Ex Parte Jones

Board of Patent Appeals and Interferences

Nov 23, 2009

10224148 (B.P.A.I. Nov. 23, 2009)

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.
10/224,148 08/20/2002 Larry Keith Jones RA-1684 1992
7590 11/23/2009
LARRY KEITH JONES
2000 Brightside Dr. # 410
Baton Rouge, LA 70820
EXAMINER
LEVY, NEIL S
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
11/23/2009 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 LARRY KEITH JONES
____________________

Appeal 2009-005991
Application 10/224,148
Technology Center 1600
____________________

Decided: November 23, 22009
____________________

Before ERIC GRIMES, RICHARD M. LEBOVITZ and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to an
animal scent composition. The Patent Examiner rejected the claims as being
directed to non-statutory subject matter and for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

Appeal 2009-005991
Application 10/224,148

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STATEMENT OF THE CASE
The invention concerns animal scent compositions. The Specification
states that the compositions of the invention mask the odor of a hunter and
attract an animal to a desired area. (Spec. 1:12-16).
Claims 21-28, which are all the pending claims, are on appeal.
Independent claim 21 is representative and reads as follows:
21. A scent composition for attracting a ruminant
game animal comprising:
(a) a quantity of composted plant matter,
(b) a quantity of fecal matter sufficient to provide an
attracting odor to said ruminant game animal,
(c) a quantity of urine sufficient to provide an
attracting odor to said ruminant game animal,
(d) means for preserving said scent composition, said
preserving means, in which said preserving means lacks the
capacity to repel said ruminant game animal, and said
preserving means being of sufficient ratio relative to the organic
constituents so as to kill unwanted microorganisms to prevent
the formation of methane gas, and to likewise transform said
scent composition into a shelf stable product capable of being
hermetically sealed within a plastic bag or other sealed
packaging for extended periods of time necessary for
warehousing, transporting, retailing and home storage thereof.

The Examiner rejected the claims as follows:
• claims 21 and 27 under 35 U.S.C. § 101 as directed to
non-statutory subject matter; and
• claims 21-28 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Weiser Application,1 Weiser Patent,2 and Opfel.3

1 Patent Application Publication No. US 2005/0089543 A1 by Mark James
Weiser, published Apr. 28, 2005.
2 US Patent No. 6,149,901, issued to Mark J. Weiser, Nov. 21, 2000.
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Application 10/224,148

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NON-STATUTORY SUBJECT MATTER
The Issue
The Examiner found that independent claim 21 and its dependent
claim 27 were directed to non-statutory subject matter. (Non-Fin. Rej.
(Nov. 27, 2006) at 2). According to the Examiner, the claimed composition
of plant matter, fecal matter, urine and “unspecified preservative means” is a
natural product that is not produced or compounded by man. (Id.).
Appellant contends that the claimed scent composition, comprising “a
sufficient amount of preservative,” is not found in nature. (App. Br. 3).
The issue is whether Appellant established that the Examiner erred in
determining that the claimed scent composition is directed to non-statutory
subject matter.
Finding of Fact
1. Independent claim 21 recites a scent composition comprising a
“means for preserving said scent composition … said preserving means
being of sufficient ratio relative to the organic constituents so as to kill
unwanted microorganisms to prevent the formation of methane gas, and to
likewise transform said scent composition into a shelf stable product ....”
(Emphasis added).

Principle of Law
The burden is generally on the Examiner to show that a claimed
invention is unpatentable. See Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed.
Cir. 2007). When an invention “is not nature’s handiwork, but [the

3 Patent Application Publication No. US 2003/0192816 A1 by William
Opfel, published Oct. 16, 2003.
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Application 10/224,148

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inventor’s] own . . . it is patentable subject matter under § 101.” Diamond v.
Chakrabarty, 447 U.S. 303, 310 (1980).
Analysis
We agree with Appellant that the Examiner erred in rejecting the
claims as being directed to non-statutory subject matter. The Examiner
found that a “means for preserving said scent composition,” as recited in the
claims reads on a natural product. While this may be true, the claims further
require the preserving means to be present in a particular amount, i.e., “of
sufficient ratio relative to the organic constituents ….” The Examiner’s
rejection does not account for this additional “ratio” limitation.
Consequently, we do not find that the Examiner satisfied the burden of
showing that the claimed invention is directed to non-statutory subject
matter.

OBVIOUSNESS
The Issue
The Examiner found that claims 21-28 would have been obvious over
the combined prior art. (Non-Fin. Rej. at 2). Specifically, the Examiner
found that the Weiser Application described a scent composition comprising
composted plant matter, fecal matter, urine and salt. (Id.). The Examiner
additionally relied on the Weiser Patent for teaching the addition of salt to an
animal attractant composition comprising urine to preserve and amplify the
animal scent. (Id.) The Examiner determined that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to include salt as a preservative in the Weiser Application’s animal
attractant composition, in the manner described by the Weiser Patent. (Id.).
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Regarding dependent claims 24 and 25 which further recite that the
composition includes a quantity of ruminant skin particles or of ruminant
hair, respectively, the Examiner additionally relied on Opfel. (Id.). The
Examiner found that Opfel taught that whenever animals are bedded, their
skin and hair particles would be rubbed off onto the bedding. (Id.; Ans.
4)(citing Opfel [0029]-[0031]). The Examiner explained that Opfel
provided evidence that the attractant compositions described in the Weiser
Application inherently comprised skin particles and hair from the animals
that rubbed against the carrier material that also served as bedding. (See
Ans. 4; Weiser Appl. [0025]).
Appellant contends that because the scent composition described in
the Weiser Application was intended for use in gardening situations, “it
would not be obvious to add an amount of salt sufficient to create a shelf
stable product in that to do so would be harmful to plant life.” (App. Br. 3-
4). Appellant also asserts that “[t]he word ‘preservative’ does not appear in
the Weiser [A]pplication.” (Id. at 4). Additionally, Appellant asserts that
“salt is known to attract ruminants which the Weiser composition mostly
repels.” (Id.). Regarding the Weiser Patent, Appellant merely asserts that it
“is directed toward a freeze dried urine based product.” (Id.). Turning to
Opfel, Appellant contends that the reference is non-analogous to Appellant’s
claimed subject matter because “Opfel teaches a system for separating
animal exudates and organic particulate matter from animal bedding.” (Id.).
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The issue is whether Appellant established that the Examiner erred in
determining that the claimed scent compositions would have been obvious
over the combined prior art to a person of ordinary skill in the art at the time
the invention was made.
Additional Findings of Fact
2. The Weiser Application described animal scent based repellant
and attractant compositions comprising odorous animal material and a
carrier, including materials such as soil, peat moss, small particles of wood,
sand, clay, straw, hay, mulch and salt. (Weiser Application at [0011]).
3. The Weiser Application disclosed that the odorous material may
typically “be in the form of urine, feces, and or glandular secretions of
animals.” (Id. [0005], [0013]).
4. Additionally, the Weiser Application disclosed that the carrier
materials can function as bedding material for a selected animal, e.g., deer,
and all the animal products (i.e., urine, saliva, odors and glandular
secretions) associated with the animal can be collected by the bedding
material. (Id. [0013]).
5. The Weiser Application also disclosed that the resulting animal
impregnated carrier “will necessarily include several animal products,” such
as urine, tarsal material, feces, body odor, and saliva. (Id. [0025]).
6. The Weiser Application disclosed spreading the attractant
“composition over an area to which said animals are desired to be attracted.”
(Id. at claim 26).
7. The Weiser Patent described animal scent attractant
compositions that amplify and preserve the animal scents to overcome
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problems found in prior art animal scents, such as the scent fading and/or
evaporating. (Weiser Patent Abstract; 1:32-33, 49-52).
8. The Weiser Patent disclosed that the composition comprises an
animal scent, such as deer urine, and between about 0-7% by weight of
sodium chloride. (Id. 2:48-57).
9. The Weiser Patent disclosed alternative embodiments of the
composition comprising either liquid animal scents or freeze dried animal
scents. (See Weiser Patent; 3:5-7; 2:27-62, claims 1 and 9).
10. Opfel disclosed that bedding used by an animal, such as a deer,
typically contains contaminants including hair, fur, dander and animal feces.
(Opfel [0029], [0031]).

Principles of Law
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. Thus, [each reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted).
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay,
966 F.2d 656, 658-9 (Fed. Cir. 1992).

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Analysis
We are not persuaded by Appellant’s argument that it would not have
been obvious to add to an amount of salt sufficient to create a shelf stable
product to the scent composition described in the Weiser Application. The
Weiser Patent disclosed adding “between about 0-7% by weight of sodium
chloride” to an animal scent composition (FF 8) which amount overlaps a
portion of the preferred preservative range disclosed in Appellant’s
Specification. (FF 8; Spec. 3:16-17).
Further, Appellant’s argument that adding such an amount of salt
would be harmful to plant life is not compelling as the Weiser Application
did not disclose applying its attractant compositions to plant life. (See FF-
6)(Weiser Application claim 26 recites spreading attractant “composition
over an area to which said animals are desired to be attracted.”).
Additionally, Appellant’s assertion that “salt is known to attract ruminants
which the Weiser composition mostly repels,” is also unpersuasive as
Weiser expressly taught that the invention included animal attractant
compositions. (FF 2.)
We remain unpersuaded of Examiner error by the Appellant’s
assertion that the Weiser Application does not mention the word
“preservative.” (See App. Br. 4). The three references disclosed all of the
limitations of the claim and the Examiner has shown with evidence why one
of ordinary skill in the art would have found the references pertinent to each
other. In particular, the Examiner relied upon the Weiser Patent as teaching
the use and amount of salt as a preservative in an animal attractant
composition. (FF 7-8.) See Merck, 800 F.2d at 1097. Additionally,
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the Weiser Patent taught the desirability of including a preservative in the
composition (FF 7).
To the extent that Appellant seeks to distinguish the Weiser Patent by
asserting that it “is directed toward a freeze dried urine based product,” we
are also unpersuaded. The Weiser Patent expressly disclosed alternative
embodiments of the invention comprising either liquid animal scents or
freeze dried animal scents. (FF 9).
Finally, we are not persuaded of Examiner error by Appellant’s
assertion that Opfel is non-analogous to the claimed subject matter. (App.
Br. 4). First, we find that all three references are in the same art or
reasonably pertinent to each other and to Appellant’s invention. See Clay,
966 F.2d at 656. Second, Appellant considers Opfel too narrowly. The
evidence supports the Examiner’s finding that animal hair, skin particles,
and fecal matter would have been present in Weiser’s composition. (Ans. 4-
5; FF 8.) Consequently, we do not find that Appellant has established
Examiner error.

CONCLUSION OF LAW
The Examiner did not show that the claimed scent composition is
directed to non-statutory subject matter; and
Appellant has not established that the Examiner erred in determining
that the claimed scent compositions would have been obvious over the
combined prior art to a person of ordinary skill in the art at the time the
invention was made.
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Application 10/224,148

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SUMMARY
We reverse the rejection of claims 21 and 27 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter, and affirm the rejection of
claims 21-28 under 35 U.S.C. §103(a) over the combination of the Weiser
Application, Weiser Patent and Opfel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

lp

LARRY KEITH JONES
2000 BRIGHTSIDE DR. # 410
BATON ROUGE LA 70820