10247739 (B.P.A.I. Sep. 20, 2010)

Ex Parte Beroza

Board of Patent Appeals and InterferencesSep 20, 2010

10247739 (B.P.A.I. Sep. 20, 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. 10/247,739 09/20/2002 Morton Beroza 2465 7590 09/21/2010 GAIL E. POULOS USDA-ARS-OTT 5601 SUNNYSIDE AVENUE, RM. 4-1184 BELTSVILLE, MD 20705-5131 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 09/21/2010 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 MORTON BEROZA ____________ Appeal 2009-002896 Application 10/247,739 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Morton Beroza (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 11, 12, and 14 under 35 U.S.C. 1 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” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal No. 2009-002896 Application No. 10/247,739 2 § 103(a) as unpatentable over Grimes (US 1,056,535, issued Mar. 18, 1913) in view of Baker (US 6,543,181 B1, issued Apr. 8, 2003) or Huang (US 6,585,990 B1, issued Jul. 1, 2003) (Ans. 3), claim 13 under 35 U.S.C. § 103(a) as unpatentable over Grimes “as modified by Huang as applied to claim 11 above” (Ans. 5), and claims 11-14 under 35 U.S.C. § 103(a) as unpatentable over Kubalek (US 2,254,948, issued Sep. 2, 1941) in view of Baker or Huang (Ans. 5). Claim 15 has been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to a device that will provide a uniform emission of a lure for an extended period of time. Spec. 1:1-2. Claim 11, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 11. A lure-emitting device consisting of an extended uniform lure emission dispenser consisting of at least one volatile liquid lure specific for one targeted flying insect species, an adjustable wick wherein said wick area exposed to the atmosphere can be increased or decreased over time to maintain a uniform rate of lure emission providing maximum attraction for said flying insect, and a means for maintaining air pressure in said dispenser wherein said dispenser emits said at least one volatile lure for at least about six months without replenishment of said lure. Appeal No. 2009-002896 Application No. 10/247,739 3 DISCUSSION Issues The determinative issues in this appeal are: 1) Whether the scope and content of Grimes discloses an adjustable wick. 2) Whether the scope and content of Kubalek with Baker or Huang is limited to suggesting a lure lasting about six months. Analysis As a preliminary matter, it appears that a clear recognition of the claim scope is in order. The claims are drafted using the transitional phrase “consisting of” throughout. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 521 (CCPA 1931).2 It appears neither the Examiner nor Appellant have substantively acknowledged the closed-end aspect of the claims. Grimes disclose a wick 16. The wick 16 draws water 11 within a container 10 in a capillary manner up to a fabric pad 17 containing a dry poison that is placed on top of a pedestal 14. Grimes does not disclose adjusting the wick in any manner. The pad 17 being frictionally secured to the top by guard 18 prohibits any movement of the wick upward. Further, if the wick 16 were moved downward, then the wick would not contact the pad and defeat the purpose of the wick which is to draw the water into the dry 2 See also Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”). Appeal No. 2009-002896 Application No. 10/247,739 4 poison to make a solution. Therefore, the Grimes wick is not adjustable and thus does not satisfy the claimed wick. Kubalek discloses a poison that “will last practically indefinitely.” Kubalek, p. 1, col. 2, ll. 34-35. There is no evidence that a poison will “lure” a targeted flying insect. Indeed, Kubalek discloses adding sugar or molasses to the mixture to attract, “lure,” the insects. Kubalek, p. 1, col. 2, ll. 23-25. Further, Kubalek fails to disclose, teach, or suggest that its sugar or molasses attractant would last practically indefinitely much less last for at least about six months. Baker and Huang do not teach or suggest their respective attractants lasting at least six months. Therefore, while the prior art suggests a poison lasting about six months, see Kubalek, we find that the prior art of record fails to teach, and the Examiner has not cogently explained how the prior art does in fact teach, a lure lasting about six months in the manner claimed. Furthermore, to the extent that the Kubalek patent’s disclosure of a “poison [that will] last indefinitely” would be regarded by persons skilled in the art as including the sugar or molasses attractant, Kubalek still fails to disclose or suggest a liquid volatile lure that lasts for at least about six months without replenishment. The poison is said to last indefinitely, but will only operate as intended “indefinitely” with the replenishment of water. (Kubalek, p. 1, col. 2, ll. 35-37). Moreover, the Examiner has not pointed to any evidence that persons of ordinary skill in this art would understand that the term “indefinitely” would necessarily include a time period as lengthy as “up to about six months”. In view of the foregoing, Appellant’s contention that the wick disclosed in Grimes is not adjustable in the manner claimed shows error in Appeal No. 2009-002896 Application No. 10/247,739 5 the Examiner’s findings directed to the scope and content of Grimes. Further, Appellant’s contention that Kubalek with Baker or Huang fails to suggest a lure lasting at least six months in the manner claimed shows error in the Examiner’s findings directed to the scope and content of Kubalek with Baker or Huang. The Examiner does not utilize the other prior art of record to cure the deficiencies raised by Appellant’s contentions. Accordingly, the decision of the Examiner to reject the claims is reversed. CONCLUSIONS The scope and content of Grimes fails to disclose an adjustable wick. The scope and content of Kubalek with Baker or Huang fails to be limited to suggesting a lure lasting about six months. DECISION The Examiner’s decision to reject claims 11-14 as obvious is reversed. REVERSED Klh GAIL E. POULOS USDA-ARS-OTT 5601 SUNNYSIDE AVENUE, RM. 4-1184 BELTSVILLE, MD 20705-5131