Ex parte Blumberg

Board of Patent Appeals and Interferences

Aug 13, 1997

07892484 (B.P.A.I. Aug. 13, 1997)

Application for patent filed June 3, 1992. According to1
appellant, this application is a continuation of Application
07/574,159 filed August 29, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER M. BLUMBERG
__________
Appeal No. 95-2416
Application 07/892,4841
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and OWENS, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the final
rejection of claims 1 through 5, 7, 9, 16, 17, 20, 21, 23 and 24.
Claims 8, 10 through 13, 15, 18, 19, 25 and 26 stand withdrawn
from further consideration as directed to a non-elected
invention.
Appeal No. 95-2416
Application 07/892,484
2
Representative claims 1, 7, 20, 23 and 24 are reproduced
below:
1. Treated birdseed, comprising:
(i) birdseed selected from the group consisting of
sunflower seeds, millet, barley, oats, wheat, corn, peanuts,
thistle seed, sorghum, sudan grass seed, watergrass seed, clover
seed and mixtures thereof, and
(ii) an effective amount of a material containing capsaicin
or a derivative or an analogue thereof coated on, impregnated in
or mixed with said birdseed in a ratio of about 1 part in 200 to
about 1 part in 100,000 by weight, for repelling animals having
capsaicin sensitive receptors from eating said treated birdseed,
with the proviso that said treated birdseed does not have
effective amounts of other ingredients that would repel birds.
7. The treated birdseed of claim 1, wherein the proportion
of the material containing capsaicin or a derivative or an
analogue thereof to seed is in the range of about 1 part in 200
to 1 part in 10,000 by weight.
20. A method of selectively repelling animals having
capsaicin sensitive receptors, which comprises feeding said
treated birdseed of claim 1 to birds in an amount effective for
repelling animals having capsaicin sensitive receptors from
eating said treated birdseed.
23. Treated birdseed for wild birds, comprising:
(i) whole seed selected from the group consisting of
sunflower seeds, millet, barley, oats, wheat, corn, peanuts,
thistle seed, sorghum, sudan grass seed, watergrass seed, clover
seed and mixtures thereof, and
(ii) a material containing capsaicin or a derivative or an
analogue thereof coated on, impregnated in or mixed with said
birdseed in a ratio of about 1 part in 200 to about 1 part in
100,000 by weight, for repelling animals having capsaicin
Appeal No. 95-2416
Application 07/892,484
When a reference is relied on to support a rejection even2
in a “minor capacity”, ordinarily that reference should be
positively included in the statement of rejection. See In re
Hoch, 428 F.2d 1341, 1342, n.3, 166 USPQ 406, 407, n.3 (CCPA
1970). Here, it appears that appellant has not been prejudiced
by the examiner’s reliance on the Myers patent and the Sann
publication, inasmuch as the examiner has entered appellant’s
Reply Brief which contains specific arguments with respect to
disclosures in these prior art references.
3
sensitive receptors from eating said treated birdseed, with the
proviso that said treated birdseed does not have effective
amounts of other ingredients that would repel wild birds.
24. A method of selectively repelling animals having
capsaicin sensitive receptors, which comprises feeding said
treated birdseed of claim 23 to birds in an amount effective for
repelling animals having capsaicin sensitive receptors from
eating said treated whole birdseed.
The references of record relied upon by the examiner are:
Myers 321,909 Jul. 7, 1885
Cartwright 826,990 Jul. 24, 1906
Glabe et al. (Glabe) 4,161,543 Jul. 17, 1979
Sann et al. (Sann), “Effect Of Capsaicin Upon Afferent And
Efferent Mechanism Of Nociception And Temperature Regulation In
Birds,” Can. J. Physiol. Pharmacol., Vol. 65 (1987) pp. 1347-
1354.
The appealed claims stand rejected for obviousness (35
U.S.C. § 103) over Cartwright in view of Glabe. As evident from
the discussion in the Answer and the Reply brief, the examiner
also relies on Myers and Sann as additional evidence of2
obviousness.
We affirm the rejection as to claims 1 through 5, 7, 9, 16,
Appeal No. 95-2416
Application 07/892,484
4
17 and 21. We reverse the rejection as to claims 20, 23 and 24.
The subject matter on appeal is directed to preparations of
birdseed treated with capsaicin or its derivatives or analogues
in an amount sufficient to be unpalatable to animals such as
rats, mice and squirrels which have capsaicin sensitive
receptors. Capsaicin is an oleoresin present in capsicum
(cayenne pepper, chili, pepper red) and is a known powerful
irritant which causes intense pain in humans and experimental
animals. In appellant’s invention, these “hot” capsaicin
compounds, extracts or whole plant materials containing these
compounds are coated on, impregnated in or mixed with birdseed to
repel troublesome animals which recognize these compounds as
“hot”. In contrast, these same “hot” compounds do not repel
birds because birds do not have capsaicin sensitive receptors.
Also on appeal are method claims (claims 20 and 24) for
selectively repelling animals having capsaicin sensitive
receptors, which claims call for the positive step of feeding the
treated birdseed of the invention to birds, in an amount
effective for repelling animals having the capsaicin sensitive
receptors.
The appealed claims stand rejected for obviousness
principally in view of the disclosures of Cartwright. The review
Appeal No. 95-2416
Application 07/892,484
5
of any prior art rejection, whether for anticipation or
obviousness, requires first that the claims have been correctly
construed to define the scope and meaning of the relevant
limitations. Gechter v. Davidson, 116 F.3d 1454, ----, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997). In proceedings before the Patent
and Trademark Office, claims are to be given their broadest
reasonable interpretation consistent with the specification, and
claim language should be read in light of the specification as it
would be construed by one of ordinary skill in the art. In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
With these legal principles in mind, we have reviewed
appellant’s claims in light of their specification. With respect
to the claim language in appealed claim 1 regarding a birdseed
selected from the group consisting of, inter alia, wheat,
appellant’s specification at page 7 indicates that the term
“birdseed” refers to any food or food additive or material that a
bird would eat and that wheat is a representative type of
birdseed. Thus, when reasonably construed, the claim language in
question covers any form of wheat, whether whole seed or wheat as
wheat bran.
Cartwright discloses a poultry food supplement, referred to
as “poultry-powder”, which comprises two ounces of wheat bran
Appeal No. 95-2416
Application 07/892,484
6
mixed with one ounce of ground red pepper per pound of
supplement. As stated above, wheat bran is a “birdseed” included
by the language of appealed claim 1, “birdseed selected from the
group consisting of...wheat”. Further, it is undisputed that red
pepper is a capsaicin containing material. In the amount
described, i.e., a composition containing 1/16th red pepper, it
is reasonable to conclude that Cartwright’s “poultry-powder”
contains capsaicin within the ratio range claimed (i.e. about 1
part in 200 to about 1 part in 100,000 by weight as required by
claim 1 or about 1 part in 200 to 1 part in 10,000 by weight as
required by claim 7). That Cartwright fails to expressly
describe the poultry-powder supplement as containing an effective
amount of capsaicin “for repelling animals having capsaicin
sensitive receptors” is of no moment with respect to the
examiner’s rejection. It is settled law that the discovery of a
new property or use of a previously known composition, even when
that property and use are unobvious from the prior art, cannot
impart patentability to claims to the known composition. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 780-82,
227 USPQ 773, 777-78 (Fed. Cir. 1985); In re Pearson, 494 F.2d
1399, 1403, 181 USPQ 641, 644 (CCPA 1974).
Appeal No. 95-2416
Application 07/892,484
There are no calculations of record that the “poultry-3
powder” supplement of Cartwright contains capsaicin in an amount
outside the scope of appellant’s claims.
7
We recognize that the examiner’s rejection is based on § 103
of the statute. However, a complete description in the prior art
of the claimed invention is the ultimate of obviousness.
Accordingly, we affirm the examiner’s rejection as to appealed
claims 1 through 5, 7, 9, 16, 17 and 21.
Composition claim 23 and method claims 20 and 24 stand on a
different footing, however. Composition claim 23 requires a
treated birdseed comprised of the “whole seed” from the group
consisting of, inter alia, wheat. Wheat bran, of course, is not
a whole seed as required by composition claim 23. We recognize,
as pointed out by the examiner, that Cartwright indicates that
his “poultry-powder” supplement is to be mixed with the regular
poultry food which typically includes whole seed grain.
Appellant points out, however, that when Cartwright’s supplement
is added to the regular food fed to the poultry that the amount
of capsaicin in this combined feed is outside the scope of
appellant’s claimed range. Appellant has supported this argument
with specific detailed calculations present in the record in the3
amendment filed February 3, 1993 and reiterated in the Brief at
page 4 and the Reply Brief at page 2. The examiner has not
Appeal No. 95-2416
Application 07/892,484
8
contended that these calculations are in error and we see no
error therein.
Based on the above, we agree with appellant that there is an
inadequate factual basis for believing that Cartwright’s poultry-
powder regular food mixture inherently contains capsaicin in the
amounts required by the appealed claims. Thus, we reverse the
examiner’s rejection as it applies to composition claim 23 which
requires whole seed birdseed. Likewise, we reverse the
examiner’s rejection of method claims 20 and 24. These claims
require the positive method step of feeding birdseed having an
amount of capsaicin which is effective for repelling animals
having capsaicin sensitive receptors. As noted above,
Cartwright’s poultry-powder supplement is not fed directly to the
birds but is simply used as a food supplement which is mixed with
regular food. As relied on by the examiner, none of the
“secondary references” remedy the basic deficiencies in the
Cartwright disclosure with respect to appealed claims 20, 23 and
24. Hence we reverse the examiner’s rejections of these claims.
In summary, we affirm the examiner’s rejection as to claims
1 through 5, 7, 9, 16, 17 and 21. We reverse the examiner’s
rejection as to claims 20, 23 and 24. Accordingly, the decision
of the examiner is affirmed-in-part.
Appeal No. 95-2416
Application 07/892,484
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge)
Appeal No. 95-2416
Application 07/892,484
10
Birch, Stewart, Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747