Ex Parte Donoho

Board of Patent Appeals and Interferences

Oct 30, 2008

10464712 (B.P.A.I. Oct. 30, 2008)

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
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Decided: October 30, 2008
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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
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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
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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).
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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
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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).
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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.
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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

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