Ex Parte Gorans et al

Board of Patent Appeals and Interferences

Nov 2, 2011

10702988 (B.P.A.I. Nov. 2, 2011)

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.
10/702,988 11/06/2003 Marc S. Gorans 294.0015 0101 9676
26813 7590 11/03/2011
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
11/03/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARC S. GORANS and MATTHEW H. ERICKSON
____________________

Appeal 2009-015389
Application 10/702,988
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
JOHN C. KERINS, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015389
Application 10/702,988
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
10-22 and 35-54. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an apparatus and method for nasal delivery
of compositions to birds. Claim 10, reproduced below, is illustrative of the
claimed subject matter:
10. An apparatus for delivering a composition to at least one
nasal passage of a bird, the apparatus comprising:
a bird head positioning body that comprises a first major
side, a second major side, and a beak receiving void formed
through the first and second major sides of the bird head
positioning body, wherein the beak receiving void defines an
opening in the first major side of the bird head positioning body
and an opening in the second major side of the bird head
positioning body, and
further wherein the beak receiving void defines a cavity
in the bird head positioning body that extends from the opening
in the first major side to the opening in the second major side,
and
wherein at least a portion of a beak of a bird head located
in the beak receiving void protrudes through the opening in the
second major side of the bird head positioning body and is
exposed proximate the second major side of the bird head
positioning body, the beak receiving void comprising an
interior surface facing a bird head located in the beak receiving
void; and
a passage formed through the bird head positioning body,
the passage comprising a delivery opening in the interior
surface of the beak receiving void, wherein the passage is
positioned to be in direct fluid communication with at least one
nostril of a bird head located in the beak receiving void through
the delivery opening.

Appeal 2009-015389
Application 10/702,988
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Simmons
Baum
DuBose
Gourlandt
US 3,502,079
US 3,874,381
US 4,343,310
US 4,446,819
Mar. 24, 1970
Apr. 1, 1975
Aug. 10, 1982
May 8, 1984

REJECTIONS
Claims 10-13, 15-21, and 39-41 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Simmons. Ans. 4.
Claims 43-45 and 48-54 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by DuBose. Ans. 8.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simmons and Baum. Ans. 10.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simmons and Baum. Ans. 10.
Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simmons and Gourlandt. Ans. 11.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simmons, Gourlandt, and Baum. Ans. 12.
Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simmons and Baum. Ans. 13.
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over DuBose and Simmons. Ans. 13.

Appeal 2009-015389
Application 10/702,988
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OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review,
we have determined that the applied prior art does not establish the lack of
novelty of claims 10-13, 15-21, 39-41, 43-45 and 48-54. We have also
determined that the applied prior art does not establish the obviousness of
claims 14, 22, 35-38, 42, 46 and 47. Therefore the rejections of all claims
on appeal are reversed. Our reasons follow.

Rejection of claims 10-13, 15-21, and 39-41 under 35 U.S.C. § 102 as
anticipated by Simmons
We are in agreement with the Appellants that Simmons does not
disclose a beak receiving void defining a cavity in the bird head positioning
body that extends from the opening of the first major side to the opening in
the second major side. App. Br. 11. The Examiner has directed our
attention to reference numerals 24-28 and 118-130 of Simmons. Simmons’
reference numeral 24 is an aperture to allow dissipation of accumulated heat,
while reference numeral 26 is the forward end of the burner cap. Numeral
28 is a heating element of convex or dome shape. Thus, while 24 is an
aperture, the bird is not placed in or near this aperture in Simmons. The
Examiner has also referred to the tapered nozzles or spouts 118 or 120, with
cooperating ends 124 and 126 shown in Figure 7 of Simmons. Simmons’
bird contacting structure of the spouts is not described in detail in the patent,
and the showing in Figure 7 is fragmentary at best. It appears the
cooperating ends are independent from one another and each end provides a
port that covers the bird’s nostril on each end’s side of the beak. We are
simply unable to find that Simmons discloses the void defining the claimed
Appeal 2009-015389
Application 10/702,988
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cavity. Thus we are in agreement with Appellants that Simmons does not
disclose the void with openings in the first and second major sides of the
bird head positioning body. The disclosure of Simmons is too brief to make
out the Examiner’s burden of proof by a preponderance of the evidence
under 35 U.S.C. § 102 as to this argued feature.

The rejection of claims 43-45 and 48-54 under 35 U.S.C. § 102 as
anticipated by DuBose
Turning to the disclosure of DuBose, and considering the chick
receiving mask means 45, this mask means arguably includes first and
second openings in the first and second major sides thereof based on the
thickness of the mask means as the Examiner argues. DuBose, col. 4, ll. 54-
65; Ans. 8. However, we are in agreement with the Appellants that DuBose
does not disclose passages including delivery openings defined in the inner
surface of the beak receiving cavity. The Examiner refers us to passages or
apertures 130 and 132 of DuBose which comprise apertures for electrodes
40 and 42. Col. 6, ll. 25-36, see also, Figs. 3-5. If one considered the tube
70 as the beak receiving cavity with apertures 130 and 132 therein, apertures
130 and 132 are not in direct communication with the bird’s nostrils. In fact,
Figure 5 of DuBose shows the nostrils extend partly on one side of the mask
and partly on the other side of the mask, while Figure 4 shows the nostrils
mostly on the side of the mask away from apertures 130, 132. Therefore it is
our finding that DuBose does not establish the lack of novelty of claims 43-
45 and 48-54, since it does not disclose a passage comprising a delivery
opening in direct fluid communication with the nasal passage of a bird.

Appeal 2009-015389
Application 10/702,988
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The rejection of claims 14, 22, 35-37, 38, and 42 under 35 U.S.C. § 103
based on various combinations of prior art with Simmons.
As noted above, it is our finding that Simmons does not have a cavity
that extends from one side to the other and Simmons is not seen to have any
interior surfaces. Therefore, Simmons combined with Baum, Gourlandt, or
Gourlandt and Baum does not establish the prima facie obviousness of the
claims on appeal. The rejections under 35 U.S.C. § 103 of claims 14, 22,
35-37, 38, and 42 are reversed.

The rejection of claim 46 and 47 under 35 U.S.C. § 103 as obvious over
DuBose in view of Simmons.
We have discussed DuBose and Simmons previously. In addition,
while DuBose discloses a mask structure, Simmons does not disclose such a
structure but instead discloses tapered spouts. However, since the nostril of
the bird in DuBose lies intermediate of two sides of the mask means, it is not
seen how the tapered spout of Simmons could be added to the structure of
DuBose to render claims 46 and 47 prima facie obvious. Therefore the
rejection of claims 46 and 47 under 35 U.S.C. § 103 is reversed.

DECISION
The rejections of claims 10-13, 15-21, 39-41, 43-45, and 48-54 under
35 U.S.C. § 102 are reversed.
The rejections of claims 14, 22, 35-37, 42, 46 and 47 under 35 U.S.C.
§ 103 are reversed.

REVERSED
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