Ex Parte Betzen

Board of Patent Appeals and Interferences

Apr 20, 2004

09550555 (B.P.A.I. Apr. 20, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEITH M. BETZEN
____________
Appeal No. 2003-0930
Application No. 09/550,555
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 3 and 4,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2003-0930
Application No. 09/550,555
Page 2
1 Issued January 18, 2000.
2 Issued April 8, 1986.
BACKGROUND
The appellant's invention relates to shock-producing, animal repelling and
training devices; particularly to a portable, wireless, shock-producing, animal repelling
and training device which has the crisscrossing electrodes maintained in position by an
electrode separator (specification, p. 1). A copy of the claims under appeal is set forth
in the appendix to the appellant's brief.
Claims 3 and 4 stand rejected under the judicially created doctrine of double
patenting over claims 1 to 5 of U.S. Patent No. 6,014,9511 to Betzen in view of U.S.
Patent No. 4,580,7672 to Zimmerman.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the final
rejection (Paper No. 9, mailed February 7, 2002) and the answer (Paper No. 15, mailed
September 27, 2002) for the examiner's complete reasoning in support of the rejection,
and to the brief (Paper No. 13, filed May 7, 2002) for the appellant's arguments
thereagainst.
Appeal No. 2003-0930
Application No. 09/550,555
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the Betzen and Zimmerman patents, and to
the respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which follow.
Claim 3 under appeal is drawn to a shock-producing, animal repelling and
training device similar to the deer repellent device set forth in claim 1 of the Betzen
patent. Claim 4 under appeal is drawn to a method of repelling and training target
animals similar to the method of repelling deer set forth in claim 5 of the Betzen patent.
However, unlike claims 1 and 5 of the Betzen patent, claims 3 and 4 under appeal
additionally recite an electrode separator to hold the crisscrossing electrodes in place
while preventing contact between the electrodes, while allowing full exposure of the
electrodes to the target animal whereby the crisscrossing electrodes are held in position
by the electrode separator while being insulated from each other.
To account for this difference in the rejection before us in this appeal, the
examiner (final rejection, pp. 2-3) relies upon the patent to Zimmerman. Zimmerman
discloses an insulator for supporting an electric wire on a fence post having an
improved design to prevent the insulator from slipping out from under a staple used to
Appeal No. 2003-0930
Application No. 09/550,555
Page 4
3 See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
secure the insulator on the fence post. From this teaching of Zimmerman, the examiner
concludes that it would have been obvious to one of ordinary skill in the art at the time
the invention was made to insulate the electrodes of Betzen from each other. We do
not agree.
In our view, Zimmerman provides no teaching, suggestion or motivation to have
provided the electrodes of Betzen with an electrode separator to hold the crisscrossing
electrodes in place while preventing contact between the electrodes. In that regard,
Zimmerman's insulator is for supporting an electric wire on a fence post, not for
preventing contact between crisscrossing electrodes. Accordingly, we must conclude
that the rejection under appeal stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight knowledge is, of course,
impermissible.3
For the reasons set forth above, the decision of the examiner to reject claims 3
and 4 under the judicially created doctrine of double patenting is reversed.
Appeal No. 2003-0930
Application No. 09/550,555
Page 5
CONCLUSION
To summarize, the decision of the examiner to reject claims 3 and 4 under the
judicially created doctrine of double patenting is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-0930
Application No. 09/550,555
Page 6
KEITH M. BETZEN
7590 SHILO ROAD
P O BOX 5604
BLOOMINGTON, IN 47407-5604
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