Ex Parte Bescherer

Patent Trial and Appeal Board

May 30, 2013

11761429 (P.T.A.B. May. 30, 2013)

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.
11/761,429 06/12/2007 Robert E. Bescherer A16P1352US1 9991
3017 7590 05/30/2013
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
O'HARA, BRIAN M
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
05/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT E. BESCHERER
____________

Appeal 2011-002506
Application 11/761,429
Technology Center 3600
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-002506
Application 11/761,429

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STATEMENT OF THE CASE

Robert E. Bescherer (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A bird feeder base, comprising:
a main body having a top surface and a
bottom surface, the bottom surface defining a bore
therein having an inner surface;
the inner surface of the bore having a female
threaded portion and a non-threaded portion where
the non-threaded portion is substantially larger in
area than the female threaded portion;
the female threaded portion having one
female thread member residing on the female
threaded portion of the inner surface of the bore
and extending less than 360 degrees about such
inner surface;
whereby a male threaded accessory is
threadably engageable through the bottom surface
of the main body and through the bore; the male
threaded accessory being laterally stabilized by
communication with the non-threaded portion of
the bore.
PRIOR ART
Hefner US 4,691,665 Sep. 8, 1987
Bescherer US 6,539,892 B1 Apr. 1, 2003
Puckett US 7,516,716 B1 Apr. 14, 2009

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Application 11/761,429

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GROUNDS OF REJECTION
1. Claims 1-3 and 8-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Puckett and Hefner.
2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Puckett, Hefner and Bescherer.
1

3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Puckett, Hefner and “Applicant’s acknowledged prior art
(Figure 4).”
OPINION
Obviousness based on Puckett and Hefner
Claims 1-3 and 8-10:
Appellant argues claims 1-3 and 8-10 as a group. We select
independent claim 1 as the illustrative claim and claims 2, 3 and 8-10 stand
or fall with claim 1. See App. Br. 6-10; see also 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that Puckett discloses all of the limitations of
independent claim 1 except for “the non-threaded portion being substantially
larger than the threaded portion, [and] the female thread extending less than
360 degrees.” Ans. 5. The Examiner finds that “Hefner teaches connecting
a bird feeder base with a female threaded portion (44) extending less than
360 degrees.” Id. The Examiner concludes that “[a]t the time of invention,
it would have been obvious to replace the threaded portion of Puckett et
al[.], with the less than 360 degree thread of Hefner et al.” because such a

1
The Examiner withdraws the rejection of claims 4 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Puckett, Hefner and Weldin (US 5,285,748,
iss. Feb. 15, 1994) and enters this new ground of rejection. Ans. 3.
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Application 11/761,429

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modification would “make the supporting pole easier to attach to the base
portion.” Id. The Examiner further reasons that “[t]he resulting structure
would have the non-threaded portion being substantially larger in area than
the female threaded portion [and] the female threaded portion [would have]
one female thread member residing on the female threaded portion of the
inner surface of the bore.” Id.
Appellant argues that “Puckett does not illustrate or teach laterally
stabilizing a male threaded accessory using the non-threaded portion of the
inner surface 140 of the bore 130.” App. Br. 6; Reply Br. 6. The Examiner
finds that Puckett describes that
the male threaded accessory [is] laterally stabilized
by the non-threaded portion (portion under element
82 in Figs. 5 and 14) of the inner surface of the
bore; whereby the male threaded accessory is
laterally stabilized by the communication with the
non-threaded portion of the bore while being
secured by the female thread (the non-threaded
portion would inherently provide lateral stability).

Ans. 5; see also Ans. 7. We agree. While Puckett’s threads contribute to the
lateral stabilization of the male threaded accessory, the non-threaded portion
of the bore also contributes to such stabilization, which is all that is required
by the claim language. Accordingly, Appellant’s argument is unpersuasive.
Appellant argues that because Hefner’s threads attach the bottle of a
hummingbird feeder to its base, rather than the base of the hummingbird
feeder to an accessory, Hefner teaches away from the combination proposed
by the Examiner’s rejection. See App. Br. 6-7; See also Reply Br. 7-10. We
disagree. A reference does not teach away from a proposed combination
with another reference simply because there are differences between the two
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Application 11/761,429

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references. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
Appellant has not identified and we do not discern where Hefner criticizes,
discredits or otherwise discourages use of its threads to attach the base of the
hummingbird feeder to an accessory. We will not read into a reference a
teaching away from a proposed combination when no such language exists.
See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
Appellant further argues “Puckett does not illustrate lateral
stabilization by the non-threaded portion of the bore and Hefner's thread is
on the top of the base,” concluding “[i]t would still not be obvious to have a
helical thread on the bottom of the base for an accessory.” App. Br. 9;
Reply Br. 10-11. Appellant is arguing the individual features of the
references rather than addressing their combined teachings. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir. 1986). As discussed
supra, we agree with the Examiner’s finding that Puckett inherently
discloses lateral stabilization by the non-threaded portion of the bore.
Furthermore, Hefner is not relied upon to teach the bottom surface of the
main body having a bore as Puckett discloses this feature. Accordingly,
Appellant’s arguments do not address the Examiner’s combination and are
thus unconvincing.
For these reasons, we sustain the Examiner’s rejection of independent
claim 1, and of claims 2, 3 and 8-10 which were not argued separately and
fall therewith.
Obviousness based on Puckett, Hefner and Bescherer
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Application 11/761,429

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The Examiner finds that “Bes[c]herer teaches mounting a squirrel
guard (10) to a male threaded member (40) and then mounting the male
threaded member and squirrel guard to a bird feeder base (36).” Ans. 6.
The Examiner concludes that
it would have been obvious to one of ordinary skill
in the art to provide the male threaded accessory of
Puckett et al. and Hefner wherein the male
threaded accessory is a squirrel guard (40+10 of
Bes[c]herer assembled together) and wherein the
male threaded accessory is a mounting post with a
squirrel guard (40+10 taken as separate elements)
in view of the teaching of Bes[c]herer.

in order “to provide the predictable result of preventing unwanted animals
from taking bird food.” Ans. 6.
Appellant argues that Bescherer teaches away from the present
invention because “Bescherer teaches . . . a bird feeder base (36) which
includes a female threaded bore 44 (as shown in Figs. 5 and 7) with the inner
surface of the female threaded bore having multiple thread members
extending more than 360 degrees about the inner surface.” Appellant also
argues that “Bescherer does not disclose a non-threaded portion of the inner
bore 44 which laterally stabilizes the male threaded post (40)” and Bescherer
“require[es] multiple threads on both the inner bore 44 to be in
communication with multiple threads on the male threaded post (40) to
provide lateral stabilization.” Reply Br. 13. Appellant’s argument is
unconvincing as it apprises us of no error in the Examiner’s finding that
Bescherer teaches a squirrel guard as claimed. We note that Bescherer is not
relied upon to teach the claimed bore and its female threaded member. In
addition, Appellant has not identified where Bescherer criticizes, discredits
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Application 11/761,429

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or discourages use of its squirrel guard with other bird feeders. As discussed
supra, we will not read into a reference a teaching away from a proposed
combination when no such language exists. Accordingly, Appellant has not
apprised us of error in the Examiner’s rejection.
For these reasons, we sustain the Examiner’s rejection of claims 4 and
5.
Obviousness based on Puckett, Hefner and
Applicant’s Acknowledged Prior Art
Appellant has provided no separate arguments for claims 6 and 7. See
App. Br. 11. Accordingly, as we have sustained the Examiner’s rejection of
claim 1 from which claims 6 and 7 depend, either directly or indirectly, we
likewise sustain the Examiner’s rejection of claims 6 and 7.

DECISION
The Examiner’s rejections of claims 1-10 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).

AFFIRMED

cdc