Ex Parte Bocchi

Board of Patent Appeals and Interferences

Jun 16, 2008

10131018 (B.P.A.I. Jun. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEO ANTHONY BOCCHI
____________

Appeal 2008-0146
Application 10/131,018
Technology Center 3600
____________

Decided: June 16, 2008
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Leo Anthony Bocchi (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-29. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
Appeal 2008-0146
Application 10/131,018

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is to a bird decoy and a method of
setting up the same. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A decoy for attracting fowl, the decoy
comprising:
a head structure configured to define an
aperture with a continuous periphery;
a support for supporting the head structure;
and
a wind-inflatable body attached to the head
structure by passing a portion of the wind-
inflatable body through the aperture.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jacob US 4,611,421 Sep. 16, 1986
Nelson US 4,651,457 Mar. 24, 1987
Farmer US 4,753,028 Jun. 28, 1988
Liechty, II US 6,336,286 B1 Jan. 8, 2002
The following rejections are before us for review:
1. Claims 1-4, 6, 7, and 9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Nelson.
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2. Claims 10-14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nelson and Jacob.
3. Claim 2 is rejected under 35 U.S.C. § 112, first paragraph, for failing
to satisfy the written description requirement.
4. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nelson.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nelson and Liechty.
6. Claims 15-29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Farmer.

ISSUES
The issues before us include whether the Appellant has shown that the
Examiner erred in rejecting claims 1-4, 6, 7, and 9 as anticipated by Nelson,
claims 10-14 as unpatentable over Nelson and Jacob, claims 2 and 5 as
unpatentable over Nelson, and claim 8 as unpatentable over Nelson and
Liechty. These issues turn on whether Nelson discloses a head structure
configured to define an aperture with a continuous periphery.
The issues before us further include whether the Appellant has shown
that the Examiner erred in rejecting claims 15-29 as unpatentable over
Farmer. This issue turns on whether the Examiner has provided a reason
with rationale underpinning to explain why one having ordinary skill in the
art would have modified Farmer’s decoy to such that a second portion of the
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body is movable with respect to a first portion to change the shape of the
opening.
The issues before us further include whether the Appellant has shown
that the Examiner erred in rejecting claim 2 as failing to satisfy the written
description requirement. This issue turns on whether the Appellant’s
Specification contains sufficient written description to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
Appellant was in possession of the invention as now claimed, including a
sufficient written description of the body threaded through the aperture of
the head structure and tied.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The ordinary and customary meaning of “aperture” is “an opening,
such as a hole, gap, or slit.” The American Heritage Dictionary of
the English Language (4th ed. 2000), found at www.bartelby.com.
2. The ordinary and customary meaning of “continuous” is “[o]f or
relating to a line or curve that extends without a break or
irregularity.” The American Heritage Dictionary of the English
Language (4th ed. 2000), found at www.bartelby.com.
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3. The ordinary and customary meaning of “periphery” is “[a] line
that forms the boundary of an area; a perimeter.” The American
Heritage Dictionary of the English Language (4th ed. 2000), found
at www.bartelby.com.
4. Nelson discloses a decoy having a head and neck portion 10, an
inflatable body portion 11, and a stake 12 (Nelson, col. 2,
ll. 29-33).
5. Nelson discloses three flexible closable hooks 35, 36, and 37,
which define an openmouthed loop having a central opening 42
(Nelson, col. 4, ll. 6-21).
6. Nelson describes that the bag or body 11 is attached to the head
and neck portion 10 “by inserting the flexible portion of the hook
through a hole adjacent the top center edge of the bag opening 31
and then inserting the lip 44 into the recess 43 to securely hold the
bag” (Nelson, col. 4, ll. 26-30).
7. As shown in Figure 7 of Nelson, even when the hook is closed, the
perimeter of opening 42 has a break at the point where lip 44 meets
portion 40 (Nelson, Fig. 7).
8. Thus, Nelson does not disclose “a head structure configured to
define an aperture with a continuous periphery.”
9. Jacob discloses a decoy 10 having a composite head and neck
member 15 and a body portion 16 including a flexible bag 20 with
ends fixed about a metal hoop 18 (Jacob, col. 2, ll. 49-65).
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10. The head and neck member 15 of Jacob does not define an aperture
with a continuous periphery.
11. Liechty discloses a plurality of different shaped foot-and-leg
assemblies 40 & 41 removably attachable to a plurality of same-
shaped, full-body goose decoy bodies 30 (Liechty, col. 8,
ll. 51-54).
12. Liechty does not disclose a head structure that defines an aperture
with a continuous periphery.
13. Farmer discloses a decoy 10 having an inflatable bag-shaped
body 40 (Farmer, col. 2, ll. 52-57; Figs. 1-3).
14. An upper edge section of the body 40 is attached to a stake unit 20
via a slot 48 in the stake 20 (Farmer, col. 3, ll. 30-35).
15. The stake 20 passes through an opening 42 in the lower portion of
the body 40 such that the lower portion hangs free of the stake and
the weight of the body 40 serves to extend the body 40 downwards
to open the mouth section 46 to wind (Farmer, col. 3, ll. 20-36;
Fig. 1).
16. Farmer does not disclose a second portion of the body being
attached to the head portion at a second location such that the
second portion is movable with respect to the first portion to
change the shape of the opening.
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PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Id.
The Supreme Court in KSR explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
KSR, 127 S. Ct. at 1740-41. The Court noted that “[t]o facilitate review, this
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

Written description
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, 323 F.3d at 969. Rather, “the written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.’” Id. (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).

ANALYSIS
Rejection of claims 1-4, 6, 7, and 9 as anticipated by Nelson
The Appellant argues Nelson does not anticipate claims 1-4, 6, 7, and
9, because Nelson does not teach or suggest “a head structure configured to
define an aperture with a continuous periphery,” as recited in claim 1 (Reply
Br. 2-3). Rather, the Appellant contends that Nelson’s decoy uses hooks that
form an “open” or discontinuous periphery (Reply Br. 3). The Appellant
contends that by reciting that the aperture has a continuous periphery, the
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claims define the aperture as always being closed, because an aperture
without some type of break in the periphery cannot be opened (id.).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The ordinary and customary meaning of the claimed phrase “an
aperture with a continuous periphery” is an opening having an uninterrupted
perimeter that is without breaks (Facts 1-3). This definition is consistent
with the Appellant’s Specification, which describes:
As seen in Fig. 2, the aperture 210 may be formed
in head structure 200 so as to have a continuous
periphery (i.e., the aperture 210 has a closed
circumference). That is, aperture 210 is
configured such that the periphery of aperture 210
has no openings along its circumference that
permit body 400 to be inserted through the edge of
aperture 210. Some prior art decoys, for example,
have slots that extend into the head structure.
Thus, these slots have an opening in their
circumference with flexible hooks that form the
edge of the slot.
(Spec. 11:2-8.)
Nelson discloses a decoy where the body portion is attached to a head
and neck portion using flexible closable hooks (Facts 4-6). As shown in
Figure 7 of Nelson, even when the hooks are closed, the perimeter of
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opening has a break in it (Fact 7). Thus, Nelson does not disclose “a head
structure configured to define an aperture with a continuous periphery,” as
recited in claim 1 (Fact 8). As such, we will not sustain the rejection of
independent claim 1 or its dependent claims 2-4, 6, 7, and 9 as anticipated by
Nelson.

Rejections of claims 2, 5, 8, and 10-14 as unpatentable over Nelson, alone,
or in combination with Jacob or Liechty
As we found supra, Nelson fails to disclose “a head structure
configured to define an aperture with a continuous periphery” (Fact 8).
Jacob and Liechty fail to cure this deficiency of Nelson (Facts 9-12). In
order to set forth a prima facie case of obviousness of claims 2, 5, 8, and
10-14, all of which depend from claim 1, the Examiner must provide a
reason with a rational underpinning as to why one having ordinary skill in
the art would have modified Nelson to make the disclosed hook into an
aperture with a continuous periphery as claimed. The Examiner has failed to
provide such a reason in the rejection of claims 2, 5, 8, and 10-14, and thus
has failed to set forth a prima facie case of obviousness of these claims.

Rejection of claims 15-29 as unpatentable over Farmer
Independent claim 15 recites that the second portion of the body is
attached to the head portion so that it is movable with respect to the first
portion to change the shape of an opening of the body, and independent
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claim 27 recites a method including sliding a first portion of the body along
a longitudinal length of the support to adjust a shape of an opening defined
by the body.
The Examiner found that Farmer shows all of the elements recited in
claims 15-29 except for the body being movable with respect to the first
portion to change the shape of the opening (Ans. 8-9). The Examiner relied
on In re Dailey, 357 F.2d 669 (CCPA 1966) in concluding that “it would
have been obvious to change the shape of the opening depending on wind
conditions so … that the body would appear more life-like by compressing
the top of the body to widen the opening for the wind to blow in” (Ans. 9).
While it might be the case, as in Dailey, that a rearrangement of
existing or known parts would have been obvious where it does not produce
a different function or any new or unexpected results, in the present case,
claims 15 and 27 are directed to more than just a rearrangement of existing
parts. Rather, the claims require a modification to the decoy of Farmer.
Farmer discloses a decoy 10 in which an upper edge section of the
body 40 is attached to a stake unit 20, and the stake 20 passes through an
opening 42 in the lower portion of the body 40 such that the lower portion
hangs free of the stake and the weight of the body 40 serves to extend the
body 40 downwards to open the mouth section 46 to wind (Facts 13-15).
Farmer does not disclose a second portion of the body being attached to the
head portion at a second location such that the second portion is movable
with respect to the first portion to change the shape of the opening (Fact 16).
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As such, a modification to the attachment of the body to the stake in Farmer
would be necessary to reach the claimed invention. The Examiner has not
provided any reason in the rejection of these claims as to why one having
ordinary skill in the art would have modified Farmer in the manner claimed,
except to recite the Appellant’s own reason for doing so. This amounts to
the use of hindsight in the Examiner’s rejection. See KSR, 127 S. Ct. at 1742
(“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning”) (citations omitted). Accordingly, we will not sustain the
rejection of claims 15-29.

Rejection of claim 2 for insufficient written description
The Examiner found claim 2 unpatentable because “the specification
is vague at exactly how the tying is done between the body and the aperture
on the head structure” (Ans. 6). The Examiner also found that the drawings
were unclear as to how the body is tied to the head structure (id.).
The Appellant’s Specification describes, “[w]ith respect to the
attachment of the body 400 to the head structure 200, a first portion 440 of
body 400 that is adjacent to opening 400 may be threaded through aperture
210 and tied, for example, thereby forming a secure attachment” (Spec.
10:26 – 11:1). Further, claim 2 as originally filed recites, “[t]he decoy of
claim 1, wherein the portion of the wind-inflatable body is threaded through
the aperture and tied.” Thus, the Appellant’s Specification includes virtually
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the identical language as to what is now recited in claim 2 on appeal.
However, the written description requirement is not necessarily met as a
matter of law because the claim language appears in ipsis verbis in the
specification. Enzo Biochem, 323 F.3d at 968 (“The appearance of mere
indistinct words in a specification or a claim, even an original claim, does
not necessarily satisfy [the written description] requirement.”). The
disclosure must allow one skilled in the art to visualize or recognize the
identity of the subject matter purportedly described. Id. (citation omitted).
In this case, the Examiner found that one having ordinary skill in the
art would not be able to recognize from the description in the Specification
and the Drawings exactly how the body portion would be tied through the
aperture in the head. We disagree.
The language used in the Appellant’s Specification and original claim
2 is sufficient to convey to one having ordinary skill in the art how to attach
the body portion to the head of Appellant’s decoy, as recited in claim 2. In
particular, this description provides that one would thread a portion of the
body through the aperture and then tie this threaded portion. For example,
the threaded portion could be tied about itself into a knot of sufficient
diameter so that the knot would not fit through the aperture, thereby securing
the body to the head.
As such, we find the Appellant’s Specification contains sufficient
written description to convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, applicant was in possession of the
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invention as now claimed. Accordingly, we will not sustain the rejection of
claim 2 under 35 U.S.C. § 112, first paragraph.

CONCLUSIONS
We conclude the Appellant has shown that the Examiner erred in
rejecting under 35 U.S.C. § 102(b) claims 1-4, 6, 7, and 9 as anticipated by
Nelson, under 35 U.S.C. § 103(a), claims 2 and 5 as unpatentable over
Nelson, claim 8 as unpatentable over Nelson and Liechty, claims 10-14 as
unpatentable over Nelson and Jacob, and claims 15-29 as unpatentable over
Farmer, and under 35 U.S.C. § 112, first paragraph, claim 2 as failing to
satisfy the written description requirement.

DECISION
The decision of the Examiner to reject claims 1-29 is reversed.

REVERSED

JRG

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