Ex Parte Klein

Board of Patent Appeals and Interferences

Sep 11, 2008

10753660 (B.P.A.I. Sep. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ARNOLD G. KLEIN

APPELLANT
_________________
Appeal 2008-4575
Application 10/753,660
Application Publication 2004/0200130
Technology Center 3600

_________________
Decided: September 11, 2008
_________________

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
The appeal is from a Final Rejection of claims 1-5, 18 and 19. Claims
6-17 are also pending in the application, but have been withdrawn.1 (App.

1 Appellant noted that he has “requested reinstatement of the claims
previously withdrawn . . . [but that the] Examiner made no specific comment
related to this request.” (App. Br. 3). Because the claims were withdrawn in
response to a Restriction Requirement (see Office Action mailed Sep. 9,

Appeal 2008-4575
Application 10/753,660

Br. 3). 35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
The application was filed January 9, 2004. It was published on
October 14, 2004, as Application Publication 2004/0200130 (“Pub.
2004/0200130”). The real party in interest is said to be Arnold G. Klein.
(App. Br. 3).
The Examiner relied on the following references.
Name Number Date
Erickson 1,405,822 Feb. 7, 1922
Olson 4,800,671 Jan. 31, 1989

Appellant did not argue against the prior art status of these references.
Appellant appeals the rejection of claims 1, 2, 5, and 18 under 35
U.S.C. § 102(b) over Erickson. Appellant did not argue separately for the
patentability of any of the rejected claims. We review claim 1 as a
representative claim. See Bd. R. 37(c)(1)(vii).
Appellant appeals the rejection of claims 3-4 under 35 U.S.C.
§ 103(a) over Erickson and Olson.

2004), any request for rejoinder is reconsidered only after all the claims
directed to the elected invention are in condition for allowance. See MPEP §
821.04. Furthermore, “[a]fter a final requirement for restriction, the
applicant, in addition to making any reply due on the remainder of the
action, may petition the Director to review the requirement. Petition may be
deferred until after final action on or allowance of claims to the invention
elected, but must be filed not later than appeal. A petition will not be
considered if reconsideration of the requirement was not requested . . . .”
MPEP § 818.03(c).
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Appellant appeals the rejection of claim 19 under 35 U.S.C. § 103(a)
over Olsen.23
II. FINDINGS OF FACT
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion, by at least a preponderance of the
evidence.
1. Appellant’s claim 1 recites:
An insect barrier device for use in preventing insect
contamination of nectar type bird feeders, said insect barrier
device including:
a. a disposable, water-resistant media having an integral
mounting hole, wherein said media is coated on at least one
surface with a non-drying adhesive layer, said non-drying
adhesive layer being sufficiently tacky to act as a physical
barrier to the passage of insects, and wherein said coated media
is adapted to be placed via said mounting hole on a support for
the nectar type bird feeder; and
b. a means for friction fitting the coated media elastically
on the support for the nectar type bird feeder, wherein said
coated media is adapted to act as a physical barrier to block
insect crawling routes along said support for said bird feeder.

(App. Br., Claims Appx. 17).

2 The Examiner acknowledged that the rejection of claim 19 is over Olson,
not Erickson, as stated in the Grounds of Rejection. See Ans. 4 (“In regard
to claim 19, applicant is correct that the reference applied is Olson, column
4, lines 31-35.”)
3 Appellant also addressed the objection made to claim 19 by the
Examiner under 37 C.F.R. § 1.75(c). (App. Br. 6). As provided in 35
U.S.C. § 134, we consider claim rejections, not objections. Instead, such
objections are petitionable to the Director, under 37 C.F.R. § 1.181.

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2. Figure 1 of Appellant’s specification is reproduced below.

Figure 1 depicts
a simple, completely disposable embodiment of the ant
deterring device 11 consisting of the disposable media . . . with
the applied insect deterring (non-drying) adhesive pattern 13.
The device 11 has a center hole cut out as shown at 19 and a
clearly identified non-adhesive coated region 15 for convenient
handling.

(Pub. 2004/0200130 ¶ [0029]).
3. Figures 6 and 8 of Appellant’s specification are reproduced
below.

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4. Appellant’s specification provides that
As shown in FIG(S.) 5 and 6 the device 11 may be interference
fitted over the hanging hook 31 of the nectar feeder 33.
Alternatively, as shown in FIG(S). 7 and 8 the device 11 may
be positioned on a mounting stem 41 at the slightly undercut
region shown at 43.
. . . .
The ant deterring device 11 is provided with a center hole at 19
for interference fitting with the feeder hanging hook 31 or the
mounting stem 41. It is desirable that the device 11 mounting
hole 19 have some resilient elasticity to form a continuous
contact point or impassable barrier at the mounting point. The
vinyl, Tyvek® and thin-flexible foam media may be preferred
for the device 11 as they will provide for some elastic
expansion and securing friction of the mounting hole 19. Thus,
the ant deterring device 11 is provided with means for friction
fitting the media elastically on a support for a nectar type bird
feeder. An alternative configuration not shown, would use a
flexible center grommet or other means to hold the any
deterring device 11 directly to the feeder hanging cord 47 or
alternative feeder hanging hardware.

(Pub. 2004/0200130 ¶¶ [0030]-[0031]).

5. Figure 4 of Erickson is reproduced below.

Figure 4 depicts “a plan of a replenishing element” for an insect trap
(Erickson, ll. 23-24), wherein
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[t]he inner surface of the trap member 16 preferably is coated
with an adhesive substance such as moist glue as shown by the
stippling in Figure 3. The adhesive substance may be applied
directly to the inner surface of the trap member or it may be
applied to a vehicle such as a paper disk or ring 20, Figure 4,
and said ring may be applied manually to the inner surface of
the trap member.

(Id., ll. 59-65).
6. Figure 2 of Erickson is reproduced below.

Figure 2 depicts a “vertical section” of a furniture leg with the device for
capturing insects (Erickson ll. 21-22), wherein a “flexible gasket 19,
preferably formed of felt or rubber, may be interposed between the trap
member and the furniture leg 10 to stabilize the trap member in its relation
to said leg.” (Id. ll. 51-56).
7. Appellant’s claim 3 recites: “The insect barrier device of claim
1, wherein said barrier device includes a protective covering layer of low
adhesion or contact paper.” (App. Br., Claims Appx. 17).
8. Appellant’s claim 4 recites: “The insect barrier device of claim
1, wherein said barrier device media has a handling region that is free from
any adhesive coating.” (App. Br., Claims Appx. 17).
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9. Olson addresses the problem of insect attracting strips that are
“sticky and, therefore, are difficult to handle.” (Olson col. 1, ll. 29-31).
10. Figure 3 of Olson is reproduced below.

Figure 3 depicts an end elevational view of the insect trapping band, wherein
the strip is generally identified by the numeral 110 and has
opposed faces 111 and 112 and opposed edge surfaces 113 and
114. Again, a reduced thickness area 115 receives a charge or
supply of the insect trapping adhesive 120.

In the FIG. 3 version of the invention, however, a second layer
of adhesive 130 is applied to the face 112, and this is covered
with a layer of release material, as indicated by the numeral
140. Here again, of course, the strip 110 can be rolled to the
FIG. 5 condition, while the release material prevents transfer of
the second layer of adhesive 130, and the relative depth
dimensions prevent transfer of the insect trapping adhesive 120.

(Olson col. 3, ll. 52-64).
11. Appellant’s claim 19 recites: “The insect barrier device of claim
1, wherein said disposable media is elastic.” (App. Br., Claims Appx. 20).
12. Olson discloses
an insect trapping band, particularly of the type suitable for
attachment to the trunk of the tree, and wherein the tree is
protected from direct contact with the insect trapping adhesive
while the adhesive is maintained in an exposed condition
whereby it can serve its function of trapping and destroying the
insects.
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(Olson col. 1, ll. 61-66).
13. Figure 6 of Olson is reproduced below.

Figure 6 depicts a tree T with an insect trapping band 10 around its trunk.
(Olson col. 3, ll. 36-38).
14. The adhesive taught in Olson is “generally thick and tacky
. . . .” (Olson col. 3, ll. 31-32).
15. Olson teaches
the strip 10 [identified as the insect trapping band] has been
described as being a flexible material and foam material, such
as, polyurethane or non-woven polypropylene, can be used.
However, other materials, such as, cotton, burlap and the like,
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could equally well be employed with the principal requirement
being that the strip is flexible so that it can conform to the outer
surface of the tree trunk to which it is applied.

(Olson col. 4, ll. 31-38).
16. Olson teaches that
many trees have rough and uneven surfaces. The flexible,
pliable nature of the material of strip 10 will conform to the tree
surface and insects will be prevented from passing under the
strip and forced to pass over the exposed surface where they
will come into contact with adhesive 20.

(Olson col. 3, ll. 44-49).
III. LEGAL PRINCIPLES
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
The Supreme Court has recently noted that “[w]hen a work is
available in one field of endeavor, deign incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variations, § 103 likely
bars its patentability.” KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1740
(2007).
IV. ANALYSIS
Rejection of claims 1, 2, 5, and 18
Appellant’s claim 1 recites:
An insect barrier device for use in preventing insect
contamination of nectar type bird feeders, said insect barrier
device including:
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a. a disposable, water-resistant media having an integral
mounting hole, wherein said media is coated on at least one
surface with a non-drying adhesive layer, said non-drying
adhesive layer being sufficiently tacky to act as a physical
barrier to the passage of insects, and wherein said coated media
is adapted to be placed via said mounting hole on a support for
the nectar type bird feeder; and
b. a means for friction fitting the coated media elastically
on the support for the nectar type bird feeder, wherein said
coated media is adapted to act as a physical barrier to block
insect crawling routes along said support for said bird feeder.

(FF4 1). An embodiment of the disposable element of Appellant’s claimed
device is depicted in Figure 1 of the specification as a circular media with a
center hole and a region coated with a non-drying adhesive. (FF 2). Figures
6 and 8 of Appellant’s specification demonstrate how this disposable
element can attach to the support of a bird feeder. (FF 3). Appellant’s
specification indicates that
The ant deterring device 11 is provided with a center hole at 19
for interference fitting with the feeder hanging hook 31 or the
mounting stem 41. It is desirable that the device 11 mounting
hole 19 have some resilient elasticity to form a continuous
contact point or impassable barrier at the mounting point. The
vinyl, Tyvek® and thin-flexible foam media may be preferred
for the device 11 as they will provide for some elastic
expansion and securing friction of the mounting hole 19. Thus,
the ant deterring device 11 is provided with means for friction
fitting the media elastically on a support for a nectar type bird
feeder. An alternative configuration not shown, would use a
flexible center grommet or other means to hold the any
deterring device 11 directly to the feeder hanging cord 47 or
alternative feeder hanging hardware.

4 Finding of Fact.
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(FF 4).
Erickson discloses an insect trap that comprises a paper disk with a
hole in the center and moist glue on the surface. (FF 5). Thus, the trap of
Erickson includes a disposable media that resists the moisture of the glue
and is “water resistant.” The trap of Erickson also includes a “flexible
gasket,” made of rubber in one embodiment, for mounting on a furniture leg.
(FF 6).
Appellant argued that “[t]he instant invention is specifically “adapted
to be mounted on a support for a nectar type bird feeder. The Erickson
Insect Trap is specifically adapted to be mounted on a furniture caster.
These are distinct functional limitations that set the devices apart.” (App.
Br. 7). Specifically, Appellant argued “it is clear that the center mounting
hole for Erickson’s trap member 16 and paper ring 20 are simply too large to
‘friction fit’ with continuous contact on a feeder hanging rod 5/32” or
typically smaller, irregular cross section feeder hanging cord.” (App. Br. 7-
8).
The device recited in Appellant’s claim 1 is not limited to any specific
size of the “integral mounting hole,” only that it is adapted to be placed via
said mounting hole on a support for the nectar type bird feeder. . . .” The
size of the “support for the nectar type bird feeder” is not defined in
Appellant’s claim. Appellant did not direct us to, and we do not find, size
limitations for these elements in the specification. “During examination,
‘claims . . . are to be given their broadest reasonable interpretation consistent
with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
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In re American Academy of Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir.
2004). Thus, we do not read any size limitations into Appellant’s claim.
In the Reply Brief, Appellant argued that Exhibit 3, presumably a
copy of an internet order form, provides the dimensions of the center hole in
a device “that appears to be equivalent to Erickson’s trap member 16 . . . .”
(Reply Br. 3). Whether or not Exhibit 3 is related to an embodiment of the
device taught in Erickson,
‘[a]ll of the disclosures in a reference must be evaluated for
what they fairly teach one of ordinary skill in the art.’ The use
of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art,
relevant for all they contain.

In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (citation omitted).
Appellant did not provide us with any evidence, from Erickson or from what
was known by those in the art at time of filing that demonstrates those in the
art would have known that the size of a “support for the nectar type bird
feeder” differs from the size of the hole in a device described by Erickson.5
Accordingly, Appellant has not convinced us that the device in Erickson has
a hole too large to allow for “a means for friction fitting the coated media
elastically on the support for the nectar type bird feeder.”
Furthermore, Appellant argued that the Examiner was misleading in
the assertion that the force holding the trap member in Erickson and the
paper ring together “involves friction between the elements and therefore

5 Appellant acknowledged that “[t]he nectar feeder support, being typically a
hanging cord or hook is not reliably found at some standard dimension.”
(Reply Br. 3 (underlining in original)).
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can be considered as a frictional force.” (Reply. Br. 4, quoting Ans. 4).
Appellant argued that “no competent designer would claim that the Erickson
device is ‘friction fitted elastically’ on the caster.” (Reply Br. 4). Appellant
provided no evidence of what “designers” would consider to support this
argument. Nor did Appellant direct us to a definition of “frictional force” in
the specification that would exclude the forces present in Erickson’s device.
See American Academy, supra. Appellant’s specification refers to providing
“elastic expansion and securing friction” (FF 4), while Erickson provides a
rubber gasket to “stabilize the trap member . . . .” (FF6). We are not
convinced, based on the record before us, that “securing” friction and
“stabilizing” friction are patentably different.
Appellant also argued that “Erickson’s Insect Trap is not adequately
disclosed for the adhesive to be pre-applied.” (App. Br. 8 (underlining in
orginal)). According to Appellant, “[t]here is no enabling disclosure or
teaching in the Erickson patent related to protecting the adhesively (moist
glue) coated surfaces of his trap member 16 or paper ring 20.” (App. Br. 8).
Appellant argued that “[i]f the Erickson trap member 16 and paper ring 20
were to be supplied with an adhesive coating, then protecting the adhesive
surfaces from inadvertent contact during handling would have been a
practical necessity.” (App. Br. 8-9). We note that Appellant’s claimed
device does not include an element to protect the adhesive during handling,
nor does Appellant’s claim require that the adhesive be “pre-applied.”
Therefore, the lack of protection on the adhesive in Erickson is not a
patentable distinction. Appellant also provided Exhibit No. 3 as purported
evidence of the lack of an adhesive in Erickson. (App. Br. 9). As explained
above, we look to the disclosures within Erickson, not outside references, in
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our analysis of anticipation by Erickson. See Lemelson, supra. Erickson
teaches that an “adhesive substance . . . may be applied to a vehicle such as a
paper disk or ring 20 . . . .” (FF 5). Thus, Erickson teaches Appellant’s
claim element of being “coated on at least one surface with a non-drying
adhesive layer . . . .” (FF 1).
Appellant argued that “Erickson never discloses a non-drying
adhesive or even a slow drying adhesive, in his patent.” (App. Br. 9).
According to Appellant, an advertisement, provided in Exhibit 4,
demonstrates that the device of Erickson would be used with borax, oil, or a
tacky substance provided by the consumer. Erickson expressly teaches that
an “adhesive substance” can be applied directly to the inner surface of the
paper disk. (FF 5). Appellant has not explained why this “adhesive
substance,” identified as “moist glue” in Erickson (FF 5), would not be
considered to be a “non-drying adhesive layer” by those in the art.
Appellant argued that Erickson does not teach “a means for fiction
fitting the coated media elastically on the support for the nectar type bird
feeder,” as claimed. According to Appellant,
[t]he [claimed] insect barrier device 11 is held in place on the
non-adapted feeder hook 31 by the residual elastic force
(parallel or in-line with the media) exerted by the stretched
mounting hole 19. In contrast, the Erickson trap member (that
has a mounting hole diameter considerably larger than the
diameter of the caster stem) is held in place by being
sandwiched between the mating parts of the caster assembly.

(App. Br. 10). We disagree. Appellant’s claim does not limit the “means
for friction fitting” to a force that is “parallel or in-line with the media.”
Erickson teaches that a “flexible gasket 19, preferably formed of felt or
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rubber, may be interposed between the trap member and the furniture leg 10
to stabilize the trap member in its relation to said leg.” (FF 6). Thus, even if
the device of Erickson is held in place by being sandwiched between the
parts of a caster assembly, Erickson teaches a rubber gasket that stabilizes
the device around the leg. Appellant has not demonstrated why this gasket
would not stabilize the device both in “parallel or in-line with the media,” as
well as perpendicular to it. Appellant argues that the Erickson trap member
“has a mounting hole diameter considerably larger than the diameter of the
caster stem” (App. Br. 10), but does not point to any specific language in
Erickson to support this. This gasket would provide a “means for frictional
fitting the coated media elastically on the support,” as claimed.
Each element of the device recited in Appellant’s claim 1 is found in
Erickson. See Verdegaal Bros., supra. Accordingly, the Examiner did not
err in rejecting claim 1 under 35 U.S.C. § 102(b) over Erickson.
Rejection of claims 3-4
Appellant’s claim 3 recites: “The insect barrier device of claim 1,
wherein said barrier device includes a protective covering layer of low
adhesion or contact paper.” (FF 7). Appellant’s claim 4 recites: “The insect
barrier device of claim 1, wherein said barrier device media has a handling
region that is free from any adhesive coating.” (FF 8).
Olson addresses the problem of insect trapping adhesive that is “sticky
and, therefore . . . difficult to handle. (FF 9). For example, Olson teaches a
“layer of release material” that covers the adhesive layer and “prevents
transfer of the second layer of adhesive . . . .” (FF 10). This “release
material” is a protective covering for the insect trapping adhesive, as
provided in Appellant’s claim 3. The band taught in Olson also has a
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surface with a recessed area that receives the insect trapping adhesive. (FF
10). The non-recessed part of this surface, which does not have any
adhesive, would be a “handling area,” as provided in Appellant’s claim 4.
Because Olson provides these solutions to the problem of handling tacky
adhesive in insect traps, such as those taught by Erickson, “design incentives
[or] other market forces” would have prompted those in the art to combine
these two references. See KSR, supra.
In regard to claim 3, Appellant argued
[i]t is clear from this description and Olson’s patent Fig. 3 . . .
specification, column 3, lines 57-60, that the protective paper
140 is applied to the contact adhesive 130, not the insect
trapping adhesive 120. This differs significantly from the
present invention, where the non-drying adhesive layer 25 is
protected by the direct contact of the low adhesion contact
paper 23 (present application, Fig. 3, specification page 6, lines
1-3).

(App. Br. 13). Appellant’s claim 3 does not specify on which surface the
“protective covering” is applied, thus the difference in placement of the
release layer of Olson does not make it distinct from that claimed. Appellant
also argued that “[s]ome non-drying adhesives, and especially thicker
applications as specified by Olson will adhere to even the best low adhesion
paper.” (App. Br. 13). Appellant provided no support for this contention,
though, and did not point to specific language in Olson that would
distinguish the “release layer” from the “low adhesion or contact paper”
recited in claim 4. Appellant also did not direct us to, and we do not find,
any description of such paper in the specification that would distinguish it
from the “release layer” of Olson. Indeed, Appellant agreed that
“[v]irtually, all contact adhesive coated products come with a protective
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layer of low adhesion paper. It is a ubiquitous practice and a practical
requirement for an almost unlimited variety of products.” (App. Br. 13-14).
In regard to claim 4, Appellant argued that
Olson’s insect trapping band does have uncoated regions 11 and
13 as can be seen in his patent Fig. 1. Olson’s patent disclosure
does not identify these areas as handling regions. . . . The
Examiner could identify any uncoated region on Olson’s band
or any other non-drying adhesive based trap as a “handling
region.” Of course it is practically impossible to expect that
any non-drying adhesive type insect trapping or barrier device
would be coated on every surface. The present application Fig.
1, shows a specifically adapted handling region not disclosed in
the Olson or Erickson references.

(App. Br. 14). Appellant did not point to, nor do we find, any explanation in
the specification that makes the claimed handling region “specifically
adapted,” other than by the lack of adhesive coating. Given the lack of
distinguishing language in the claim and Appellant’s agreement that insect
trapping or barrier devices would not be expected to be coated on every
surface, we do not find Appellants argument convincing.
Appellant also argued that “even when [Erickson and Olson] are
combined, these references are not suggestive or practically adaptable for the
application of protecting nectar feeders from ant contamination.” (App. Br.
14). The Supreme Court has recently held that “[a]s our precedents make
clear, however, the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 127 S.Ct. at 1741. Thus, neither Erickson nor
Olson need address the problems of protecting nectar feeders from ant
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contamination for their teachings to be combined in rendering the claimed
device obvious.
To rebut the Examiner’s prima facie case for obviousness, Appellant
argued that “despite the long felt need for a (low maintenance, non-
insecticide based) insect barrier device for preventing ant contamination of
nectar type bird feeders – as discussed in detail in the instant application
Background of the Invention – no one has adequately solved this problem.”
(App. Br. 14). Appellant presented “two tables with a listing of patents as
evidence to support that those skilled in the art, have continually tried to
solve the ant contamination of nectar feeder problem.” (Reply Br. 10).
Appellant also presented “a small sample of the commercial products for
keeping ants out of nectar feeders . . .” and concluded that “[n]one of the
prior art patented devices or commercial devices uses or suggests the use of
a non-drying adhesive.” (Reply Br. 11 (underlining in original)).
As we understand the evidence presented by Appellant, it relates to
the use of non-drying adhesive in a nectar feeder. The Examiner rejected
claim 1, which recites that feature, under 35 U.S.C. § 102(b), asserting that
the claimed subject matter was anticipated by Erickson. “If the rejection
under § 102 is proper . . . appellant cannot overcome it by showing such
unexpected results or teaching away in the art, which are relevant only to an
obviousness rejection.” In re Malagari, 499 F.2d 1297, 1302 (C.C.P.A.
1974).
To rebut the rejections of claims 3 and 4, which were made under 35
U.S.C. § 103, Appellant must provide evidence that the inclusion of a
“protective covering layer” and a “handling region” solved a previously
unsolved and long-felt need of those in the art. See, In re Kahn, 441 F.3d
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977, 990-91 (Fed. Cir. 2006) (“our precedent requires that the applicant
submit actual evidence of long-felt need, as opposed to argument. This is
because ‘[a]bsent a showing of long-felt need or the failure of others, the
mere passage of time without the claimed invention is not evidence of
nonobviousness.’ Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1325 (Fed. Cir. 2004)”). Appellant did not direct us to such “actual
evidence,” beyond the “mere passage of time.” Furthermore, in light of
Appellant’s statements that “[v]irtually, all contact adhesive coated products
come with a protective layer of low adhesion paper” (App. Br. 13), and that
“it is practically impossible to expect that any non-drying adhesive type of
insect trapping or barrier device would be coated on every surface” (App.
Br. 14), we do not find Appellant’s arguments that long-felt and unsolved
needs were met by the subject matter of these claims to be persuasive.
Accordingly, the Examiner did not err in rejecting claims 3 and 4
under 35 U.S.C. § 103(a) over Erickson and Olson.
Rejection of claim 19
Appellant’s claim 19 recites: “The insect barrier device of claim 1,
wherein said disposable media is elastic.” (FF 11). Olson discloses a band
for trapping insects that carries an adhesive and would be used, for instance,
on a tree trunk. (FF 12). When the band is wrapped around a tree trunk, as
depicted in Figure 6 of Olson (FF 13), it forms a “mounting hole” through
which the trunk extends. The band of Olson is covered on one surface (FF
11) with an adhesive that is tacky (FF 14). This band would be “friction
fitted” on the trunk. Olson teaches that the band is made of “flexible
material and foam material, such as, polyurethane or non-woven
polypropylene . . .” (FF 15), though this material is not expressly identified
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as being “elastic. The Examiner asserted that “it would have been obvious
to employ an old and well known elastic material to wrap around a tree so
that the barrier can be compressed in size when not applied to a support.”
(Final Office Action 4).
Appellant points to the teaching in Olson that
many trees have rough and uneven surfaces. The flexible,
pliable nature of the material of strip 10 will conform to the tree
surface and insects will be prevented from passing under the
strip and forced to pass over the exposed surface where they
will come into contact with adhesive 20.

(FF 16). According to Appellant,

It is not desirable for the trapping band 10 to be "elastic" as this
property may result in the end user stretching the band when
installing it on a tree. Any elastic stretching of the trapping
band during installation will tend to make the band bridge over
the surface irregularities and contour depressions that are
typical of many trees. This loss of surface contact between the
band and the tree (allowing insects to pass under the band) is
exactly what Olson is trying to avoid.

(App. Br. 12). Appellant also argued that the “proposed stretching of
[Olson’s] insect trapping band to facilitate compact storage is not advised -
since it may result in the disruption of the insect trapping adhesive 20 and
could result in the adhesive running out of the recessed groove 15.” (App.
Br. 12).
20
Appeal 2008-4575
Application 10/753,660

We are not convinced that the band disclosed in Olson is not elastic6
or would not have been modified by those in the art to have a degree of
elasticity. There are no limitations in claim 19 on the degree of elasticity of
the media or the extent of the contact the disposable media makes with the
support. Because we give claims their broadest reasonable interpretation,
see American Academy, supra, we do not read any limitations on the degree
of elasticity into Appellant’s claim. Thus, those in the art would find it
obvious to make the band taught in Olson of a material that is elastic enough
to provide a secure fit around the trunk, but not so elastic that it cannot
conform to the “surface irregularities and contour depressions that are
typical of many trees.” (App. Br. 12).
Accordingly, the Examiner did not err in rejecting claim 19 under 35
U.S.C. § 103(a) over Olson.

V. ORDER
Upon consideration of the record and for the reasons given,
the Examiner’s rejection of claims 1,2, 5, and 18 under 35 U.S.C.
§ 102(b) over Erickson is AFFIRMED;
the Examiner’s rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
over Erickson and Olson is AFFIRMED; and
the Examiner’s rejection of claim 19 under 35 U.S.C. § 103(a) over
Olson is AFFIRMED.

6 We understand that polyurethane can have some elasticity. See e.g. U.S.
Patent 6,468,652, “Elastic polyurethane-urea fiber and method for producing
the same.”
21
Appeal 2008-4575
Application 10/753,660

FURTHER ordered no time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb

ROBERT W. BECKER & ASSOCIATES
707 Highway 333
Suite B
Tijeras, NM 87059-7507
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