Ex Parte Guadagna

Board of Patent Appeals and Interferences

Sep 23, 2009

11257675 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT GUADAGNA
____________

Appeal 2009-006141
Application 11/257,675
Technology Center 3600
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Decided: September 23, 2009
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and CATHERINE Q. TIMM, and KAREN M. HASTINGS, Administrative
Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-3 and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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I. STATEMENT OF THE CASE
The invention relates to a bird-scaring device configured as a
predatory bird kite, which ascends in a substantially vertical manner and
continuously circles in a manner imitating the circular motion of real
predatory birds (Spec. 2). Claim 1, 2, and 23 are illustrative of the subject
matter on appeal:
1. An animal-scaring device comprising a kite configured as a
predatory bird and a manually operable reel coupled to the kite by a control
line.
2. The animal-scaring device of claim 1, wherein the reel has a hub
and a plurality of spaced pins extending radially outwardly from the hub and
each having a C-shaped free end.
23. The animal-scaring device of Claim 1 wherein the control line is
attached at one end to the ventral side of the body of the bird-configured kite
at or near its head portion, there being no attachment of the control line to
any other site on the body of the bird-configured kite.
Appellant requests review of the rejections maintained by the
Examiner, namely, (1) the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over U.S. Patent No. 3,358,399, issued December 19, 1967, to
Waldmann in view of U.S. Patent No. 2,442,417, issued June 1, 1948 to
Lang; (2) the rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
obvious over Waldmann in view of U.S. Patent No. 3,273,821, issued
September 20, 1966, to Miller; and (3) the rejection of claims 1 and 23 under
35 U.S.C. § 103(a) as obvious over Waldmann in view of U.S. Patent No.
6,095,458, issued August 1, 2000, to Cripe.
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II. WALDMANN IN VIEW OF LANG (CLAIM 1)
A. ISSUE ON APPEAL
Appellant contends that (a) Lang does not teach a predatory bird kite
(Reply Br. 3); (b) the Examiner has provided no reasoning as to why one of
ordinary skill in the art would have chosen the bird design of Lang over any
other kite design known (Br. 6-7); (c) since a predatory bird design would be
threatening to fish, there would have been no motivation to add a predatory
bird kite to the fishing apparatus taught by Waldmann (Br. 7-8), (d) one of
ordinary skill in the art would not have arrived at the present invention (a
bird-scaring device) by combining the teachings of Waldmann (a kite for
fishing) and Lang (a kite for amusement) due to the different functions
recited for the kites; and (e) Declaration and video evidence demonstrate that
a five-string connected kite such as taught by Lang would not function as the
claimed kite (Br. 8-10; Reply Br. 3 and 5).
The Examiner responds that (a) the art need not explicitly state a
motivation for combining the references; (b) a bird shaped kite would be no
more of a threat to fish than the kite taught by Waldmann; (c) the structure
of the claimed device is taught by the prior art despite its function or
purpose; and (d) the Declaration and video evidence distinguish only a five-
string connected kite from a single-string connected kite, which is a feature
not recited in claim 1. (Ans. 6-7.)
The first issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
concluding that one of ordinary skill in the art would have found it obvious
to combine the teachings of Waldmann and Lang to arrive at the invention
recited in claim 1?
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B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Appellant’s Specification does not define what constitutes a
kite “configured as a predatory bird” yet indicates that hawk, eagles, and the
like, are avian predators (Spec. 2).
2. Appellant’s Specification teaches that “hawk kites” are well
known in the art for the purpose of scaring birds away from protected areas
(Spec. 1).
3. Lang teaches a kite that has the appearance of a bird as well as
the flying characteristics of a bird for improved take off and easier control
(Lang, col. 1, ll. 1-3; Figure 1).
4. Waldmann teaches a kite fishing apparatus including a kite
carrying the fishing line out over the water. The kite is capable of flying in
wind and rain and stays aloft high or low in keeping with the wish of the
angler. (Waldmann, col. 1, ll. 42-47.)
5. The five line comparative bird kite used in Appellant’s video
evidence is not the kite taught by Lang. For example, the kite does not have
the distinct guy lines 47-50 taught by Lang that provide structural support to
the kite. (Lang, col. 2, ll. 41-44).
6. Appellant never asserts that the kite used in the video evidence
is the same kite taught by Lang, only that “a predatory bird kite” is hooked
to a control line “in the fashion of Lang” (Decl. ¶ 5).
C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
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prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
However, a patentability argument directed to a claim feature which is
acknowledged to be known in the prior art cannot defeat an obviousness
rejection. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1570 (Fed. Cir. 1988) (“A statement . . . that something is in the prior art is
binding on an applicant and patentee for determinations of anticipation and
obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (“[A]
statement by an applicant, whether in the application or in other papers
submitted during prosecution, that certain matter is ‘prior art’ to him, is an
admission that that matter is prior art for all purposes.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
The combination need not be the most desirable combination available. See
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
Appellants’ attorney arguments do not take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
D. ANALYSIS
We are unpersuaded by the fact that Lang does not specifically teach
a bird kite that is a predatory bird, such as a hawk or eagle (FF 1). Appellant
has clearly acknowledged that kites that look like hawks were known in the
art for the same purpose relied upon in the invention, namely, scaring-birds
(FF 2). Thus, Appellant cannot now assert that kites in the shape of a
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predatory bird are not known in the prior art to avoid a determination of
obviousness.
The Examiner need not show that a predatory bird kite is the most
desirable shaped kite or most preferred kite over any other kite shape. Lang
clearly teaches that bird shaped devices are known to effectively function as
flying kites (FF 3). As such, the substitution of one functioning kite for
another would have been no more than the predictable use of known prior art
kites according to their established function, i.e., flying. The fact that Lang
and Waldmann teach using kites for different purposes (to carry a fish line
out over the water vs. amusement) does not negate the fact that both kites are
disclosed as equally being capable of flying (FF 3-4).
Further, Appellant provides no evidence to support a conclusion that
fish would be scared by a predatory bird kite. We find Appellant’s
conclusion no more persuasive than any other equally likely conclusion. For
example, fishing might also be benefited by scaring away birds that may
otherwise feed on the fish or, as noted by the Examiner, a predatory bird kite
might no more scare the fish than would the kite taught by Waldmann.
Finally, we agree with the Examiner that the Declaration and video
evidence submitted by Appellant is not particularly relevant to the rejection
of claim 1. As pointed out by the Examiner, the distinction raised by
Appellant, i.e., that a single-string connected kite flies advantageously over a
five-string connected kite, has no bearing on claim 1, which does not recite
the kite being connected by any particular number of strings (Ans. 7).
Moreover, the kite used in the video is clearly not the kite taught by Lang
(FF 5). Thus, the evidence does not convincingly support Appellant’s
contention that the Lang kite “couldn’t even get successfully off the ground
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to any appreciable extent,” nor support the Appellant’s further contention
that there would be no success in using the kite of Lang as the kite in
Waldmann (Reply Br. 3).
Accordingly, Appellant has not shown that the Examiner reversibly
erred in concluding that one of ordinary skill in the art would have found it
obvious to combine the teachings of Waldmann and Lang to arrive at the
invention recited in claim 1.
III. WALDMANN IN VIEW OF MILLER (CLAIMS 2 AND 3)
Appellant argues claims 2 and 3 as a group (Br. 10-11), for which we
select claim 2 as a representative claim. See 37 C.F.R. § 41.37(c)(1)(vii).
A. ISSUE ON APPEAL
Appellant contends (a) that the Examiner has provided no reasoning
as to why one of ordinary skill in the art would have chosen the reel design
of Miller over any other reel design known in the art (Br. 10); (b) that the
claims are patentable for the same reasons discussed above with respect to
claim 1 (Br. 10); and (c) that the Examiner has failed to include a finding of
a predatory bird kite, since Lang was not included in the stated rejection
(Reply Br. 7).
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: has Appellant shown that the Examiner reversibly
erred in concluding that one of ordinary skill in the art would have found it
obvious to combine the teachings of Waldmann and Miller to arrive at the
invention recited in claim 2?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
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7. Miller teaches a reel for holding fishing line and for use in
fishing, particularly ice fishing (Miller, col. 1, ll. 6-8).
8. Waldmann teaches that both the fishing line and kite line reels
are fishing reels (Waldmann, col. 2, ll. 60-67).
C. PRINCIPLES OF LAW
The same principles of law discussed above are equally relevant to the
present issue on appeal.
D. ANALYSIS
The Examiner need not show that the reel taught by Miller is the most
desirable reel known in the art or a reel more preferred over any other
known reel. Miller clearly teaches a fishing line reel as does Waldmann (FF
7-8). As such, the substitution of one functioning reel for another would
have been no more than the predictable use of known prior art reels
according to their established function, i.e., as a fishing reel.
Further, we find it only harmless error that the Examiner failed to
explicitly include Lang in rejecting claims 2 and 3.1 As noted above,
Appellant admits that hawk kites were known in the art (FF 2). As such, an
additional finding of fact is not necessary for a conclusion of obviousness.
Accordingly, Appellant has not shown that the Examiner reversibly
erred in concluding that one of ordinary skill in the art would have found it
obvious to combine the teachings of Waldmann and Miller to arrive at the
invention recited in claim 2.

1 We also note that Appellant first addresses this error in the Reply Brief
(Reply Br. 7). In the Appeal Brief, Appellant correctly states the rejection
but fails to note that the rejection lacks reference to Lang (Br. 6 and 10-11).
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IV. WALDMANN IN VIEW OF CRIPE (CLAIMS 1 AND 23)
A. ISSUES ON APPEAL
With respect to claim 1, Appellant contends that Cripe teaches a goose
shaped kite, which is not a predatory bird kite, and modifying the kite of
Cripe to be a predatory bird kite would controvert the purpose taught by
Cripe, which his to attract birds as a hunting decoy (Br. 11). Appellant
further contends that Waldmann and Cripe provide no motivation to choose
a predatory bird kite over any other known kite (Reply Br. 8). The
Examiner responds that Cripe teaches that the kite could be any animal
shape, which would include a predatory bird (Ans. 8).
With respect to claim 23, Appellant further contends that the
Declaration and video evidence show the failure of Lang in that the single
site of attachment of the control line to the bird kite of the claimed invention
is greatly superior to widely separated multiple attachment sites as disclosed
in the drawing of Waldmann and Lang kites (Br. 12; Reply Br. 9-10). The
Examiner responds that the Declaration and video evidence does little to
progress prosecution because, among other things, the evidence does not
address the single-string connected kite taught by Cripe and fails to provide
a nexus between the kite taught by Cripe and the presented evidence (Ans.
9-10).
A third issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
concluding that one of ordinary skill in the art would have found it obvious
to combine the teachings of Waldmann and Cripe to arrive at the invention
recited in claim 1 and claim 23?
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B. FACTUAL FINDINGS
The following additional Findings of Fact (FF) are relevant to
deciding the above identified issue on appeal:
9. Cripe teaches a dynamic winged animal device (i.e., shaped like
a bird) that can be utilized either as a winged kite for tethered flight or
mounted to a support member or post (Cripe, col. 2, ll. 21-25).
10. Cripe states that the term “animal” may be any bird, foul,
insect, animated creature, fictitious or contrives images, robots or other non-
animal characters and that “[t]he invention is not limited to any particular
type of animal, character or image, and the preceding list is not intended to
be exhaustive” (Cripe, col. 2, ll. 14-20).
11. Cripe disclosed that a hunting decoy with the image of a duck
or goose is a preferred embodiment (Cripe, col. 3, ll. 19-22).
12. Appellant never asserts that the kite used in the video evidence
is the same kite taught by Cripe (see generally Decl.).
13. Cripe is directed to a kite connected by a single string to a
tether attachment 13 or 51 positioned either at a forward portion of the body
or further rearward on the underside of the body (Cripe, col. 3, ll. 8-18;
Figures 1 and 4).
C. PRINCIPLES OF LAW
The same principles of law discussed above are equally relevant to the
present issue on appeal.
D. ANALYSIS
As with the prior rejection, we are unpersuaded by the fact that Cripe
does not specifically teach a bird kite that is a predatory bird, such as a hawk
or eagle (FF 1). Appellant has clearly acknowledged that kites that look like
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hawks were known in the art for the same purpose relied upon in the
invention, namely, scaring-birds (FF 2). Thus, Appellant cannot now assert
that kites in the shape of a predatory bird are not known in the prior art to
avoid a determination of obviousness.
The Examiner need not show that a predatory bird kite is the most
desirable shaped kite or most preferred kite over any other kite shape. Cripe
clearly teaches that bird shaped devices are known to effectively function as
flying kites (FF 9). As such, the substitution of one functioning kite for
another would have been no more than the predictable use of known prior art
kites according to their established function, i.e., flying. Moreover, we
disagree with Appellant that the kite taught by Cripe is limited to a goose
shape and the purpose is limited to a hunting decoy. Cripe clearly states that
this shape and intended use are merely preferred and acknowledges that the
kite may have other shapes and purposes (FF 10-11).
We also agree with the Examiner that the Declaration and video
evidence submitted by Appellant does not overcome the rejection based on
Waldmann and Cripe. Appellant never asserts that the “prior art” kite is a
kite taught by Cripe (FF 12). Thus, the evidence does not sufficiently
support Appellant’s contention that one of ordinary skill in the art would not
have success in substituting the kite taught by Cripe for the kite taught by
Waldmann. Further, according to Appellant, the video evidence shows that
a five-string connected kite does not function as effectively as a single-string
connected kite. Yet, Cripe is directed to a single-string connected kite (FF
13). As such, the evidence does not support Appellant’s contention that the
kite of Cripe would not be successful at flying.
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Accordingly, Appellant has not shown that the Examiner reversibly
erred in concluding that one of ordinary skill in the art would have found it
obvious to combine the teachings of Waldmann and Cripe to arrive at the
invention recited in claims 1 and 23.
V. CONCLUSION
For the reasons presented above, we sustain the rejections maintained
by the Examiner, namely, (1) the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Waldmann in view of Lang; (2) the rejection of
claims 2 and 3 under 35 U.S.C. § 103(a) as obvious over Waldmann in view
of Miller; and (3) the rejection of claims 1 and 23 under 35 U.S.C. § 103(a)
as obvious over Waldmann in view of Cripe.
VI. DECISION
We affirm the Examiner’s decision.
VII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).

AFFIRMED

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