Ex Parte Conte

Board of Patent Appeals and Interferences

Jan 28, 2011

10643288 (B.P.A.I. Jan. 28, 2011)

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.
10/643,288 08/20/2003 Francis Luca Conte 23FLC31 4031
20185 7590 01/28/2011
FRANCIS L CONTE
6 PURITAN AVENUE
SWAMPSCOTT, MA 01907
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
01/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANCIS LUCA CONTE
____________________

Appeal 2008-003533
Application 10/643,288
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
JOHN C. KERINS, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2008-003533
Application 10/643,288
2
STATEMENT OF CASE
This is a decision on a Request for Rehearing filed on April 28, 2009.
The Board issued a Decision on March 2, 2009.
We deny.

ANALYSIS
This is a response to a request for rehearing in the above noted appeal.
Requests for rehearing are limited to matters overlooked or misapprehended
by the Panel in making the original Decision. In the introduction to
Appellant’s Request for Rehearing Appellant states that the Board has made
erroneous findings of fact, failed to properly apply the KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007) decision, not considered Appellant’s
claims as a whole, and has used impermissible hindsight in the obviousness
rejections of Appellant’s claims on appeal. Appellant further states that the
Board has distorted facts, misapplied the four references out of context,
misapplied KSR, and failed to consider the claims as a whole.
Several of Appellant’s arguments recur throughout the Request for
Rehearing and we consider these recurring arguments first.
Appellant discusses our footnote 3 which pertains to the Examiner
rejecting claims as obvious over White in view of Watkins and rejecting
claims as obvious over Watkins in view of White. Ans. 3. The following is
a quote from In re Bush, 296 F.2d 491, 496 (CCPA 1961) which is the case
that we cited in our footnote:
In a case of this type where a rejection is predicated on
two references each containing pertinent disclosure which has
been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in
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3
view of A, or to term one reference primary and the other
secondary. It would perhaps have saved much argument of the
kind we have before us if the Patent Office had stayed with its
rejection of the claims as unpatentable over A and B
‘considered together’ and had merely stated its reasons for such
rejection without formal alinement of the references. Fifteen
years ago this court pointed out in In re Cowles, 156 F.2d 551,
554[ CCPA 1946], that such differing forms of expression did
not constitute different grounds of rejection, were of little
consequence, and that basing arguments on them was
‘attempting to make a mountain out of a mole-hill.’
As is apparent from this jurisprudence, rejections under 35 U.S.C. § 103 are
based on the combined teachings of the references. Therefore, with
rejections made on obviousness grounds under 35 U.S.C. § 103, a rejection
labeled A in view of B is really the same as a rejection labeled B in view of
A. This was the principle of law we were trying to convey in our footnote 3,
albeit in a brief, perhaps too concise, way.
We also note that Appellant argues at numerous places about how this
or that feature from one reference could not be incorporated in another
reference. However,
[T]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of a primary reference . . . . Rather, the test is what
the combined teachings of those references would have
suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 414, 425 (CCPA 1981) (citations omitted); see also In
re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted) (“it is not
necessary that the invention of the references be physically combinable to
render obvious the invention under review”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“[c]ombining the teachings of references does not
involve an ability to combine their specific structures”). Thus, a conclusion
of obviousness does not require, for example, the features of Watkins to be
Appeal 2008-003533
Application 10/643,288
4
bodily incorporated into the gun of White. Arguments based on such a
bodily incorporation therefore fail to convince us that we have overlooked or
misapprehended matters in our original Decision.
We further note that Appellant quoted Kropa v. Robie, 187 F.2d 150,
152 (CCPA 1951) at several points in the Request for Rehearing.
Appellant’s argument is that his preamble states that the claimed subject
matter is directed to an insect swatter, while the applied references are
directed to toy rubber band guns. A preamble is not limiting “‘where a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use of the invention.’”
Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002) quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
Perhaps a simple example would serve to illustrate this principle for
Appellant. Consider the following claim: “A heavy doorstop comprising a
rectangular parallelepiped block of fired clay.” We all recognize the subject
matter of the claim is a brick. Can the inventor obtain patent protection by
reciting that the invention is a doorstop? No, in this case the preamble is not
limiting. Likewise in Appellant’s claims on appeal, the body of the claims
define structurally complete inventions, and the preambles only state a
purpose or intended use of the invention.
Additionally, the Kopp patent has relevance to this matter. While
Kopp titles his invention a toy gun, the invention is disclosed as for striking
flies or other insects. See Kopp, p. 1, ll. 14-15. Therefore, Kopp
demonstrates a recognition in the art that toy guns that shoot or whip rubber
bands can be used to kill flies. This is an express disclosure that the cited
references function as fly swatters.
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5
At several locations in the Request for Rehearing Appellant argued
dismissively about the status of the applied references as “mere toys.” We
do not believe that our Decision implied that toys are not a serious field for
inventive endeavor or somehow have a secondary status in the useful arts.
Many simple toys have been patented and have brought pleasure to millions.
We are not convinced that the references applied by the Board and the
Examiner have a secondary status in the art because they are directed to
toys. This is especially true, inasmuch as at least one of these toy patents
recognizes that these toys have a practical utility in that they can strike flies
or other insects.
Along this line, Appellant argued that the applied references having
the nature of toys are not analogous art to Appellant’s insect swatter. Even
if we were to ignore the express teaching in Kopp that rubber band guns can
be used to shoot or whip flies and other insects, we believe that these toys,
notwithstanding their toy label, are reasonably pertinent to Appellant’s
problem, and as we noted in our Decision, the Federal Circuit agreed with
this assessment in a prior appeal. See In re Conte, 36 Fed. App’x. 446, 450
(Fed. Cir. 2002). As such, we believe that Appellant’s arguments with
respect to non-analogous art are foreclosed by a prior court decision.
Throughout the Request for Rehearing, Appellant challenges our
Finding of Fact 3. For example, on page 4 Appellant states that the Finding
of Fact 3 “is clearly erroneous, . . . reliance thereon is . . . unwarranted and
erroneous.” Our finding was merely that the rubber bands of White appear
identical and there is little reason to suspect that they are not. Therefore, we
found that, to a preponderance of the evidence, White discloses that identical
rubber bands are used when multiple rubber bands are employed. Decision
5.
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Our understanding of White is that the rubber bands are transversely
cut from the undamaged tube of an unusable tire inner tube. When the tube
is cut transversely, multiple rubber bands are formed. Due to the cross-
sectional nature of the cut and the uniformity of the inner tube, the bands all
have the same circumference and the same thickness and they are composed
of the same material. The only unknown dimensional characteristic of the
bands is the thickness of the bands in the circumferential direction of the
entire inner tube. In examining Figures 1 and 2 of White, this width appears
to be similar for all three rubber bands depicted. Therefore, the only
evidence we have about the bands in White points to the rubber bands being
essentially similar, if not identical. Thus it was our finding that by a
preponderance of the evidence the rubber bands of White are apparently
identical. We acknowledged in our finding that White does not state that the
rubber bands are identical, but on the other hand, he does not state that they
are not identical. So we carefully weighed the evidence and determined that
the rubber bands of White were substantially identical to a preponderance of
the evidence.
Appellant states that the White rubber bands are hand cut. Req.
Reh’g. 8. In our view this is speculation on the part of the Appellant.
Appellant further states on page 6 of the Request for Rehearing that White’s
rubber bands are expressly not identical. This is not the case as we have
found that White is silent with respect to whether the rubber bands are
identical or not. Moreover, it was our finding in Finding of Fact 21 that
standard rubber bands are commercially available at common stationery
supply stores. Decision 9. We regard this as an admission by Appellant
about the prior art, and if this admission were not present, we would have
taken Official Notice that packaged, identical rubber bands are available.
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7
On page 14 of our Decision we discussed the obviousness of using identical
rubber bands and stated that the use of identical rubber bands available in
packages is a matter of design choice which does no more than yield a
predictable result of facilitating construction. We might add that using
identical rubber bands also aids in the consistency of operation of the device.
In summary, we stand by Finding of Fact 3 and point out to Appellant
that even if White did not teach the use of identical rubber bands, the use of
such rubber bands would have been obvious to one of ordinary skill in the
insect swatter art.
On page 6 of the Request for Rehearing, Appellant argues that our
Finding of Fact 10 regarding the slot is irrelevant. Finding of Fact 10 is
directed to the scope and content of the White reference and it also states the
differences between White and the claimed subject matter. Decision 7.
Appellant has failed to state any matter misapprehended or overlooked with
respect to Finding of Fact 10.
On page 7 of the Request for Rehearing Appellant criticizes Finding
of Fact 12. Finding of Fact 12 states that Watkins discloses that a rubber
band gun may be converted between operational modes wherein upon firing
the rubber band is ultimately retained on the gun or discharged from the gun.
Decision 7. In our view, Finding of Fact 12 is fully justified from the
disclosure of Watkins. One of ordinary skill would understand from the
disclosure that whether the rubber band is retained on the gun is entirely
optional and that a gun may be converted to operate either way.
Appellant criticizes Finding of Fact 13 on page 8 of the Request for
Rehearing. Appellant partly bases his criticism on the fact that he has
conjectured that the rubber bands of White are handmade. As noted above,
this is a supposition or conjecture by Appellant. Furthermore we must
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reiterate that use of identical rubber bands in an insect swatting device is a
use of a simple expedient in the art having predictable results and thus is not
a patentable step or element under KSR.
On page 8 of the Request for Rehearing, Appellant mentions his prior
patent (Conte, US 6,851,218). As Appellant is aware, the claims in that
patent are directed to latch features not claimed in the present application.
On page 9 of the Request for Rehearing, Appellant criticizes our
application of Hooke’s Law but does not allege that we misapprehended or
overlooked any matters relevant to Hooke’s Law in Finding of Fact 13.
Also on page 9 of the Request for Rehearing, Appellant criticizes our
Finding of Fact 15, but other than claiming that our finding has no relevance,
Appellant does not specifically point out any matter that was overlooked or
misapprehended.
Also on page 9 of the Request for Rehearing, Appellant takes issue
with Finding of Fact 21 which Appellant says is an erroneous use of
Appellant’s own Specification. As explained above, it is clear that the fact
referred to in Finding of Fact 21 is an admission by Appellant that standard
rubber bands are commercially available. As noted above, if Appellant does
not believe that this is an admission on his part, the Board hereby takes
Official Notice that packages of rubber bands of identical character are
available in stationery stores and office supply warehouses.
On page 9 of the Request for Rehearing, Appellant criticizes Finding
of Fact 22 on the grounds of non-analogous art. On page 10 of the Request
for Rehearing, Finding of Fact 23 is also disputed on the same basis. We
have responded to this allegation, supra.
On page 10 of the Request for Rehearing, Appellant argues that
Finding of Fact 26 is erroneous and taken out of context. We have carefully
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9
reviewed this finding in light of Appellant’s argument and can find no
matter that was overlooked or misapprehended.
On page 11 of the Request for Rehearing, Appellant states that we
have chosen to disregard the issuance of the parent patent. As noted above,
the claims in the parent patent are directed to a latch feature not present in
the claims on appeal.
On pages 11 and 12 of the Request for Rehearing, Appellant again
argues that White is a toy gun whereas Appellant’s invention is an insect
swatter. We have considered these arguments, supra.
On page 13 of the Request for Rehearing, Appellant attacks our
assertion that the intended purpose of White is to provide a toy and that there
is no evidence that White would cease to be operable if the rubber band were
fixed to the distal end of the gun. Appellant states that we have not stated a
legal basis for this conclusion. It is clear from our Decision that White
would not cease to function for its intended purpose, inasmuch as Watkins
teaches that the rubber band could be a fixed lash in a handheld pistol-like
toy.
Next, on page 14 of the Request for Rehearing, Appellant continues to
discuss the issue of a toy vis-à-vis an insect swatter. We have discussed
these issues, supra.
On page 15 of the Request for Rehearing, Appellant argues that KSR
has been misapplied in that no predictable result has been pointed out. We
refer Appellant to the sentence bridging pages 13 and 14 of our Decision.
We further determined that Watkins teaches such a modification.
On page 16 of the Request for Rehearing, Appellant asks rhetorically
where is the evidence in White “that instead of keeping the free end free that
the free end could or would with any predictability be fixed to prevent
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10
discharge.” Appellant’s argument is merely that White is not an anticipatory
reference. This argument is of no moment as this rejection is under 35
U.S.C. § 103.
On pages 16 and 17 of the Request for Rehearing, Appellant again
discusses the order of the references in the statement of the rejection. This
has been discussed supra.
On page 18 of the Request for Rehearing, Appellant admits that
Watkins teaches that its toy gun could be modified into the toy gun of White
to shoot or discharge rubber bands. However, Appellant disputes that it
would have been obvious for the converse modification. We reject this
contention. The statute presumes that the worker in the relevant art will
have ordinary skill. Appellant is positing some sort of automaton or robot
worker with selective memory. Appellant is positing a worker in the art, that
when expressly taught that A can be converted to B, is stymied when the
conversion required is from B to A. In our view, the modification from A to
B clearly suggests to the artisan that the modification of B to A is entirely
predictable.
On pages 19 through 21 of the Request for Rehearing, Appellant
includes arguments relating to the identical rubber bands. We have
discussed Finding of Fact 13 and our conclusion that using commercial,
identical rubber bands would have been obvious, supra.
On pages 23 through 25 of the Request for Rehearing, Appellant
continues the discussion with respect to Hooke’s Law and the relative
strengths of the rubber bands. We stand by our Findings of Fact on this
issue and can find no material that Appellant has specifically pointed to
which was overlooked or misapprehended.
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11
On page 28 of the Request for Rehearing, Appellant discusses the
various slots found in the references. We find nothing in this discussion that
points to matters overlooked or misapprehended by the panel in rendering
the Decision.
On page 29 of the Request for Rehearing, Appellant states that we
have failed to address the specific features of the claim and used hindsight
reconstruction in our analysis. We disagree with Appellant’s
characterization of the rationale for our rejection.
Furthermore, on page 30 of the Request for Rehearing, Appellant
states that we have not considered the invention as a whole. We disagree
with this assertion and refer Appellant to the explicit rationale of the
rejection in our Decision.
On page 31 of the Request for Rehearing, Appellant states that the
Board disregarded fundamental differences between Appellant’s invention
and that of the prior art. In our Findings of Fact we carefully reported the
differences between the claimed subject matter and the applied prior art.
Decision 5-10. Appellant has pointed to no matters misapprehended or
overlooked in our Findings of Fact.
On page 32 of the Request for Rehearing Appellant again discusses
the slots of the various references and argues that they are different. We
admitted as much in our Decision. However, the relevant inquiry is whether
the differences would have been obvious to one of ordinary skill in the art.
Appellant argues on page 32 of the Request for Rehearing that the
Board has failed to state what simple substitutions with predictable results
that the Board is relying on with respect to White and Watkins. As noted
above, our Decision is clear in this regard and we will not comment further.
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12
On pages 33 through 35 of the Request for Rehearing, Appellant again
raises the issue of an insect swatter vis-à-vis a toy gun. We have discussed
this issue, supra.
Pages 36 through 38 of the Request for Rehearing include an
individual attack on the Watkins reference. Then Appellant states that the
Board should provide caselaw and the requisite legal analysis for its
rejections. As noted above, such a general request fails to point out matters
that were overlooked or misapprehended.
On page 38 of the Request for Rehearing, Appellant states that it
would be impossible to substitute the three band elastic member of White for
the disparate single band of Kopp. As we explained at the outset, bodily
incorporation is not the standard for a rejection under 35 U.S.C. § 103.
Although the statute does not require bodily incorporation, it is unclear to us
why this substitution would be physically impossible. Appellant does not
explain, and Appellant further disregards the ordinary skill of the worker in
this art to suitably size the elastic members.
On page 41 of the Request for Rehearing, Appellant states that the
Kopp gun so modified would be unrecognizable to its inventor.
Recognizability to the inventor is not the standard for obviousness under 35
U.S.C. § 103. Nor do we believe, as Appellant states on page 41 of the
Request for Rehearing, that Kopp would fail in its intended purpose if so
modified.
On page 42 of the Request for Rehearing, Appellant includes a
discussion of how the features of the applied references cannot be bodily
incorporated. As noted above, this is not the standard for 35 U.S.C. § 103.
On page 43 of the Request for Rehearing, Appellant states that we
have ignored express claim language by referring to design choice and
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Hooke’s Law in the sizing of the elastic members. Appellant has failed to
point out matters that were misapprehended or overlooked with regard to the
nature of the elastic members.
On page 44 of the Request for Rehearing, Appellant again attacks our
statement that the order of the references in the statement of the rejection is
immaterial. We have discussed this issue, supra.
Also on page 44 of the Request for Rehearing, Appellant states that it
is not a mere simple substitution to replace the triple band of White for the
disparate band in Kopp as the bands are different, the mounts are different
and the functions are different. As noted above, the real standard is whether
these differences would have been obvious to one of ordinary skill. Our
Decision answers in the affirmative.
On pages 44 and 45 of the Request for Rehearing, Appellant argues
that notwithstanding the Board’s conclusion that the order of references in
the statement of rejection is immaterial, we have restated the rejections when
relying on Kopp. We note that a rejection under the combined disclosures of
White and Watkins is different from a rejection relying on the combined
features of Kopp and White.
On pages 46 and 47 of the Request for Rehearing, Appellant mentions
the prior Conte patent and asks that the Board apply res judicata to claims
that find their support in the patent already issued. As noted above, this
patent is directed to a latch which is not a part of the claimed subject matter.
Appellant states on page 47 of the Request for Rehearing, that he
traverses the rejection under 35 U.S.C. § 103 based on Kopp, White and
Stone. However, Appellant has failed to show any matter that was
misapprehended or overlooked by the Board in rendering this rejection.
What follows is merely a restatement of the arguments regarding simple
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substitution, toy vis-à-vis insect swatter, design choice and predictable
result, and the alleged errors of fact. We have discussed these issues supra.
On page 50 of the Request for Rehearing, Appellant again raises the
issue of Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). We have
discussed this issue supra.
In summary, we have granted Appellant’s Request for Rehearing to
the extent that we have reconsidered our previous Decision. However, with
respect to making any changes thereto, the Request for Rehearing is denied
in its entirety. This is a final Agency decision for civil action or appeal.

DENIED

nlk

FRANCIS L CONTE
6 PURITAN AVENUE
SWAMPSCOTT MA 01907