Ex parte Lee

Board of Patent Appeals and Interferences

Feb 8, 2002

09175570 (B.P.A.I. Feb. 8, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ELLIOT W. LEE
__________
Appeal No. 2001-2288
Application 09/175,570
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Elliot W. Lee appeals from the examiner’s rejection
(Paper No. 15) of claims 1, 2, 6, 9 and 11. Claims 10 and 19,
the only other claims pending in the application, stand
allowed.
THE INVENTION
The invention relates to “adhesive-type traps for
catching . . . insects, particularly cockroaches”
(specification, page 2). Representative claim 1 reads as
follows:
Appeal No. 2001-2288
Application 09/175,570
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1. An adhesive roach trap comprising:
a first horizontal planar base member for supporting a
plurality of adhesive roach traps;
a plurality of pairs of stanchions formed on the first
horizontal planar member, each pair of the plurality of pairs
of
stanchions defining a plurality of horizontally adjacent
spaces for accepting a corresponding plurality of adhesive
roach traps placed between adjacent pairs of the plurality of
stanchions, the plurality of adhesive roach traps being placed
on the first horizontal planar member, horizontally adjacent
to one another so as to form a continuous linear horizontal
array of horizontally adjacent adhesive roach traps; and
a plurality of adhesive roach traps, each of the
plurality of adhesive roach traps being slidably placed
between adjacent pairs of the plurality of stanchions so as to
form a continuous linear array of horizontally adjacent
adhesive roach traps, each adhesive roach trap being located
to one horizontal adjacent side of an adjacent adhesive roach
trap.
THE PRIOR ART
The references relied on by the examiner to support the
prior art rejections on appeal are:
Ollier 1,293,894 Feb. 11, 1919
Snider 1,792,774 Feb. 17, 1931
McQueen 4,815,231 Mar. 28, 1989
THE REJECTIONS
Claims 1, 2, 6, 9 and 11 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out
Appeal No. 2001-2288
Application 09/175,570
Although the examiner’s answer did not restate the 351
U.S.C. § 112, second paragraph, rejection, the comments on
page 8 thereof indicate that the omission was inadvertent.
Also, contrary to the assertions made throughout the
appellant’s reply brief, the above 35 U.S.C. § 103(a)
rejections are not new grounds of rejection entered for the
first time in the examiner’s answer. These rejections have a
clear basis in the action appealed from (Paper No. 15).
Finally, the action appealed from also contains a 35 U.S.C. §
102(b) based on U.S. Patent No. 4,709,503 to McQueen and a 35
U.S.C. § 103(a) rejection utilizing the McQueen ‘503 patent as
the primary reference. Upon reconsideration (see page 4 in
the answer), the examiner has withdrawn these rejections.
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and distinctly claim the subject matter the appellant regards
as the invention.
Claims 1, 2, 6 and 9 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Snider in view of McQueen.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Snider in view of McQueen and Ollier.
Attention is directed to the appellant’s briefs (Paper
Nos. 19 and 21) and to the action appealed from and the
examiner’s answer (Paper Nos. 15 and 20) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.1
DISCUSSION
Appeal No. 2001-2288
Application 09/175,570
There is nothing intrinsically wrong with the use of2
functional language in a claim to define something by what it
does rather than by what it is. In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981); In re Swinehart, 439 F.2d
210, 213, 169 USPQ 226, 228 (CCPA 1971).
4
I. The 35 U.S.C. § 112, second paragraph, rejection
The examiner considers claim 1, and claims 2, 6, 9 and 11
which depend therefrom, to be indefinite because
[i]n reference to claim 1, the phrase “for
accepting a corresponding plurality of adhesive
roach traps ... the plurality of adhesive roach
traps being placed ...” renders the claim vague and
indefinite since later in the claim “a plurality of
adhesive roach traps, each of the plurality of
adhesive roach traps being slidably ...” is set
forth later in the claim.
It is unclear whether applicant is attempting to
functionally recite the location of the adhesive
traps in the former phrase or positively recite the
structure and location of the adhesive traps. In
addition, both phrases attempt to claim the same
subject matter and is somewhat redundant [Paper No.
15, page 2].
A fair reading of claim 1 indicates that the adhesive
roach traps are mentioned first in the context of defining the
stanchions and the associated spaces in terms of their
intended function or use, and then in the context of being2
set forth in a positive manner as part of the claimed
combination. While this sequencing may be somewhat unusual,
it does not render the claim, read as a whole and in light of
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Application 09/175,570
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the underlying specification, redundant or otherwise
indefinite.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claims 1, 2, 6, 9 and
11.
II. The 35 U.S.C. § 103(a) rejections
Snider discloses a mouse trap assembly comprising a frame
1 formed of a horizontal base plate 2 and a vertical wall 3
extending upwardly therefrom, a plurality of horizontally
spaced apertures 4 in the wall, pairs of guides 16 on the base
plate
respectively aligned with the apertures, a trap 6 received
between each pair of guides, and a resilient clip 24 mounted
adjacent one end of the vertical wall for latching engagement
with an adjacent frame. The traps 6 have spring-biased jaws
adapted to be triggered by rodents passing through the
apertures in the vertical wall of the frame.
According to the examiner (see page 5 in the answer),
Snider responds to all of the limitations in claim 1 except
for the one requiring the traps to be “adhesive” traps. The
examiner turns to McQueen for this feature. McQueen discloses
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Application 09/175,570
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a trap assembly comprising a housing and a plurality of panels
removably disposed therein, with the panels having sticky glue
on their surfaces. In proposing to combine Snider and
McQueen, the examiner concludes that it would have been
obvious to one of ordinary skill in the art
to substitute the adhesive traps, as taught by
McQueen, for the spring operated traps of Snider to
utilize traps that operate on the simple principle
of adhesive entrapment and which do not require
manual setting of the traps so as to be able to
catch pests at all times versus spring operated
traps which may become accidentally tripped without
capturing a pest or may injure a user’s hand when
attempting to set the trap [answer, page 5].
The examiner’s position here is reasonable on its face
and has not been specifically challenged by the appellant.
The
appellant does contend, however, that the rejection is unsound
because the combined disclosures of Snider and McQueen do not
teach and would not have suggested a trap meeting the
limitation in claim 1 requiring “a continuous linear array of
horizontally adjacent adhesive roach traps.”
As shown in Figures 1 and 2, Snider’s traps are spaced
apart by horizontal distances appreciably greater than the
widths of the traps. While these traps might be horizontally
Appeal No. 2001-2288
Application 09/175,570
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“adjacent” in a broad sense, they do not form a “continuous
linear array” due to the relatively large spacing
therebetween. Hence, even if modified in view of McQueen in
the manner proposed by the examiner, Snider would still lack
response to the claim limitation argued by the appellant.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, and dependent claims 2, 6 and
9, as being unpatentable over Snider in view of McQueen.
As Ollier does not cure the foregoing deficiencies of the
Snider-McQueen combination relative to parent claim 1, we
shall not sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claim 11 as being unpatentable over Snider in view
of McQueen and Ollier.
III. New ground of rejection
The following rejection is entered pursuant to 37 CFR
§ 1.196(b).
Appealed claims 1, 2, 6, 9 and 11 and allowed claim 10
are rejected under 35 U.S.C. § 112, second paragraph, as
Appeal No. 2001-2288
Application 09/175,570
Interestingly, since claims 2 and 3 accurately recite3
the relationship between the stanchions and traps, they
conflict with parent claim 1 which does not.
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failing to particularly point out and distinctly claim the
subject matter the appellant regards as the invention.
The recitations in claim 1 that “each pair of the
plurality of pairs of stanchions [defines] a plurality of
horizontally adjacent spaces for accepting a corresponding
plurality of adhesive roach traps” and that “each of the
plurality of adhesive roach traps [is] slidably placed between
adjacent pairs of the plurality of stanchions” do not make
sense. As shown and described in the underlying disclosure,
each pair of stanchions defines a single space for accepting a
single adhesive roach trap and each adhesive roach trap is
slidably placed between the stanchions of a single pair of
stanchions. The recitations in independent claim 10 that
“each pair of the plurality of stanchions [defines] a
plurality of spaces for accepting a corresponding plurality of
roach traps” and that “each of the plurality of roach traps
[is] slidably placed between adjacent pairs of the plurality
of stanchions” pose similar problems. Claims 2, 6, 9 and 11
are indefinite by virtue of their dependency from claim 1. 3
Appeal No. 2001-2288
Application 09/175,570
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SUMMARY
The decision of the examiner to reject claims 1, 2, 6, 9
and 11 is reversed, and a new rejection of claims 1, 2, 6 and
9 through 11 is entered pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2001-2288
Application 09/175,570
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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).
REVERSED; 37 CFR § 1.196(b).
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
ROBERT P. BELL
Appeal No. 2001-2288
Application 09/175,570
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ROBERT, PLATT, BELL & ASSOCIATES
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