10132497 (B.P.A.I. Mar. 6, 2009)

Ex Parte Burrison

Board of Patent Appeals and InterferencesMar 6, 2009

10132497 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KEITH E. BURRISON ____________ Appeal 2009-0263 Application 10/132,497 Technology Center 3700 ____________ Decided:1 March 6, 2009 ____________ Before PETER F. KRATZ, ROMULO H. DELMENDO, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). 1 Appeal 2009-0263 Application 10/132,497 DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3, and 5.2 Claim 4 also stands rejected, but Appellant has not appealed the rejection of this claim. App. Br. 2; Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Claims 1, 3, and 5 are the claims on appeal and are set forth below: 1. An animal lure comprising: a flexible pouch, flexible sheet material having shape memory contained within said pouch which, when deflected by deformation of said pouch, emits an audible noise which simulates the sound of an animal walking on fallen leaves. 3. The invention as defined in claim 1 wherein said flexible sheet material comprises a polymeric material. 5. The invention as defined in claim 1 wherein said pouch is constructed of a plastic material. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Valle US 5,224,774 Jul. 6, 1993 Rieder US 6,348,093 B1 Feb. 19, 2002 SUMMARY OF THE DECISION We affirm. 2 Appellant states that claim 7 is also on appeal, but the Examiner has not maintained the rejection of this claim. App. Br. 2; Ans. 3-4. Appeal 2009-0263 Application 10/132,497 THE REJECTIONS The Examiner has rejected claims 13, 3, and 4 under 35 U.S.C. §102(b) as anticipated by Valle. The Examiner has rejected claims 1, 3, 4, and 5 under 35 U.S.C. §102(e) as anticipated by Rieder. ISSUE With regard to the anticipation rejection involving Valle, the issue is whether the Examiner improperly relied upon multiple references in making the anticipation rejection? With regard to the anticipation rejection involving Rieder, the issue is whether Appellant has shown that the product in Rieder is not functional as an animal lure as claimed? FINDINGS OF FACT Valle discloses fibers (12) contained in a bag (14). Valle does not disclose a sheet material contained in the bag. Rieder discloses a pouch made of a polymeric material. Col. 2, ll. 55- 68, col. 3, ll. 1-25, col. 8, ll. 36-50. Polypropylene fibers in the form of fillibratable sheets are contained in the pouch. Col. 9, ll. 43-68 - col. 10, ll. 1-13. 3 Claim 1 is the only independent claim under rejection. On page 3 of the Final Office Action mailed April 14, 2005, the Examiner allowed claims 9 and 10. PRINCIPLES OF LAW When the prior art product is either identical with or only slightly different from Appellant’s claimed subject matter, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. “Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). An invention directed to a new use, new function or unknown property is not patentable if prior art embodiments inherently possess the use, function, or property. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). To anticipate a claim, a single source must contain all elements of the claim, Hybritech Inc. v Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379 (Fed. Cir. 1986). Inc., 802 F.2d 1367, 1379 (Fed. Cir. 1986). Missing elements may not be supplied by the disclosure of another reference. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984). ANALYSIS Appellant has not contested the rejections of claim 4 as anticipated by either Valle or Rider. Accordingly, we summarily affirm the rejections of claim 4. With regard to the anticipation rejection of claims 1 and 3 involving Valle, beginning on page 3 of the Brief, Appellant argues that Valle discloses fibers contained in a bag rather than sheet material contained in a 4 bag (pouch), as claimed. Appellant refers to a Random House Dictionary definition of the word “sheet” to support his position that fibers and a sheet are not the same. On page 4 of the Answer, the Examiner states that the fibers of Valle are basically the same as the fibers disclosed in Rieder (in an effort to support his position that the fibers can be in the form of a sheet). In other words, the Examiner is relying upon more than one reference in making the anticipation rejection. We note, however, that to anticipate a claim, a single source must contain all elements of the claim, Hybritech, 802 F.2d at 1379. Missing elements may not be supplied by the disclosure of another reference. Structural Rubber, 749 F.2d 707 at 716. Therefore, the anticipation rejection of claims 1 and 3 involving Valle is in error. With regard to the anticipation rejection of claims 1, 3, and 5 involving Rieder, Appellant has argued these claims together. We therefore select claim 1 as representative and limit our discussion of this rejection to claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Beginning on page 4 of the Brief, Appellant argues that Rieder discloses the use of a sheet, but only in reference to the packaging material (rather than the material contained in the pouch). This is an incorrect proposed finding. On page 4 of the Answer, the Examiner correctly points out that column 9, lines 53-60 of Rieder teaches to use sheets for the material contained in the pouch. We specifically refer to column 9, beginning at line 43, of Rieder in this regard. Therein, Rieder specifically describes that fibers are contained in the packaging material and that the fibers can be in the form of “fibrillatable sheets”. Appellant’s claimed “sheets,” when given its broadest reasonable construction consistent with the Specification (which 5 places no limitation on the dimensions of the “sheets”), reads on the fibrillatable sheets described in Rieder. Therefore, both the pouch [of Rieder and of Appellant’s claimed subject matter] and the material contained in the pouch [of Rieder and of Appellant’s claimed subject matter] are made of the same or similar materials, and therefore, as stated by the Examiner on page 4 of the Answer, Appellant’s claimed functions are inherent in the product of Rieder. The burden is upon Appellant to prove that the product in Rieder is not functional as an animal lure as claimed. Fitzgerald, 619 F.2d at 70; Best, 562 F.2d at 1255. Appellant has not provided such proof. On page 5 of the Brief, Appellant argues that Rieder does not disclose an animal lure. We note that an invention directed to a new use, new function or unknown property is not patentable if prior art embodiments inherently possess the use, function, or property. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). As stated, supra, Appellant has not proven that the product in Rieder does not possess the functions as claimed by Appellant. CONCLUSIONS OF LAW Appellant has shown that the Examiner improperly relied upon multiple references in making the anticipation rejection of claims 1 and 3. Appellant has not shown that the product in Rieder is not functional as an animal lure as claimed in claims 1, 3, and 5. DECISION The rejection of claim 4 under 35 U.S.C. § 102(b) as anticipated by Valle is summarily affirmed. 6 The rejection of claim 4 under 35 U.S.C. § 102(e) as anticipated by Rieder is summarily affirmed. The rejection of claims 1 and 3 under 35 U.S.C. §102(b) as anticipated by Valle is reversed. The rejection of claims 1, 3, and 5 under 35 U.S.C. §102(e) as anticipated by Rieder is 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)(1)(iv) (effective Sept. 13, 2004). AFFIRMED PL Initial: sld GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C. P.O. BOX 7021 TROY, MI 48007-7021 7 8