10949129 (B.P.A.I. Jun. 27, 2011)

Ex Parte Bedoukian

Board of Patent Appeals and InterferencesJun 27, 2011

10949129 (B.P.A.I. Jun. 27, 2011)

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. 10/949,129 09/24/2004 Robert H. Bedoukian 1387.011USU 5522 7590 06/27/2011 George W. Rauchfuss, Jr. Ohlandt, Greeley, Ruggiero & Perle, L.L.P. Tenth Floor One Landmark Square Stamford, CT 06901-2682 EXAMINER BARHAM, BETHANY P ART UNIT PAPER NUMBER 1615 MAIL DATE DELIVERY MODE 06/27/2011 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 ROBERT H. BEDOUKIAN __________ Appeal 2010-007177 Application 10/949,129 Technology Center 1600 __________ Before TONI R. SCHEINER, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing of the decision entered March 3, 2011 (“Decision”), in which we reversed one obviousness rejection, but affirmed another. We have granted Appellant’s request to the extent we have reconsidered our original Decision in light of Appellant’s points, but we decline to change the Decision. Appeal 2010-007177 Application 10/949,129 2 DISCUSSION In requesting reconsideration of our affirmance of the Examiner’s rejection of claims 1-16 under 35 U.S.C. § 103(a) as obvious over Gora 1 et al., Dickens 2 et al., and Nolen 3 et al., Appellant contends: The Board has failed to comprehend that inhibiting mosquitoes’ ability to scent a target by olfactory sensing by a substance dispensed into the atmosphere (olfactory inhibition as in Applicant’s claimed invention) is completely different than such a substance being placed on the skin of a person to repel a mosquito that comes into contact with that substance (repellency). (Req. Reh’g 2). Specifically, Appellant argues: A disclosure of a substance that has mosquito repellency by being placed on the skin (as in Gora et al.) is not a teaching to one skilled in the art that such a substance would have the ability to inhibit the ability of a mosquito to sense a target by olfactory means if that substance were to be dispensed into the air. There is no teaching in any of the cited prior art that teaches that a substance that has mosquito repellency by being placed on the skin would have the ability to inhibit the ability of a mosquito to sense a target by olfactory means if that substance were dispensed into the air. The two are quite different and distinct. (Id.) Thus, Appellant urges, our Decision disregards the fact that an ordinary artisan would have recognized insect repellents and insect olfactory inhibitors as different compositions that are not deployed by the same 1 PL 165341 B1 (published June 15, 1992) (as translated). 2 U.S Patent No. 6,958,360 B2 (filed September 17, 2002). 3 WO 02/00021 A2 (published January 3, 2002). Appeal 2010-007177 Application 10/949,129 3 methods, and instead “erroneously assumes that something that is a repellent is an olfactory inhibitor. That assumption is a factually incorrect assumption and has no basis in the cited prior art. Lack of such a teaching in the prior art is a legally deficient basis for the rejection” (id.). Accordingly, Appellant concludes: Without such a teaching in Gora et al., Dickens et al. or Nolen et al. that the substance in Gora et al’s disclosure is an olfactory inhibitor there is no reason to dispense it into the air according to the method of Nolen to be able to inhibit the ability of mosquitoes to sense a target by olfactory means as recited in Appellant’s claims. Moreover, Nolen et al. does not relate to a composition of at least about 50% (S)-(+) linalool chiral isomer. In rendering its decision the Board has simply assumed, without any legal or factual basis that a contact repellent would act as an olfactory inhibitor is sprayed into the atmosphere. For the reasons as stated hereinbefore the rejection is without proper factual and legal support and is therefore erroneous and must be reversed. (Id. at 3.) Appellant’s arguments do not persuade us that our original decision erred. Appellant’s position, essentially, is that a conclusion of obviousness can only be supported by a prior art teaching that Gora’s coriander oil mosquito-repelling composition, which inherently contains the claimed amount of the claimed linalool isomer (see Decision 10), would be useful as an agent that inhibits mosquitoes’ capacity to sense a target by olfactory methods, i.e., by smell. Thus, Appellant seems to suggest that the prior art rationale for performing the claimed process steps must be the same as his own. We do not agree. As we pointed out in the Decision, obviousness is shown when the prior art suggests practicing the claimed subject matter, Appeal 2010-007177 Application 10/949,129 4 even if the prior art’s reason for doing so is different than a patent applicant’s (see id. at 10-11 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”)). Thus, as the Decision explains: [H]aving been advised by Gora that essential oil of coriander was useful as a mosquito repellent, and further advised by Nolen that mosquito-repelling essential oils were suitably dispersed into the atmosphere using a number of devices and/or carriers (see Nolen 5-6), an ordinary artisan would have been prompted to disperse Gora’s mosquito- repelling oil of coriander according to the methods described in Nolen. (Decision 9.) Appellant’s argument seems to presuppose that the prior art suggests that only insect olfactory inhibitors should be dispersed into the atmosphere, and that an ordinary artisan would not have been prompted to disperse mosquito repellents, such as the coriander oil composition of Gora, into the air. However, Nolen explicitly discloses that insect repellents and insect olfactory-inhibiting compounds are both suitably deployed by being released into the air: [T]he inhibiting compound can be formulated in a specially formulated waxy medium or vehicle engineered to release desired amounts of vaporous inhibiting compound at ambient temperatures, such as those mediums or vehicles available from Koster Keunen of Watertown, Connecticut. An example of such a waxy medium available from Koster Keunen Appeal 2010-007177 Application 10/949,129 5 is known as Insect Repellent Wax Bar No.9, which is blend of waxes . . . . (Nolen 5 (emphasis added).) Accordingly, we are not persuaded that an ordinary artisan would have failed to understand that it would have been useful to deploy a mosquito repellent, such as Gora’s coriander oil composition, by dispersing it into the air, which is all that claim 1 requires. In sum, Appellant’s arguments do not demonstrate that relief is proper in this appeal. While Appellant disagrees with the ultimate conclusion reached in the Decision, Appellant has not shown that the Decision failed to appreciate or address adequately any arguments presented in the Appeal Brief on any issue. Thus, because Appellant’s arguments do not persuade us that the Decision of March 3, 2011 misapprehended or overlooked any point of fact or law, we decline to modify our original Decision. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED alw