Ex Parte Ewert

Patent Trial and Appeal Board

Jan 29, 2018

13720276 (P.T.A.B. Jan. 29, 2018)

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.
13/720,276 12/19/2012 Terry S. Ewert W410.12-0008 3705
27367 7590 01/31/2018
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
01/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY S. EWERT
Appeal 2017-003875
Application 13/720,276
Technology Center 3600
Before STEFAN STAICOVICI, JILL D. HILL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Terry S. Ewert (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—9.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as the inventor, Terry S.
Ewert. Br. 3.
2 Claims 10—12 are withdrawn from consideration. Final Act. 1; Br. 5.
Appeal 2017-003875
Application 13/720,276
CLAIMS
Sole independent claim 1, reproduced below, represents the claimed
subject matter:
1. A movable bait cover for covering a wildlife bait pile, the
bait cover comprising:
a movable cover;
a swing arm externally connected to the movable cover
by a secured connection at a first end of the swing arm; and
a controller spaced apart from the movable cover and
connected to a second end of the swing arm, the second end
being distal to the movable cover, the controller configured to
control movement of the swing arm and wherein the swing arm
is configured to pivot about the controller and thus move the
movable cover from a first position to a second position
wherein the movable cover is displaceable approximately 180
degrees from the first position to the second position; and
wherein the bait cover is secured to a ground surface in
proximity to the wildlife bait pile to be covered, the movable
cover being secured in a selected position on the ground surface
by engagement of at least one stake connected to the controller
and extending from the controller in a substantially
downwardly direction into the ground surface adjacent the bait
pile to be covered.
REJECTIONS
I. Claims 1,2, and 5—8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goehring (US 7,685,966 B2, issued Mar. 30, 2010), Sisk
(US 6,952,996 B2, issued Oct. 11, 2005), and Graham (US 2,837,861, issued
June 10, 1958) or Doss (US 8,104,224 Bl, issued Jan. 31, 2012). Final Act.
2.
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II. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goehring, Sisk, Graham or Doss, and further in view of
Beecher (US 2007/0125306 Al, published June 7, 2007). Final Act. 5.
III. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Goehring, Sisk, Graham or Doss, and further in view of Webb (US
2,992,503, issued July 18, 1961). Final Act. 6.
OPINION
Rejection I— Claims 1, 2, and 5—8
Claims 1 and 2
The Examiner finds, inter alia, that Figures 3—6 of Goehring disclose
a movable bait cover including a movable cover (22, 24), a swing arm (32,
34) having a first end connected to the movable cover, and a controller 20
connected to a second end of the swing arm. Final Act. 2—3. The Examiner
further finds that Goehring does not disclose that its cover 22, 24 is
displaceable by approximately 180 degrees, but rather by 90 degrees, and
that the swing arm pivots about the controller. Id. at 3. The Examiner finds,
however, that Figures 2—3 of Sisk disclose a cover 9 that is displaceable
approximately 180 degrees, and a swing arm 25 that pivots about a
controller (35, 37), and determines that it would have been obvious for a
person of ordinary skill in the art to modify Goehring’s device so that the
movable cover is displaceable by 180 degrees, “to yield the predictable
result of ensuring proper access to what the movable cover is
covering/protecting.” Final Act. 2—\\ see also Sisk, Abstract.
The Examiner further finds that the combination of Goehring and Sisk
does not disclose that the device and controller are secured to the ground by
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a stake. Final Act. 4. Nonetheless, the Examiner finds that Graham and
Doss disclose a stake (20, 50, respectively) for attaching a bait device to the
ground, and concludes that it would have been obvious for a person of
ordinary skill in the art to modify the Goehring/Sisk device, to include a
stake as disclosed by Graham or Doss “to yield the predictable result of
removably securing the device in place during use.” Id.', see also Graham
1:56—58 and Doss 3:42-45.
Analogous Art
Appellant argues that Sisk fails the first prong of the analogous art test
{see In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)), because Sisk is not
in the same field of endeavor. Br. 10. According to Appellant, Sisk relates
to a cast aluminum lid for a tanker or trailer, whereas the claimed subject
matter relates to a moveable cover for a wildlife bait pile that is movable to
expose and cover the bait pile. Br. 10. Appellant also argues that Sisk fails
the second prong of the analogous art test, because the inventor’s particular
problem is “covering a small wildlife bait pile placed on a ground surface
and exposing the bait to wildlife at selected time to prevent wasting disease
or the contamination of the bait,” whereas Sisk’s particular problem is
increasing safety when opening or closing a “tanker cover by reducing the
leverage required to operate the locks of the cover.” Br. 11. According to
Appellant, the Examiner does not “explain why an inventor seeking to solve
the problem of wildlife baiting control would have look[ed] to [Sisk,
and] . . . the inventor would not have looked to this disclosure in inventing a
device for preventing contamination of wildlife bait and controlling . . .
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access [to] the bait.” Br. 11—12 (citing Circuit Check Inc. v. QXQInc., 795
F.3d 1331 (Fed. Cir. 2015)).
The Examiner responds that Sisk “is pertinent to the problem being
solved of providing an automatically controlled movable door/lid to provide
selected access to what is being covered by the door/lid.” Ans. 2.
For a reference to be “reasonably pertinent” to a problem, it must
“‘logically [] have commended itself to an inventor’s attention in
considering his problem.”’ In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658, (Fed. Cir.
1992)).” Here, Appellant would have us narrowly define the problem to
read the field of the invention into the problem to be solved, which we
decline to do. The problem with which the inventor was involved is
controlling movement of a movable cover between a covered and uncovered
position. Spec. 1 6. Because Sisk discloses that “cover 9 is hingedly
mounted to the manhole cover assembly 5 to be selectively movable
between a closed position ... and an open position” that are approximately
180 degrees from each other (Sisk 3:63—66; Figs. 2 and 3), Sisk logically
commends itself to Appellant’s attention in solving his problem of
controlling movement of a movable cover between a covered and uncovered
position.
Stake for Securing Controller
Appellant also argues that Graham and Doss do not disclose a stake
for securing a controller having a movable cover as recited, because Graham
is directed to a stationary container with no pivotable cover and does not
teach securing a controller to the ground surface, and Doss uses a stationary
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container having a base secured to the ground, but does not pivot any
member about the base and has no controller component. Br. 12—13.
According to Appellant, “[sjimply securing an ant poison containing
apparatus to the ground does not teach securing a controller to a ground
surface where the swing arm pivots about the controller to move the cover
180 degrees with respect to the controller.” Br. 13. Appellant thus asserts
that, because Graham and Doss both teach “simple housings” without any
movable parts, one of ordinary skill in the art would not have considered
Graham and Doss when “staking a controller into the ground and having the
cover pivot about 180 degrees about that controller.” Id.
The Examiner responds that the stakes of Graham and Doss would be
understood to provide increased stability to Goehring’s device “by providing
for a better securement of the device of Goehring to the surface on which it
rests.” Ans. 2. According to the Examiner, the stakes of Graham and Doss
are used similarly to Appellant’s stakes (40, 42), which “extend indirectly
from the controller” by extending through metal bar 44 attached to the
controller. Ans. 2—3 (citing Spec. Fig. 2—6). The Examiner states that using
a broadest reasonable interpretation of the claims in light of Appellant’s
Specification, “the claim limitations of the stake(s) extending from the
controller can be considered an indirect connection and extension of the
stakes with respect to the controller,” which is met by the combined
teachings of Graham or Doss and Goehring, and “would provide for the
stakes to at least be indirectly connected and extending from the controller
via the feeder housing — at 10 of Goehring, and therefore provide for the
connection and extension of the stakes with respect to the controller.” Ans.
3. We are not aware of any reason why the stakes of Graham or Doss would
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be insufficient for use in securing a device with a pivoting cover, or why
their application to such a device would produce other than predictable
results.
Further, Appellant’s arguments regarding the stakes of Graham and
Doss not being attached to a controller or for a pivoting cover are not
persuasive because Appellant’s arguments address the elements individually,
rather than according to the Examiner’s proposed combination of elements.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”) Here, the Examiner determines that the combined teachings of
Goehring and Sisk result in a movable cover that pivots about a controller.
See Final Act. 4. The Examiner then stakes this cover/controller to the
ground based on the teachings of Graham or Doss. Graham’s stake 20
“provides securement means for mounting the base member in any desired
location” (Graham 1:56—58), and Doss’ stake 50 “provide[s] for selective
removable anchoring within soil of other penetrable material” (Dos 2:36—37,
3:42-43). We do not find error in the Examiner’s determination that adding
the ground attachment stake of Graham or Doss to Goehring’s device would
“yield the predictable result of removably securing the device in place
during use.” Final Act. 4.
For the reasons set forth above, we sustain the rejection of claim 1.
Appellant does not provide separate arguments for the patentability of claim
2. See Br. 9—14. Claim 2 falls with claim 1.
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Claims 5, 6, and 8
The Examiner finds that the respective ends of Goehring’s swing arms
32, 34 are connected to the movable cover and the controller by an
attachment mechanism. Final Act. 4—5 (citing Goehring, Figs. 3—6).
Appellant argues that Goehring does not teach “the swing arm and
attachment mechanism securing the cover to the controller as claimed,
because . . . Goehring, simply uses a hinge 32, 34 to secure the lid 22, 24 to
the pet dish 10.” Br. 14. According to Appellant, a standard hinge 32, 34
connected to Goehring’s lid does not suggest a “swing arm that is attached to
both the cover and the controller.” Id.
The Examiner responds that although Goehring does not disclose a
specific attachment, one skilled in the art would understand that Goehring’s
“hinges and covers/lids are clearly attached together via some type of
fastener for the device of Goehring to function as intended for opening the
covers/lids.” Ans. 3.
We agree with the Examiner’s determination that, for Goehring’s
hinge to function as intended, namely, to allow “the lids 22, 24 to rotate
upwardly to the ‘open’ position and downwardly to the ‘closed’ position at
the hinge 32, 34” (Goehring 4:37—39), the hinge must be attached to both the
lid (22, 24) and the housing 10. Appellant’s Specification discloses that
swing arm 26 is attached to “the cover 30 by nut 46 and bolt 48 or other
suitable fastener.” Spec. 119. Appellant does not provide persuasive
argument or technical reasoning that would exclude Goehring’s attachment
from meeting the claimed “attachment mechanism.”
Appellant’s Specification further discloses that “cover 30 and
enclosure box 10 are connected by . . . swing arm 26,” and that “enclosure
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box 10 houses electrical (controller) components.” Spec. Tflf 14, 15. Thus, a
broadest reasonable interpretation of a “controller” consistent with the
Specification includes a housing that contains the control elements.
Goehring’s housing 10 houses electrical circuitry 20 that operates (controls)
each hinge. See Goehring 4:40-43; see also Final Act. 2—3. We do not find
error in the Examiner’s determination that Goehring’s hinge (swing arm) is
secured to a lid (cover) and a housing (controller).
Accordingly, we sustain the rejection of claims 5 and 6. Appellant
does not provide separate arguments for the patentability of claim 8. See Br.
13—15. Claim 8 falls with claim 6.
Claim 7
Claim 7 recites that “the controller includes an automatic timer to
control operation of the swing arm.” Br. 21 (Claims App.). The Examiner
finds that Sisk discloses the controller including an automatic timer to
control operation of the swing arm. Final Act. 5 (citing Sisk 11:5—24. The
Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to modify Goehring to “add the timer of Sisk ... to
yield the predictable result of automatically controlling operation of the
device as desired.” Id.
Appellant argues that Sisk’s timer does not control operation of the
swing arm because Sisk’s timer operates so that “the control unit issues a
warning” if a certain time is exceeded, whereas claim 7 requires that “a
timer can be set to open or close the lid at a preselected time.” Br. 14.
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The Examiner responds that Sisk’s timer is used to actuate the cover
because, after the alarm is activated to warn of cover movement, the
controller actuates the cover. Ans. 4.
The Examiner has the better position. Sisk’s control circuit includes a
CPU and a timer and, “upon beginning an open or close cycle, the CPU
activates the alarm B, and, then waits a predetermined period of time before
activating the cover actuator 235 to move the cover.” Sisk 11:11—34; see
also Ans. 4. We do not find error in the Examiner’s finding that Sisk’s
controller includes an automatic timer to control operation of its cover.
Therefore, we sustain the rejection of claim 7.
Rejection II— Claims 3 and 4
Regarding claim 3, the Examiner finds that, because Beecher
discloses a concave movable cover (20a, 20b), it would have been obvious
to modify Goehring’s device to use a concave cover as in Beecher “to yield
the predictable result of allowing more bait/food to be inserted into the
device.” Final Act. 5—6.
Appellant argues that, because Goehring and Sisk both use
substantially flat lids, “[tjhere is no motivation, teaching or suggestion ... to
replace the lid with a substantially concave movable cover,” and, thus, no
reason “to turn to Beecher.” Br. 15—16. According to Appellant, because
Beecher “is directed to a two part system where the cover comprises sides
that are each only partially movable” and “does not rest over a bait pile,” the
Examiner is selectively choosing only those parts of Beecher “to teach the
claims,” while ignoring other parts of Beecher that teach a flat cover. Br.
16.
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The Examiner responds that “looking at the cover of Beecher [] as a
whole structure it is clearly dome shaped and therefore concave.” Ans. 4
(citing Beecher 114, Fig. 3, and claim 13).
To the extent that Appellant argues that Beecher’s disclosure of
alternative embodiments teaches away from any particular embodiment, the
disclosure of alternatives does not teach away from a particular alternative
unless it criticizes, discredits, or otherwise discourages that alternative. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant also has not
specifically explained why the Examiner’s stated reasoning of predictably
“allowing more bait/food to be inserted into the device” lacks a rational
basis. We therefore are not persuaded that the Examiner’s conclusion of
obviousness is in error.
Appellant does not separately argue claim 4, which depends from
claim 3. See Br. 15—16. For the reasons set forth above, we sustain the
rejection of claims 3 and 4.
Rejection III— Claim 9
Dependent claim 9 recites a pair of stakes. The Examiner proposes to
modify Goehring, Sisk, and one of Graham or Doss to include a pair of
stakes (31, 35) as disclosed in Webb, and concludes that it would have been
obvious to make the modification “to yield the predictable result of
removably securing the device in place on the ground surface as desired.”
Final Act. 6; see also Webb 2:27—29.
Appellant argues that there is no motivation, teaching or suggestion to
modify Goehring to use a pair of stakes for securement, because “Graham
and Doss include stakes extending from the housing which is not a
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controller,” and because Goehring does not “require ground engaging stakes
as Goehring is directed to a pet food dish for a kitchen floor.” Br. 17.
Appellant asserts that Webb also does not relate to a controller having
ground engaging stakes, because Webb’s “[sjtakes 31, 33, 35 are anchor
stakes that fasten the actual hunters blind, not a controller, to the ground.”
Id. According to Appellant, because Webb does not have automatic
components, or a controller that is secured to the ground, the Examiner errs
“in citing Webb as providing any teachings which make claim 9 obvious.”
Id.
In response, the Examiner notes that the device of Goehring is relied
on for controller 20 and incorporating either one stake as disclosed by
Graham and Doss, or multiple stakes as disclosed by Webb, would
predictably result in the stake extending “at least indirectly from the
controller as discussed above with respect to claim 1.” Ans. 5. The
Examiner states that the “motivation to add the multiple stakes of Webb to
the device of Goehring, [is] so that the device of Goehring can be more
stably secured to the surface on which it rests.” Id.
We are not persuaded that the Examiner’s reasoning lacks a rational
basis. Goehring discloses that a lidded dish will prevent access to “hungry
rodents and pesky insects, assuming that the food dish is in such an area that
it can be accessed in that fashion” (Goehring 2:16—18), and the Examiner
has a sound basis for using stakes in Goehring so that the food dish could be
secured outside.3 Thus, although Goehring would not use stakes on a
kitchen floor, Goehring’s device could be staked outside, and Appellant does
3 Doss also discloses an apparatus used inside or outside — “stake 50 [could
be] removed, for indoor use of the apparatus 10.” Doss 3:44-45.
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not persuade us that the Examiner’s proffered reasoning of “removably
securing the device in place” lacks a rational basis. Moreover, as discussed
above with respect to claim 1, it is the controller in Goehring’s housing 10
that is being staked (see Ans. 3), and Appellant’s arguments that the
housings of Graham and Doss is not a controller, and that Webb does not
secure a controller to the ground, are unavailing.
Appellant also argues that Webb is non-analogous art, because
Webb’s field of endeavor “is directed to a hunter’s blind that allow[s] the
hunter to simulate the stump of a dead [tree] for hiding therein,” whereas
“Applicant’s field of endeavor is providing bait for wildlife under a movable
cover that is secured to the ground surface such that bait is exposed at
selected times.” Br. 17. Appellant asserts that Webb also does not satisfy
the second prong of the analogous art test, because Webb is not reasonably
pertinent to the particular problem of “securing a controller and movable
cover to the ground near a bait pile such that the cover is movable between
positions covering the bait and exposing the bait.” Id.
The Examiner responds that the problem to be solved is “removably
securing the device to the surface on which it rests,” and that Webb is
pertinent to this problem because Webb “provides] extra stability since the
device is secured to the ground surface at multiple points/positions.” Ans. 5.
Although Webb’s stake does not secure a cover and controller to the
ground, Webb’s “stakes 31 may be driven to anchor the hunter’s blind to the
ground in its desired location.” Webb 2:27—29. Thus, Webb is relevant to a
problem faced and solved by Appellant in employing stakes, because
Webb’s stakes allow the device to be secured to the ground at a chosen spot.
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See Spec. 114, Webb 2:27—29. Webb is analogous art because its disclosure
is reasonably pertinent to a problem faced by Appellant.
For the reasons set forth above, we sustain the rejection of claim 9.
DECISION
We AFFIRM the rejection of claims 1, 2, and 5—8 under 35 U.S.C.
§ 103(a) as unpatentable over Goehring, Sisk, and one of Graham and Doss.
We AFFIRM the rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Goehring, Sisk, one of Graham and Doss, and further in
view of Beecher.
We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Goehring, Sisk, one of Graham and Doss, and further in
view of Webb.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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