Ex Parte Gabriel et al

Board of Patent Appeals and Interferences

Jul 31, 2006

09173134 (B.P.A.I. Jul. 31, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE S. GABRIEL, NEIL E. CAMPBELL,
CHIN SOO PARK, ALBERT P. RUGGIERI,
JOHN E. SHEAFFER, DALE MURRAY,
ERIC A. DEITRICH, LYNN IRWIN, and RODNEY GERRINGER

____________

Appeal No. 2006-1464
Application No. 09/173,134
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HEARD: July 13, 2006
____________

Before FRANKFORT, OWENS, and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, 8 and 9, all of the claims
remaining in the application. Claims 4 through 7 have been
cancelled.

Appellants’ invention relates to a multipurpose rodent cage
and ventilated rack and cage system for housing a variety of
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rodent types including but not limited to a plurality of rats,
mice, hamsters or guinea pigs. Independent claims 1, 3, 8 and 9
are representative of the subject matter on appeal and a copy of
those claims can be found in the “Claims Appendix” attached to
appellants’ brief.

The prior art references relied upon by the examiner in
rejecting the appealed claim are:
Sheaffer et al. (Sheaffer) 4,989,545 Feb. 5, 1991
Coiro et al. (Coiro) 5,894,816 Apr. 20, 1999

In addition to the foregoing patents, the examiner has also
relied upon applicants’ admitted prior art (hereinafter AAPA) found
on pages 1 and 2 of the specification.

Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sheaffer in view of AAPA.

Claims 3, 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sheaffer in view of Coiro.

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Rather than attempt to reiterate the examiner's commentary
with regard to the above-noted rejections and the conflicting
viewpoints advanced by appellants and the examiner regarding
those rejections, we make reference to the answer (mailed October
3, 2005) for the examiner's reasoning in support of the
rejections, and to appellants’ brief (filed July 21, 2005) and
reply brief (filed December 8, 2005) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the AAPA and the applied prior art references, to the
declarations of Neil Campbell, Dietrich Crase, Nick Guise and
Betty Fatzie, and to the respective positions articulated by
appellants and the examiner. As a consequence of our review,
we have made the determinations which follow.

In rejecting claims 1 and 2 under 35 U.S.C. § 103(a), the
examiner has determined that Sheaffer discloses a cage level
barrier rodent cage (20) comprising a cage bottom portion (22)
having a plurality of integral sidewalls (50), a floor (48) and
an open top end which is to be closed off by a removable filter
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bonnet (24). Sheaffer is silent concerning the size of the cages
(20) and also with regard to the number and type of rodents to
be housed in the ventilated cages. Thus, Sheaffer clearly does
not teach having a rodent cage with a floor area in the range
specified in claims 1 and 2 on appeal, i.e., “80 square inches ≤
l x w ≤ 110 square inches” as in claim 1 and “substantially 80
square inches” as in claim 2.

To address such deficiencies in Sheaffer, the examiner turns
to the AAPA, noting that one of ordinary skill in the art reading
page 1 of appellants’ specification and being familiar with the
Institute Laboratory Animal Resources (ILAR) guidelines would
recognize that the floor area of a cage for laboratory animals
is a parameter that may be varied depending on, among other
things, the type and number of animals intended to be housed in
a hygienic and humane environment (answer, pages 3, 4, 6 and 7).
Based on the combined disclosures and teachings found in the AAPA
and Sheaffer, the examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of
appellants’ invention to develop a cage level barrier rodent cage
like that in Sheaffer for housing two rats weighing up to 400
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grams each wherein each cage has a floor area of 80 square inches
and thereby meets ILAR guidelines for such a rodent species as
discussed in the AAPA.

Contrary to appellants’ argument in the brief (page 10),
although intended to house only a single species (i.e., two rats
weighing up to 400 grams each), the resulting Sheaffer cage would
also generally constitute a “multipurpose cage” for housing
multiple species of rodents, as called for in claim 1 on appeal,
in that such a cage with a floor area of 80 square inches would
also be capable of housing other rodent species and meeting ILAR
guidelines for such species, for example, up to five mice
weighing 25 grams each. In that regard, we note that claims 1
and 2 on appeal are directed to a rodent cage per se having a
floor area in the claimed range of 80 to 110 square inches, and
that a cage like that in Sheaffer sized in the manner urged by
the examiner for the purpose of housing two rats weighing up to
400 grams each and meeting ILAR guidelines would fall within the
claimed range.

Appellants contend (brief, page 11) that the examiner has
failed to demonstrate what reason a person skilled in the art
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would have for modifying Sheaffer with AAPA to obtain the
invention as claimed. We do not agree. The examiner has merely
recognized and applied knowledge in the prior art that, prior to
the present invention, 1) research laboratories performing animal
studies typically had many types of rack and cage systems, each
type being designed to house a specific animal species while
meeting ILAR guidelines for that specific species, and
consequently, that each cage and rack system had its own
particular size and dimensions, and 2) each scientist performing
an experiment, typically, would tend to design an animal cage
and rack system in accordance with the specific arbitrary
requirements of the particular experiment or study to be
performed. This aspect of the examiner’s position is further
supported in paragraphs 5 and 8 of co-inventor Neil Campbell’s
declaration, signed June 26, 2003, and by the AAPA.

Accordingly, while we agree with appellants that there is
nothing in the Sheaffer patent to suggest a cage wherein the
overall dimensions are designed to simultaneously meet ILAR
guidelines for more than one animal species and thus provide a
standardized cage specifically designed to house multiple species
of rodents, we again point out that claims 1 and 2 on appeal are
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directed to a rodent cage per se having a floor area in the
claimed range of 80 to 110 square inches, and that a rodent cage
like that of Sheaffer sized in the manner urged by the examiner
for the specific purpose of housing two rats weighing up to 400
grams each and meeting ILAR guidelines for such rodent species
would have a floor area (e.g., minimally 80 square inches) within
the claimed range and thus fall within the broad scope of those
claims.

As for the weight to be accorded appellants’ evidence of
secondary considerations found in the declarations by Neil
Campbell, Dietrich Crase, Nick Guise and Betty Fatzie, we have
evaluated those declarations along with the evidence relied upon
by the examiner in arriving at an overall determination of
obviousness. In our opinion, the declarations are not entitled
to substantial weight since they rely entirely on appellants’
purported discovery and solution of a particular problem and on
the advantages of providing a standardized cage and cage system
capable of housing multiple animal species and that meets ILAR
guidelines for each of the different animal types to be housed
therein. However, as we noted above, claims 1 and 2 on appeal
are of a much broader scope than the extent of appellants’
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evidence and are merely directed to a rodent cage per se of a
particular size range (i.e., having a floor area of 80 to 110
square inches) which is capable of functioning to house multiple
species of rodents including a plurality of mice or rats. Thus,
any cage level barrier rodent cage (e.g., like that in Sheaffer
as modified) having a floor area of at least 80 square inches
would meet the terms of claims 1 and 2 on appeal whether arrived
at for appellants’ reason or for a reason like that specified in
the examiner’s rejection. In that regard, it is not necessary
that the applied prior art suggest a combination or modification
to achieve the same advantage or result as discovered by
appellants. See, e.g., In re Linter, 458 F.2d 1013, 173 USPQ 560
(CCPA 1972) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed.
Cir. 1990), cert. denied, 500 U.S. 904 (1991).

Given the breadth of the claims on appeal, it is irrelevant
that the rodent cage resulting from the examiner’s reliance on
the combined teachings of Sheaffer and the AAPA was not, as in
appellants’ case, specifically designed to house multiple species
of rodents and to comply with ILAR guidelines for all rodents
to be housed in the cage. In the first place, we note that
appellants’ claims do not in any way mandate compliance with
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ILAR guidelines. In addition, as was the case in In re Obiaya,
227 USPQ 58, 60 (BPAI, 1985), the fact that appellants have
recognized another advantage which would flow naturally from
following the suggestions of the prior art (e.g., that a cage of
80 square inches can house multiple rodent species and comply
with ILAR guidelines for each such species) cannot be the basis
for patentability when the differences would otherwise have been
obvious.

In the final analysis, we find that a cage level barrier
rodent cage having a floor area in the range claimed by
appellants would have been obvious to one of ordinary skill
in the art at the time of appellants’ invention based on the
combined teachings of Sheaffer and the AAPA. Accordingly, we
will sustain the rejection of claims 1 and 2 under 35 U.S.C.
§ 103(a).

The next rejection for our review is that of claims 3, 8
and 9 under 35 U.S.C. § 103(a) as being unpatentable over
Sheaffer in view of Coiro. In this instance, the examiner
has noted that Sheaffer discloses a cage level barrier cage
ventilated rack and cage system including a double sided rack
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having a depth (see Figs. 1, 2 and 4, and col. 8, lines 57-64)
and cages (20) disposed in the rack for housing animals involved
in experiments. Again, the examiner notes that Sheaffer is
silent concerning the size of the cages and also with regard to
the number and type of rodents to be housed in the ventilated
cages. Thus, it is recognized that Sheaffer does not teach
having a rodent cage with a length of less than substantially 18
inches as specified in claim 3 on appeal, or a cage meeting the
above length requirement and having a floor area in the range
specified in claim 8 on appeal, i.e., 80 square inches ≤ l x w ≤
110 square inches. Nor does Sheaffer disclose a rack and cage
system wherein the cages have a length of less than substantially
18 inches and fit in the rack in such a way that a portion of the
cages extends beyond the rack and wherein the depth of the rack
and extending cage portions is less than or equal to
substantially 36 inches, as specified in claim 9 on appeal.

To account for the differences between the above-noted
claimed subject matter and Sheaffer, the examiner turns to Coiro.
This patent is directed to a cage level barrier rodent cage
having an enhanced floor space as compared with prior art cages,
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but which maintains compatibility with existing wire bar lids and
microbarrier tops (col. 2, lines 17-20). At column 1, lines 29-
32, it is further noted that such cages are typically configured
to fit or slide within rack units, and that the rack units may be
connected to sources for automatically providing water, food, or
air to the creatures inside the cages. Of particular interest to
the examiner is the fact that Coiro specifically discloses a
rodent cage (Fig. 3) having a length falling within appellants’
claimed range of “less than substantially 18 inches,” i.e., a
length (L6) of 11.75 inches (col. 4, lines 57-58). We also note
the disclosure in Coiro’s claim 8, wherein it is indicated that
the “base” (seen at 63 in Fig. 4) may have a length of “about 10
to 12 inches” and a width of “about 6.5 to 8 inches,” thereby
resulting in a cage having a base or floor area ranging from
about 65 to about 96 square inches.

Based on the collective teachings of Sheaffer and Coiro, the
examiner has concluded that it would have been obvious to one of
ordinary skill in the art at the time of appellants’ invention to
develop a cage level barrier rodent cage like that in Sheaffer
having a size range like that taught in Coiro and which is housed
in a double sided ventilated rack like that taught in Sheaffer,
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thereby resulting in a rack and cage system as broadly set forth
in claims 3 and 8 on appeal. Concerning claim 9, the examiner
has taken the position that it would have been obvious to one of
ordinary skill in the art at the time of appellants’ invention
to have a portion of the cage of Sheaffer as modified by Coiro,
when resting within the rack, extend beyond the rack depending
on a chosen length one wishes to have to accommodate a particular
type and number of animals in a hygienic and humane environment
consistent with ILAR guidelines, while at the same time
apparently meeting the “less than or equal to substantially
36 inches” limitation set forth in claim 9.

Appellants have urged on page 18 of the brief that “[a]n
important feature of the claimed invention is that overall
dimensions of the cage must be designed to simultaneously meet
ILAR guidelines for more than one animal species” (emphasis
added). We disagree, since the ILAR guidelines are not mentioned
in any of the claims on appeal. For example, the only specific
limitation on the size of the cage in appellants’ claim 3 is that
it have a length that is “less than substantially 18 inches.” It
is true that claim 3 also indicates that the cage and rack system
therein is intended for housing a plurality of types of rodents
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including a plurality of mice or rats, but the claim does not
mandate a cage sized to be in compliance with ILAR guidelines.
Similarly, claims 8 and 9 make no mention of the ILAR guidelines.

The cage of Coiro meets the size limitations set forth in
claims 1, 2, 3, 8 and 9 on appeal and reasonably appears to be
capable of housing a plurality of types of rodents including
a plurality of mice or rats. Appellants have presented no
convincing argument as to why it would have been unobvious to one
of ordinary skill in the art at the time of the invention to use
a cage sized in the manner taught in Coiro in the double sided
rack of Sheaffer, thereby resulting in a system having the
advantages noted in Coiro and also providing a ventilated rack
and cage system like that broadly defined in claims 3 and 8 on
appeal. As for claim 9 and the further requirement that the
cages fit in the rack in such a way that a portion of the cages
extends beyond the rack and wherein the depth of the rack and
extending cage portions is less than or equal to substantially 36
inches, we agree with the examiner’s position and further note
that appellants’ specification recognizes on page 2 that the
largest cage racks in the prior art for housing rat cages have
been dimensioned “to allow a rack supporting rat cages thereon to
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pass through a standard door having a height of 6 feet 8 inches
and a width of 36 inches.” Thus, it is only reasonable that one
skilled in the art looking to the rack and cage system resulting
from the examiner’s combination of Sheaffer and Coiro would size
the rack with cages therein to fit through a standard size door
and thus meet “the less than or equal to substantially 36 inches”
limitation of claim 9.

With particular regard to appellants’ evidence of secondary
considerations, to the extent that such evidence relates to a
cage and/or cage and rack system that must be designed to
simultaneously meet ILAR guidelines for more than one animal
species, and to the extent that such a feature led to its use
in the industry as noted in the declarations of Neil Campbell,
Dietrich Crase and Nick Guise, and to the sales alluded to in
the declaration by Betty Fatzie, such evidence is not
commensurate in scope with the broad claims on appeal. Thus, we
give that evidence little weight in the ultimate determination of
obviousness.

Weighing all of the evidence before us, it is our
determination that the subject matter set forth in claims 3, 8
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and 9 on appeal would have been obvious to one of ordinary skill
in the art within the meaning of 35 U.S.C. § 103 based on the
combined teachings of Sheaffer and Coiro.

Since the obviousness rejections with regard to claims 1, 2,
3, 8 and 9 before us on appeal have been sustained, it follows
that the decision of the examiner is affirmed.
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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

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 2006-1464
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