/974,390 10/11/2007 Greg Abbas MSH-491CIP 4405 8131 7590 09/15/2011 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER SMITH, KIMBERLY S ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 09/15/2011 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 GREG ABBAS ____________________ Appeal 2010-002289 Application 11/974,390 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and CHARLES N. GREENHUT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002289 Application 11/974,390 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 9. Br. 9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a decoy cover. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A decoy cover, said decoy cover comprising a main body, having an outside surface, said main body being capable of being configured to the outside surface of a decoy; said decoy cover having a neck end and a tail end and a middle portion; said neck end, tail end, and middle portion having a fastening means located thereon; the outside surface of the decoy cover is comprised primarily of simulated feathers attached thereto, said feathers mimicking the feathers of a fowl; the outside surface having artificial feathered wings attached thereto and near the middle portion thereof, said wings having a leading edge and said wings trailing rearward toward the tail end of the decoy cover; said decoy having a flexible rod transversing through the middle portion thereof, and forward of the leading edge of the wings, said flexible rod protruding beyond the wings; said flexible rod having at each end thereof, an attachment means for attaching at least one moveable feather such that each of the moveable feathers is free to move, there being at least one moveable feather attached to each of the attachment means. Appeal 2010-002289 Application 11/974,390 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rudolph Loughman Gilsdorf US 4,691,464 US 2003/0106253 A1 US 7,131,230 B1 Sep. 8, 1987 Jun. 12, 2003 Nov. 7, 2006 REJECTIONS Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rudolph and Gilsdorf. Ans. 3. Claims 6-9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rudolph, Gilsdorf and Loughman. Ans. 4. OPINION Appellant argues claims 1-5 as a group. Br. 13-15. We select claim 1 as the representative claim, and claims 2-5 will stand or fall with claim 1. Appellant argues claims 6-9 as a group. Br. 15-17. We select claim 6 as the representative claim, and claims 7-9 will stand or fall with claim 6. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant and the Examiner agree that Rudolph discloses the basic structure of claim 1 absent the flexible rod. Ans. 3; Br. 13. The Examiner says “Gilsdorf teaches a decoy comprising a flexible rod (120) traversing through the middle portion and having an attachment means (132) for attaching at least one moveable feather (130).” Ans. 3. Appellant says “Gilsdorf does not disclose a flexible rod (120) traversing through the middle portion (of the body) and having an attachment means (132) for attaching at least one moveable feather (130)” because “there are no feathers disclosed in Gilsdorf” and “the flexible rod of Gilsdorf does not traverse Appeal 2010-002289 Application 11/974,390 4 through the middle portion of the body.” Br. 13-14. We say these issues are not particularly relevant to the subject matter described by claim 1. Unlike claims 2-5, claim 1 is clearly directed to a decoy cover and not a decoy cover in combination with a decoy. For purposes of claim 1, the decoy is merely the article with which the cover is intended to be used. Appellant is free to define the claimed subject matter in this manner. However, the patentability of the cover must be determined based upon what structure the limitations concerning the decoy impose upon the cover, and not based upon features of the decoy, which does not form part of the claimed invention. See, e.g., MPEP § 2115 (discussing various cases on this subject). The limitations in claim 1 pertaining to the “flexible rod” are elements of the decoy and not the cover. This construction is consistent with Appellant’s initial summary of the invention. Spec. 2, ll. 16-19; fig. 1. The summary of the invention differs from Appellant’s detailed description which states that there are two extensions 30, the structure identified by Appellant as exemplary of the claimed “flexible rod,” each extension having two ends 32, 34 with one end 32 attached to the inside surface of the cover 2, as opposed to a single rod extending through the decoy itself as claimed. Spec. 3, l. 34 – 4, l. 6; fig. 2. We need not speculate about what Appellant intended to claim since the scope of the claimed subject matter of claim 1 is clear and unambiguous: “said decoy having a flexible rod transversing through the middle portion thereof.” While Rudolph’s decoy 10 does not appear to have a rod transversing through a middle portion thereof, we find nothing that would prevent Rudolph’s covering 24 from being used with such a decoy as called for in claim 1. The rod and attachment means described in the claim need not protrude significantly from the body of the decoy and, therefore, would not Appeal 2010-002289 Application 11/974,390 5 affect the ability to use Rudolph’s covering with such a decoy. Thus, claim 1 is anticipated by Rudolph and is therefore also rendered obvious by the combination of Rudolph and Gilsdorf. See, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“[A]nticipation is the ultimate of obviousness”). We recognize that the issues of whether it would have been obvious to use Rudolph’s cover on Gilsdorf’s decoy and whether such a combination would have yielded the claimed subject matter may be relevant in judging the patentability of claims 2-5. However, as the claims are currently drafted with the decoy, not the decoy cover, having the flexible rod, the issue of whether it would have been obvious to provide Gilsdorf’s flexible rod on Rudolph’s cover (See, e.g., Ans. 3) would not be. In any case, Appellant does not separately argue claims 2-5 and, for purposes of this appeal, such arguments are deemed to have been waived. See 37 C.F.R. § 41.37(c)(1)(vii); See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). Accordingly, we affirm the Examiner’s rejection of claims 1-5. The Examiner concluded that, for reasons similar to those discussed regarding claims 1-5, the combined teachings of Rudolph and Gilsdorf would have rendered obvious the basic structure of claim 6 absent the use of real feathers. Ans. 4. Appellant does not contest the Examiner’s position in this regard. The Examiner also concluded, based upon the teachings of Loughman, that it would have been obvious to incorporate real feathers into the decoy cover in order to provide a more realistic decoy. Id. Appellant initially relies on the arguments presented regarding claims 1-5 discussed supra. Br. 16. Appellant additionally contends that Loughman teaches only the use of real feathers on the tail and not as essentially a full coat for the decoy. Id. As the Examiner points out (Ans. 7), Appellant presents several arguments that relate to unclaimed subject matter which cannot serve to Appeal 2010-002289 Application 11/974,390 6 distinguish the claimed invention from the prior art. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). We do not agree with Appellant that one of ordinary skill in the art would view Loughman’s teaching of using real feathers (p. 2, para. [0033]) on a turkey decoy tail so narrowly. Contra. Br. 16. Loughman discloses a structure for incorporating real feathers into the tail of a turkey decoy. Fig. 1. But feather location on any bird decoy is ultimately guided by the location of the feather(s) on the bird itself since a decoy is essentially a replica of the bird. Thus, when faced with the problem of producing a realistic looking bird decoy, it would have been obvious to locate real feathers in the same arrangement as real feathers on the bird being replicated. Accordingly, we affirm the Examiner’s rejection of claims 6-9. DECISION The Examiner’s rejections of claims 1-9 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk