Ex Parte Makita et al

Board of Patent Appeals and Interferences

Apr 25, 2002

09263795 (B.P.A.I. Apr. 25, 2002)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MITSUYASU MAKITA and
TADAHIRO MATSUNAGA
___________
Appeal No. 2001-1286
Application No. 09/263,795
__________
ON BRIEF
__________
Before WINTERS, ADAMS, and GRIMES, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner’s decision rejecting claims 1
through 16, which are all of the claims pending in the application.
Representative Claim
Claim 1, which is illustrative of the subject matter on appeal, reads as follows:
1. A pest repellent composition comprising an effective pest repelling amount of
carane-3,4-diol as an ingredient, a non-porous round polyethylene powder, and a
solvent. [Emphasis added]
The Prior Art Reference
Appeal No. 2001-1286
Application No. 09/263,795
Page 2
The examiner relies on the following prior art reference:
Shono et al. (Shono) 5,130,136 Jul. 14, 1992
The Rejection
Claims 1 through 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Shono.
Deliberations
Our deliberations in this matter have included evaluation and review of the
following materials: (1) the instant specification, including all of the claims on appeal;
(2) applicants’ Brief (Paper No. 9); (3) the Examiner’s Answer (Paper No. 10); and
(4) the above-cited prior art reference.
On consideration of the record, including the above-listed materials, we reverse
the examiner’s rejection.
Discussion
Initially, we note that an oral hearing had been scheduled in this appeal for
April 9, 2002. On reflection, however, this merits panel decided that a hearing was not
necessary and so notified the applicants (Paper No. 14). See 37 CFR § 1.194(c).
Each independent claim on appeal requires “a non-porous round polyethylene
powder.” Having reviewed the Shono Patent in its entirety, we find that Shono does not
Appeal No. 2001-1286
Application No. 09/263,795
Page 3
constitute sufficient evidence to support a conclusion of obviousness of claims
containing that limitation.
We shall not belabor the record with extensive comment in this case.
Shono discloses an insect repellent composition comprising an effective amount of
carane-3,4-diol, as active ingredient and a solvent. Shono further discloses that
The present compositions formulated as described above . . . can be
used by a method comprising applying them to a suitable sheet-form,
film-form, net-form or band-form base material by treatment such as
coating, impregnation, kneading, dropping, etc., and putting the repellent-
applied base material directly onto exposed area of the skin or onto the
clothing. [Column 5, lines 39 through 47]
The base material may be, e.g., a synthetic resin such as polyethylene. When a net-
form base material is used, that of a finer mesh is more preferable. Generally,
however, a size of about 16 or finer mesh is sufficiently effective (Shono, column 5,
lines 48 through 57). Simply stated, Shono would not have led a person having
ordinary skill in the art from “here to there,” i.e., from a suitable sheet-form, film-form,
net-form, or band-form base material to “a non-porous round polyethylene powder”
recited in each claim on appeal. For the reasons succinctly set forth in applicants’
Appeal Brief (Paper No. 9), pages 12 through 15, we conclude that the examiner failed
to establish a prima facie case of obviousness of claims 1 through 16.
Having determined that the examiner failed to establish a prima facie case of
obviousness, we find it unnecessary to discuss objective evidence of non-obviousness
in applicants’ specification which is relied on to rebut any such prima facie case.
Appeal No. 2001-1286
Application No. 09/263,795
Page 4
The examiner’s decision is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Eric Grimes )
Administrative Patent Judge )
Appeal No. 2001-1286
Application No. 09/263,795
Page 5
Andrew D. Meikle
Birch, Stewart, Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747
dem