Ex parte FAIN

Board of Patent Appeals and Interferences

Jul 26, 2000

08774848 (B.P.A.I. Jul. 26, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GERALD S. FAIN
__________
Appeal No. 1999-2556
Application 08/774,848
___________
ON BRIEF
___________
Before ABRAMS, MCQUADE, and JENNIFER D. BAHR, Administrative
Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Gerald S. Fain appeals from the final rejection of claims
1, 3, 5 through 10, 17 through 19, 25 and 41 through 45, all
of the claims pending in the application.
THE INVENTION
The invention relates to “a pest control device capable
of repelling or attracting animals and insects to a garden”
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Application 08/774,848
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(specification, page 2). Claims 1, 25 and 44 are illustrative
and read as follows:
1. An animal control device comprising:
a base portion having a plurality of containing regions;
a cap portion which covers said containing regions to
prevent the gravitational accumulation of material in said
containing regions;
at least two odor-producing odorous substances located
within said containing regions of said base portion and
exposed to an ambient environment surrounding the device; and
a stake which passes through said base portion and said
cap portion to removably secure said cap portion in position
over said base portion, and to secure said base portion to the
ground;
wherein one of said substances produces respective odors
which repel certain creatures and another of said substances
produces other respective odors which attract desirable
creatures, said odors from said substances being released to
the ambient environment.
25. A pest control system, comprising:
a plurality of pest control devices interconnected
together to form a pest control barrier surrounding a certain
geographic area, wherein each of said pest control devices
includes
A. a base portion having a containing region;
B. a cap portion which covers said containing region to
prevent the gravitational accumulation of material in said
containing region; and
C. at least one odor-producing odorous substance located
within said containing region of said base portion and exposed
to an ambient environment surrounding the device to allow
odors from said odorous substance to be released to the
surrounding ambient environment.
44. An animal control device comprising:
a base portion for containing a plurality of different
odorous substances; and
a cap portion for covering said substances;
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wherein said different odorous substances are exposed to
an ambient environment surrounding the device so as to produce
odors which attract desirable creatures and repel undesirable
creatures.
THE PRIOR ART
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Watson 1,964,611 Jun. 26,
1934
Manning 4,208,829 Jun. 24,
1980
Clark, Sr. (Clark) 4,364,194 Dec. 21,
1982
Rhodes 5,152,097 Oct. 6,
1992
Weldon 5,184,417 Feb. 9,
1993
THE REJECTIONS
Claim 44 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Watson.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Manning.
Claims 1, 5 through 9, 41 and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Manning in view
of Watson.
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Application 08/774,848
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Claims 3, 10 and 17 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Manning in view of Watson
and Rhodes.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Manning in view of Watson and Clark.
Claims 19 and 43 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Manning in view of Watson and
Weldon.
Claim 45 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Watson in view of Weldon.
Attention is directed to the appellant’s brief (Paper No.
16) and to the examiner’s final rejection and answer (Paper
Nos. 14 and 17) for the respective positions of the appellant
and the examiner with regard to the merits of these
rejections.
DISCUSSION
Watson, applied to support the anticipation rejection of
claim 44, discloses an exterminator for rodents and insects.
This exterminator consists of a base 1, a lure compartment 6a
formed by a cylindrical wall 6 disposed on the base, poison
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bait compartments 8 formed by an apertured cylindrical wall 9
and partitions 7 disposed on the base in surrounding relation
to the wall 6, an insect poison compartment 11 formed by a rim
4 disposed about the periphery of the base, and a canopy 12
disposed above the foregoing elements.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). It is not necessary that
the reference teach what the subject application teaches, but
only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
Claim 44 reads on the exterminator disclosed by Watson.
More particularly, Watson’s exterminator certainly constitutes
an “animal control device” as recited in the preamble of claim
44, with Watson’s base 1, lure compartment 6a, cylindrical
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Application 08/774,848
In contrast, independent claims 1 and 25 do recite at least one odorous1
substance as part of the claimed device or system.
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wall 6, poison bait compartments 8, cylindrical wall 9,
partitions 7 and rim 4 collectively meeting the recitation of
the “base portion for containing a plurality of different
odorous substances” and Watson’s canopy 12 meeting the
recitation of the “cap portion for covering said substances.”
The appellant’s position (see pages 14 through 17 in the
brief) that Watson is not an anticipatory reference because it
does not disclose different odorous substances which attract
desirable creatures and repel undesirable creatures is not
persuasive because it is not commensurate with the actual
scope of claim 44. The “wherein” clause in the claim relating
to the odorous substances merely sets forth an intended use of
the claimed device; it does not recite such odorous substances
as part of the claimed device. Since the Watson exterminator1
is inherently capable of being so used, it fully responds to
the claim language at issue. This is in accord with the well
settled principle that the recitation of an intended use of an
old product does not make a claim to that old product
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Application 08/774,848
In traversing the rejection of claim 45, the appellant has chosen not to rely2
on the 37 CFR § 1.132 declaration submitted August 20, 1998 (Paper No. 13) as evidence
of non-obviousness. Therefore, we find no need to assess the evidentiary weight to
which the declaration may be entitled.
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patentable (see In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997)).
Thus, Watson discloses, expressly or under principles of
inherency, each and every element of the animal control device
recited in claim 44. Accordingly, we shall sustain the
standing 35 U.S.C. § 102(b) rejection of this claim as being
anticipated by Watson.
Claim 45 depends from claim 44 and requires the claimed
device to further comprise a solar-powered fan for
distributing odors. In rejecting this claim under 35 U.S.C. §
103(a), the examiner concludes (see page 5 in the final
rejection) that Weldon would have suggested the provision of
such a fan to the Watson device. The appellant does not
challenge this conclusion. Instead, the appellant contends
(see page 28 in the brief) that the rejection is unsound
because Weldon fails to overcome the alleged deficiencies of
Watson with respect to parent claim 44. For the reasons2
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expressed above, Watson has no such deficiencies. Thus, the
appellant’s position is not well taken.
Therefore, we shall sustain the standing 35 U.S.C. §
103(a) rejection of claim 45 as being unpatentable over Watson
in view of Weldon.
Manning, applied to support the obviousness rejection of
independent claim 25, discloses a bait station for dispensing
poisoned feed to rodents. In Manning’s words, the bait
station
includes a bottom wall 11, preferably circular in
outline and of substantial diameter, having an
integral upstanding perimeter wall 12 or shell.
Axially arranged within the confines of the
perimeter wall 12 is an upstanding bait container or
feeder 13, welded or otherwise secured firmly to the
bottom wall 11. An externally flanged top wall or
cover 14 is seated on the perimeter wall or shell
12.
The assembly hereinabove described is secured
to a selected surface, such as a cement block or
floor 15, by embedding in the floor a headed stud 16
which may be screw threaded at its upper end to
receive the lower threaded end of an axial rod 17,
which extends outwardly through the bottom wall 11,
the bait container 13 and out through an aperture in
the cover 14. Removal of the cover 14 may be
prevented by a lock 18 engaged with the rod 17.
A plurality of equally spaced apart circular
openings 19 of a size having a diameter sufficient
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to permit passage of a rodent are provided in the
perimeter wall 12 [column 2, lines 12 through 31].
As conceded by the examiner (see page 3 in the final
rejection), Manning does not meet the limitations in claim 25
requiring the claimed system to comprise a plurality of pest
control devices interconnected together to form a pest control
barrier surrounding a certain geographic area. Nonetheless,
the examiner concludes that “it would have been obvious to
employ a plurality of [Manning’s] devices or bait stations to
form a barrier around an area to keep certain pests away from
the area” (final rejection, page 3).
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). In making such a rejection, the
examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in the factual basis. Id.
Because the examiner has not supplied any factual support
for the conclusion that it would have been obvious to employ a
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plurality of Manning’s bait stations in the arrangement
specified by claim 25, the rejection of this claim must fall.
Thus, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of claim 25 as being unpatentable over
Manning.
Manning is also the primary reference applied in support
of the obviousness rejection of independent claim 1.
Implicitly acknowledging that Manning does not meet the
limitations in this claim requiring the recited device to
include a plurality of containing regions and at least two
odorous substances within the regions with one substance
producing odors which repel certain creatures and another
substance producing other odors which attract desirable
creatures, the examiner concludes (see page 3 in the final
rejection) that Watson would have suggested furnishing same to
the Manning device. Arguably, Watson would have suggested
adding a plurality of containing regions to the Manning
device. There is nothing in the combined teachings of Watson
and Manning, however, which would have suggested the further
addition of at least two odorous substances having the
characteristics called for in claim 1. The examiner’s
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position (see page 3 in the final rejection) that Watson
inherently
discloses such odorous substances has no reasonable support in
Watson’s disclosure.
Hence, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of claim 1, or of claims 5 through 9 which
depend from claim 1, as being unpatentable over Manning in
view of Watson.
The deficiencies of Manning with respect to the subject
matter recited in independent claim 25 and of the Manning-
Watson combination with respect to the subject matter recited
in independent claim 1 find no cure in the various references
applied to support the obviousness rejections of the claims
which respectively depend from these independent claims.
Therefore, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of claims 41 and 42, which depend from claim
25, as being unpatentable over Manning in view of Watson, the
standing
35 U.S.C. § 103(a) rejection of claims 3, 10 and 17, which
depend from claim 1, as being unpatentable over Manning in
view of Watson and Rhodes, the standing 35 U.S.C. § 103(a)
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rejection of claim 18, which depends from claim 1, as being
unpatentable over Manning in view of Watson and Clark, or the
standing 35 U.S.C. § 103(a) rejection of claim 19, which
depends from claim 1, and of claim 43, which depends
ultimately from claim 25, as being unpatentable over Watson in
view of Manning and Weldon.
NEW REJECTION
The following rejection is entered pursuant to
37 CFR § 1.196(b).
Claims 3, 7 and 8 are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which fails
to comply with the written description requirement of this
section of the statute.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
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absence of literal support in the specification for the claim
language.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983). The content of the drawings may also be
considered in determining compliance with the written
description requirement. Id.
Notwithstanding the statement on page 17 of the original
specification that
mixing and matching of the foregoing embodiments
provides devices having a desired combination of
features. Therefore, any such combination is
likewise
considered to be within the scope of the present
invention,
there is no basis in the original disclosure for the subject
matter now recited in claims 3, 7 and 8. As indicated above,
these claims depend from independent claim 1. Claim 1 is
limited to the animal control device shown in Figure 5 and
described on specification page 13 wherein the base 80 and cap
84 are held together by a stake 92 extending therethrough and
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into a surface below the base such as the earth. The
disclosure of the
application as originally filed would not reasonably convey to
the artisan that the appellant had possession at that time of
such embodiment in combination with the mating screw threads
recited in claim 3 for connecting the cap and base portions or
the means/eyelet recited in claims 7 and 8 for suspending the
device. A fair reading of the original disclosure indicates
that the embodiment set forth in claim 1 and the features
recited in claims 3, 7 and 8 are mutually exclusive.
SUMMARY
a) The decision of the examiner to reject claims 1, 3, 5
through 10, 17 through 19, 25 and 41 through 45 is affirmed
with respect to claims 44 and 45 and reversed with respect to
claims 1, 3, 5 through 10, 17 through 19, 25 and 41 through
43.
A new rejection of claims 3, 7 and 8 is entered pursuant
to 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
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rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b).
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2556
Application 08/774,848
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