Ex Parte DonohoDownload PDFBoard of Patent Appeals and InterferencesOct 30, 200810464712 (B.P.A.I. Oct. 30, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRUCE DONOHO ____________ Appeal 2008-3554 Application 10/464,712 Technology Center 2800 ____________ Decided: October 30, 2008 ____________ Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-8, 10, 11, and 13-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2008-3554 Application 10/464,712 BACKGROUND The invention relates to a bird deterrent. Claim 1 is illustrative: 1. A bird deterrent for coupling to a wire, comprising: a “C” clamp having an opening sized and dimensioned to be tightened about the wire, and a ratcheting, tightening mechanism that compresses a finger against the wire within the opening; a flap; and a connector that couples the clamp and the flap such the flap can move freely in all directions with respect to the clamp. The Examiner relies upon the following prior art references in the rejections of the appealed claims: Morgan 2,768,664 Oct. 30, 1956 Heijnis EP 0 031 855 Dec. 27, 1979 Walker 4,941,633 Jul. 17, 1990 Larumbe 5,425,328 Jun. 20, 1995 The Examiner has rejected claims 1, 2, 4, 16, 17, 19, 22-26, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Heijnis in view of Morgan. To reject claim 4 under 35 U.S.C. § 103(a), the Examiner added Larumbe to the combination of Heijnis and Morgan. To reject claim 11 under 35 U.S.C. § 103(a), the Examiner added Walker to the combination of Heijnis and Morgan. Appellant does not argue with any reasonable specificity any of the individual claims on appeal (App. Br. 6-9; Reply Br. 1-3). Accordingly, we 2 Appeal 2008-3554 Application 10/464,712 will focus our consideration of the present appeal on the Examiner's rejection of claim 1. ISSUE ON APPEAL The issue on appeal arising from the contentions of Appellant and the Examiner is whether the Appellant has shown that the Examiner reversibly erred in rejecting the claims because there existed no motivation or suggestion to combine the teachings of Heijnis and Morgan. The issue turns on whether it would have been prima facie obvious to utilize the C-clamp of Morgan for the clamp mechanism of Heijnis. PRINCIPLES OF LAW “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 legal 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) secondary considerations, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 127 S. Ct. at 1739. The question to be asked is “whether the 3 Appeal 2008-3554 Application 10/464,712 improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 127 S. Ct. at 1740. The Federal Circuit recently recognized that “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). FINDINGS OF FACT 1. Heijnis describes a warning device for birds (i.e., “a bird deterrent” as recited in Appellant’s claim 1) including a clamp 2, a silhouette of a bird 4 (i.e., a “flap” as recited in Appellant’s claim 1) and a closed hook connector 3 that couples the clamp and the flap such that the flap can move freely in all directions with respect to the clamp (see, e.g., col. 3, ll. 12-20; Fig. 1). 2. Heijnis states that the clamp is a “clamping sleeve 2, for example of the type with bolts and wing nuts (not shown), which is clamped about the bearing cable 1.” (p. 3, ll. 12-17; emphasis provided). 3. Heijnis does not describe that the clamp is a C-clamp as recited in claim 1 of the present appeal. 4. Morgan describes a C-clamp having a ratcheting, tightening mechanism 21 that permits tightening of an object to be clamped in an opening by via a screw 14 with a jaw 13 (i.e., a finger) compressed against the object in-between the jaw 11 and jaw 13 (e.g., Fig. 1; col. 1, ll. 15-20; col. 2, ll. 35-43). 4 Appeal 2008-3554 Application 10/464,712 5. Advantages of the “improved quick-acting” C-clamp described in Morgan include “simple in construction”, “effective and reliable in its operation”, “can apply powerful pressures to a workpiece”, “small and compact”, “economical to manufacture” and “easy to operate” (col. 1, ll. 25-45). 6. Appellant bases no argument upon objective evidence of nonobviousness, such as unexpected results. OPINION The Appellant does not dispute the Examiner’s finding that Heijnis describes a bird deterrent that is clamped onto a wire (FF 1). The Appellant also does not dispute that Morgan describes a C-clamp as recited in claim 1 (FF 2). Appellant contends, however, that there is no motivation or suggestion to combine the teachings of Heijnis and Morgan (App. Br. 5-8; Reply Br. 2-3). We disagree. We agree with the Examiner that it would have been prima facie obvious to modify the device of Heijnis by providing a C-clamp for the advantage of using a known reliable clamping mechanism, and thus arrive at Appellant’s claimed invention as set forth in claim 1 (Ans. 5-9). The Supreme Court noted in KSR that although the teaching, suggestion, motivation test “captured a helpful insight,” an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741. The knowledge that C-clamps were a desirable type of clamp having many known advantages would have been within the 5 Appeal 2008-3554 Application 10/464,712 ordinary skill in the art, as evidenced by Morgan (FF 4-5). Furthermore, one of ordinary skill in the art is also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at 1742. Therefore, it would have been prima facie obvious at the time the invention was made to have used the C-clamp of Morgan for the clamp of Heijnis. The “improvement” herein appears to be no more than the predictable use of a known clamp for its known purpose, for the predictable result of clamping a known prior art bird silhouette onto a wire. See KSR, 127 S. Ct. at 1739-40 (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Further, it is well established that “the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). See also, KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). One of ordinary skill in the art would have appreciated that one way to ensure a reliable clamp for the flap of Heijnis would have been to use a known prior art C-clamp. Furthermore, Appellant has presented no evidence that the inclusion of a C-clamp in the prior art warning device for birds was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d at 1162 (citing KSR, 127 S. Ct. at 1741). 6 Appeal 2008-3554 Application 10/464,712 Appellant’s argument that the Examiner’s reliance on Heijnis’ disclosure of a snap hook relies upon a misreading of the reference is not well taken (Reply Br. 2), since it was Appellant who stated that the clamp of Heijnis was “a closed hook or snap hook” (App. Br. 7). The Examiner is merely repeating Appellant’s apparent misreading of the reference in responding to Appellant’s arguments (Ans. 6). However, as pointed out by the Examiner in the rejection, Heijnis discloses a clamp 2 and an connector 3, which may be a closed hook (Ans. 3; see also FF 1). We have considered Appellant’s other arguments in the Appeal Brief and Reply Brief, but do not find any of them persuasive. Thus, we sustain the Examiner’s § 103 rejection of claim 1, as well as not separately argued claims 2, 4, 16, 17, 22, 24-26, 29, and 30, based on Heijnis and Morgan. Dependent claims 4 and 11 With respect to the § 103 rejections of dependent claims 4 and 11, Appellant’s only additional contention is that since “the Office must pull elements from four different references”1, then “the Office is just grasping at straws” (App. Br. 8; emphasis in original). This argument is not persuasive of any error in the Examiner’s rejections. The Examiner explained with specificity the factual findings and reasons for the rejection of each of claims 4 and 11 (Ans. 5, 6). Thus, Appellant has not established that the Examiner erred in making out a prima facie case of obviousness for either of these claims. 1 The Examiner relied upon a total of three references to reject each claim. 7 Appeal 2008-3554 Application 10/464,712 Accordingly, we sustain the Examiner’s § 103 rejections of claims 4 and 11. CONCLUSION The Primary Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED PL Initial: sld FISH & ASSOCIATES, PC ROBERT D. FISH 2603 MAIN STREET SUITE 1050 IRVINE, CA 92614-6232 8 Copy with citationCopy as parenthetical citation