Ex Parte Donoho

Board of Patent Appeals and Interferences

Jul 29, 2010

11376270 (B.P.A.I. Jul. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRUCE DONOHO
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Appeal 2009-011013
Application 11/376,270
Technology Center 3600
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-011013
Application 11/376,270

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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1-18 under 35 U.S.C. § 112, first paragraph, 3
for lack of enablement; finally rejecting claims 1, 2, 4, 9-12 and 14 under 35 4
U.S.C. § 102(b) as being anticipated by Bunkers (US 5,095,646, issued Mar. 5
17, 1992); and finally rejecting claims 3, 5-8, 13 and 15-18 under 35 U.S.C. 6
§ 103(a) as being unpatentable over Bunkers. We have jurisdiction over the 7
appeal under 35 U.S.C. § 6(b). 8
We REVERSE. 9
Claims 1 and 17 are independent. Claim 1 is illustrative of the claims 10
on appeal. 11
1. An animal deterring device comprising a carrier 12
having a first conductive trace that is separated 13
from a second conductive trace by an arc 14
suppressor that has at least one of (a) an 15
umbrelloid shape, and (b) a configuration effective 16
to increase creep distance between the first and 17
second conductive traces by at least 1.5 times. 18
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The Rejection of Claims 1-18 Under § 112, First Paragraph 20
In rejecting claims 1 and 17 under § 112, first paragraph, the 21
Examiner finds that an electrical power source is critical or essential to the 22
operation of the animal deterring devices of claims 1 and 17. (Ans. 3). The 23
Examiner concludes that claims 1 and 17, as written, are sufficiently broad 24
to encompass animal deterring devices without electrical power supplies. 25
Citing In re Mayhew, 527 F.2d 1229 (CCPA 1976), the Examiner further 26
concludes that the Specification does not enable the full scope of claims 1-27
18, namely, the use of devices without electrical power supplies. (Ans. 3). 28
Appeal 2009-011013
Application 11/376,270

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The Examiner fails to identify any other reason why the Specification might 1
not enable the subject matter of any of claims 1-18. The Appellant contends 2
that one of ordinary skill in the art familiar with the Specification could 3
combine a suitable power supply with the claimed subject matter without 4
undue experimentation.2 (App. Br. 11; Reply Br. 4). 5
One of ordinary skill in the art reading the Specification as filed 6
would have understood that electrified animal repellant tracks such as those 7
described in the Specification (see Spec. 8) would have required an electrical 8
power source to operate. (See, e.g., Bunkers, col. 2, ll. 14-16 (disclosing the 9
connection of the contact wires of a bird extermination device with a source 10
of electrical power)). Beyond this, the Specification does not describe any 11
particular power source as critical to the use of either of the devices claimed 12
in claims 1 and 17. 13
The Examiner bears an initial burden of setting forth a reasonable 14
explanation as to why the Examiner believes that the scope of protection 15
provided by the claim is not adequately enabled. In re Wright, 999 F.2d 16
1557, 1561-62 (Fed. Cir. 1993). The Examiner’s finding that there are many 17
different types of power supplies available to those engaged in the field of 18
endeavor to which the claimed subject matter relates (see Ans. 6) does not 19
meet the Examiner’s burden. As the Appellant argues, what is well known 20

2 Since the Appellant has not identified where in the record Burdick
(US 5,850,808, issued Dec. 22, 1998); Negre (US 6,006,698, issued Dec. 28,
1999); McGill (US 6,925,748 B2, issued Aug. 9, 2005); Snow (US
6,928,768 B1, issued Aug. 16, 2005); Ravenelle (US 7,249,436 B2, issued
Jul. 31, 2007); and Riddell (US 2005/0132635 A1, publ. Jun. 23, 2005) were
cited to the Examiner prior to this appeal, we do not consider those patents
in this appeal as evidence that the subject matter of the appealed claims is
enabled. See 37 C.F.R. § 41.33(d)(2).
Appeal 2009-011013
Application 11/376,270

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in the art is preferably omitted from a patent, citing In re Buchner, 929 F.2d 1
660, 661 (Fed. Cir. 1991). This principle logically follows for an application 2
for a patent, i.e., the application preferably omits what is well known in the 3
art. Moreover, the Examiner has not cogently explained how the 4
Specification omitting a description of a power supply allows the Examiner 5
to reasonably conclude that that one skilled in the art would be unable to 6
carry out the claimed subject matter without undue experimentation. See id. 7
In view of the foregoing, we do not sustain the rejections of claims 1 and 17, 8
or of their dependent claims, under 35 U.S.C. § 112, first paragraph. 9
10
The Rejection of Claims 1, 2, 4, 9-12 and 14 Under § 102(b) as Being 11
Anticipated by Bunkers and the Rejection of Claims 3, 5-8, 13 and 15-18 12
Under § 103(a) as Being Unpatentable over Bunkers 13
Independent claims 1 and 17 require the use of an arc suppressor. 14
(App. Br. 15-16). The Examiner finds that trough 15 is an arc suppressor. 15
(Ans. 4). More specifically, the Examiner appears to find that the upper 16
surface of the trough 15 suppresses arcs through an air gap between contact 17
wires 17 on opposite edges of the trough 15. (See Ans. 7 (“Applicant states 18
that sparks are just as likely to occur with or without trough 15 by jumping 19
across the trough in a straight line. However, this is incorrect since applicant 20
has not considered the situation when the surface is more conductive than 21
the air. Then, sparks are not just as likely to jump across the air gap.”); see 22
also Final Office Action, mailed May 29, 2008, at 5). 23
The Appellant disagrees, contending that “[t]he term ‘arc suppressor’ 24
should be given the broadest reasonable interpretation consistent with the 25
specification. In general, the purpose of arc suppression is to prevent or 26
decrease the likelihood that electricity deviate from an intended path. In 27
Appeal 2009-011013
Application 11/376,270

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Bunkers and appellant’s invention, the intended pathway of the electrical 1
current is through wires or through a bird or animal that comes into contact 2
with the wires.” (App. Br. 12; see Bunkers, col. 2, ll. 26-31). The 3
Appellant’s arguments suggest that Bunkers does not disclose 4
unambiguously the electrical pathway, if any, between the two contact wires 5
17 when the wires are not contacted by a bird or other animal. (See App. Br. 6
12-13, which suggests two possible pathways between the contact wires). 7
The disclosure of Bunkers is not sufficiently detailed to determine 8
whether the trough 15 is capable of acting as an arc suppressor. The 9
Examiner correctly finds that “the current can move across the gap [between 10
the contact wires] and/or move over the surface of the block 14 depending 11
on the electrical conductivities of the air and the block (made from wood or 12
plastic which are usually considered to be as insulative as is air).” (Ans. 6-13
7). Bunker does not disclose whether the block or the air gap would be more 14
conductive, however. Without this information, it cannot be found that the 15
trough 15 necessarily suppresses electrical arcing across the air gap between 16
the two contact wires, such as by diverting current to the upper surface of the 17
trough. Therefore, the evidence including the disclosure of Bunkers is not 18
sufficient to sustain the Examiner’s finding that trough 15 is an arc 19
suppressor. We do not sustain the rejections of claims 1, 2, 4, 9-12 and 14 20
under § 102(b) as being anticipated by Bunkers. 21
The Examiner has provided no reasoning with some rational 22
underpinning to explain why one of ordinary skill in the art might have had 23
reason to modify Bunkers’ device to include an arc suppressor other than the 24
erroneous finding that the trough 15 is an arc suppressor. We do not sustain 25
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Application 11/376,270

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the rejections of claims 3, 5-8, 13 and 15-18 under 35 U.S.C. § 103(a) as 1
being unpatentable over Bunkers. 2
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DECISION 4
We REVERSE the Examiner’s decision rejecting claims 1-18. 5
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REVERSED 7
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