Ex Parte Nauert

Board of Patent Appeals and Interferences

Sep 22, 2006

10248569 (B.P.A.I. Sep. 22, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UTA NAUERT
____________

Appeal No. 2006-1147
Application No. 10/248,569
Technology Center 3600
____________

ON BRIEF
____________

Before FRANKFORT, OWENS, HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-26, all of the claims pending in the application.
We reverse.
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Application No. 10/248,569

BACKGROUND
The appellant's invention relates to a hummingbird feeder having a liquid
reservoir (14), a shade or hood (12), and a center post (16) connecting the hood to
the reservoir. The hood is sized and positioned relative to the reservoir to provide
shade to the reservoir. A copy of the claims, which provide further detail about the
subject matter on appeal, can be found in the appendix to the appellant’s brief.
The examiner relies upon the following as evidence of unpatentability:
Lathrop 697,343 Apr. 08, 1902
Barry 4,207,839 Jun. 17, 1980
Brown 5,269,258 Dec. 14, 1993
Runyon et al. (Runyon) 5,975,015 Nov. 02, 1999
The following rejections are before us for review.
1. Claims 1-4, 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown in view of Barry and Runyon.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Brown in view of Barry and Runyon and further in view of Lathrop.
3. Claims 8, 9, 11-16, 18-23, 25, and 26 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Brown in view of Barry.
4. Claims 10, 17 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown in view of Barry and Runyon.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the final
office action (mailed January 12, 2005) and the examiner's answer (mailed March
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Application No. 10/248,569

23, 2006) for the examiner's complete reasoning in support of the rejections and to
the appellant's brief (filed March 21, 2005) and reply brief (filed February 3, 2006)
for the appellant's arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow. It is our view that, after
consideration of the record before us, the examiner has failed to establish a prima
facie case of obviousness of the claims based on the prior art relied upon by the
examiner.
Rejection of claims 1-4, 6, 7, 10, 17 and 24 as unpatentable over Brown as
modified by Barry and further in view of Runyon
In the rejection of independent claim 1, the examiner has determined that
Brown teaches a hummingbird feeder having a fluid reservoir (10) with a lid (40),
a plurality of feed holes (42), a base (12), and a center post (20) with first and
second ends. The fluid reservoir is attached to the first end of the center post (20).
The examiner admits, “Brown is silent about an opaque shade having a diameter
that is at least twice as large as a diameter of the fluid reservoir and connected to
the second end of the center post such that the shade substantially covers the fluid
reservoir.” (Final Office Action, dated January 12, 2005, p. 2). The Examiner
relies on Barry for the teaching of a bird feeder having an inverted, bowl-shaped
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Application No. 10/248,569

shade (1) having a diameter that is at least twice as large as a diameter of the fluid
reservoir (2) and connected to the second end (5, 9, 7) of the center post such that
the shade substantially covers the fluid reservoir. (Final Office Action, p. 2). The
examiner found that it would have been obvious to one of ordinary skill in the art
at the time the invention was made to modify the bird feeder of Brown with the
shade of Barry “in order to cover the fluid reservoir and its content therein from
spoiling.” (Final Office Action, p. 3). The examiner relies on Runyon for the
teaching of a feeder having an opaque shade (27). The examiner found that it
would have been obvious to one of ordinary skill in the art at the time the invention
was made to use an opaque shade on the bird feeder of Brown, as modified by
Barry, “in order to further protect the food in the reservoir from being spoil [sic] by
reflecting light from the sun.” (Final Office Action, p. 3).
The appellant contends that the examiner has failed to establish a prima facie
case for obviousness, because (1) the examiner has failed to establish that one
skilled in the art would have been motivated to combine Brown with Barry and
Runyon, and (2) the examiner has failed to show that the references teach or
suggest each and every element of the claimed invention. (Appellant’s Brief, p. 7).
Specifically, the appellant argues that Brown teaches away from adding an opaque
shade to its hummingbird feeder. (Appellant’s Brief, p. 6). The appellant further
argues that Barry specifically teaches a shade that is dimensionally different from
that called for in claim 1 and that is made from a transparent material. (Appellant’s
Brief, pp. 6-7). The appellant argues that Runyon neither teaches nor suggests that
its teachings relating to a seed feeder could be applied to a nectar-based
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Application No. 10/248,569

hummingbird feeder, and it does not teach a cover that provides the degree of
coverage that is claimed. (Appellant’s Brief, p. 7).
The examiner responded that shades are notoriously well known to be used
in all types of feeders to protect the food from environmental factors that may spoil
the food. (Examiner’s Answer, pp. 3-4). The examiner further argued that the
appellant failed to disclose a critical reason why the shade has to have a diameter
that is at least twice the diameter of the reservoir and that a change in size is
generally recognized as being within the level of ordinary skill in the art. In re
Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). (Examiner’s Answer, p. 4).
The examiner also responded that it would have been obvious to use an opaque
shade as taught in Runyon because it is merely a selection of a known material
based on its suitability for the intended use as a matter of design choice. In re
Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). (Examiner’s Answer, p. 5).
We disagree with the appellant’s argument that Brown teaches away from
adding a shade to its birdfeeder. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990, 78
USPQ2d 1329, 1338 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1132 (Fed. Cir. 1994)) (internal quotation marks omitted).
Brown’s description of its “perfect feeder” omits any mention of a shade of any
kind. We do not agree that merely because Brown refers to the proposed feeder as
“perfect” and omits any reference to a shade that this disclosure would lead one of
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Application No. 10/248,569

ordinary skill away from adding a shade to protect the reservoir from the elements.
As such, we do not find that Brown’s description of its “perfect feeder” would
discourage a person of ordinary skill from adding a shade to the Brown feeder to
shelter the reservoir from the elements.
Nonetheless, we agree with the appellant that the examiner has failed to
provide a convincing basis for a motivation to combine Runyon with Brown and
Barry to make a hummingbird birdfeeder with an opaque shade. Neither Brown,
Barry, nor Runyon teach or suggest using an opaque cover to provide shade to a
fluid reservoir of a hummingbird feeder. As discussed above, Brown does not
teach any cover on its hummingbird feeder. Barry teaches using a cover made of
transparent material on a seed feeder to keep out the elements and pests. (Barry,
col. 2, lines 64-65 “The cover and the container are constructed of polycarbonate.”)
Barry does not teach or suggest using its transparent cover to provide shade to the
seed container. Likewise, Runyon relates to a seed feeder and thus does not face
the same problem of spoilage of the feed from exposure to the sun as a nectar
feeder. As such, although Runyon teaches generally that its cover (27) “may be
opaque, translucent or transparent” (col. 4, lines 60-62), there is nothing in the
teaching of Runyon that would have led one of ordinary skill in the art at the time
of the invention possessed with the prior art Brown and Barry devices to have
modified the cover of Barry to make it opaque as taught in Runyon absent the
suggestion of the present specification, based on hindsight. Accordingly, we do
not sustain the rejection of the claims based on the combination of Brown, Barry,
and Runyon.
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Application No. 10/248,569

Rejection of claims 8, 9, 11-16, 18-23, 25, and 26 as unpatentable over
Brown as modified by Barry
In the rejection of claims 8, 9, 11-16, 18-23, 25, and 26,1 the examiner has
determined that Brown discloses a hummingbird feeder as claimed except that
Brown is silent about a hood positioned over the reservoir and having the
dimensions as recited in the claims. (Final Office Action, pp. 4-8). The examiner
found that it would have been obvious to one having ordinary skill in the art at the
time the invention was made to employ the shade of Barry in the bird feeder of
Brown, “in order to provide full coverage of the reservoir, thus preventing the food
in the reservoir from being spoiled.” (Final Office Action, p. 5).
The appellant contends that Brown teaches away from using a cover at all in
its “perfect feeder” and that Barry teaches a transparent cover that would not
provide shade from direct sunlight as called for in the claims. (Appellant’s Brief,
p. 10).
We agree with the appellant that the teachings of Brown and Barry would
not have led a person of ordinary skill in the art at the time the invention was made
to have constructed a hummingbird feeder having a cover that functions as a shade.
As discussed above, Brown does not teach using any shade or cover on its

1 Independent claims 8, 16, and 22 all require a structure to provide shade to the reservoir.
Claim 8 requires a hood that is “constructed to shade the liquid reservoir from direct sunlight.”
Claim 16 requires that a hood that “casts a shadow entirely over the reservoir for a majority of a
travel distance of a light source passing over the feeder as the light source moves from a first
horizon to a second horizon 180° from the first horizon.” Claim 22 requires that the feeder
include, “means for providing shade to the means for providing sugar solution.” The appellant
makes the same argument for patentability for independent claims 8, 16 and 22.
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Application No. 10/248,569

hummingbird feeder. Barry teaches using a transparent cover on a seed feeder “to
protect the container and its contents from the elements and to provide a reduced
access to pests.” (Barry, col. 1, lines 19-20). We find no suggestion in Barry to
construct the cover for the feeder so that it provides shade to the feeder, because
Barry relates to a seed feeder. Barry does not teach protecting the seed container
from sun exposure. As such, there is no suggestion to use the cover of Barry to
provide shade to the hummingbird feeder of Brown.
Further, even if the teachings of Brown and Barry were combined, the
combination would not teach or suggest a hood or other means for providing shade
to the reservoir. Rather, the combination would merely result in a hummingbird
feeder with a transparent cover. Accordingly, we do not sustain the rejection of the
claims based on the combination of Brown and Barry.2

2 We note with regard to claim 22 that it recites, “wherein the means for providing sugar solution
is a distance below the means for providing shade and the distance is less than a diameter of the
means for providing sugar solution.” We question whether this is what the appellant intended to
claim. The specification discusses a ratio of the distance 50 that the liquid reservoir 14 extends
below the hood 12 to the diameter 30 of the hood 12. (Specification, page 6, para. [0030]). If
further prosecution of this application is pursued, the appellant is encouraged to review this
claim limitation for correctness.
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Application No. 10/248,569

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-26 is reversed.

REVERSED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )

LEH/vsh
Appeal No. 2006-1147 Page 10
Application No. 10/248,569

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