Ex Parte Powell

Board of Patent Appeals and Interferences

May 2, 2008

10696906 (B.P.A.I. May. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES D. POWELL
__________

Appeal 2008-0212
Application 10/696,906
Technology Center 3600
__________

Decided: May 2, 2008
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for luring waterfowl. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1-20 are pending and on appeal (App. Br. 3). Claim 1 is
representative of the appealed subject matter and reads as follows:
1. An apparatus for luring waterfowl, the apparatus
comprising:
a rotatable platform;
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a force-generating unit for rotating the rotatable platform;
a power source for powering the force-generating
unit to rotate the rotatable platform;
one or more support arms attached to the rotatable
platform, each of said support arms including:
a lower end attached to the rotatable
platform; and
an upper end positioned above the rotatable
platform; and
a waterfowl decoy attached to the upper end of
each support arm with said decoy being positioned above
the rotatable platform;
wherein each decoy is moved along a substantially
circular path above the rotatable platform as the rotatable
platform is rotated by the force-generating unit, thereby
providing a lure for waterfowl.

The Examiner applies the following documents in rejecting the
claims:
Caccamo US 3,768,192 Oct. 30, 1973
Sugimoto US 5,956,880 Sep. 28, 1999
Porter US 2003/0204983 A1 Nov. 6, 2003

The following rejections are before us for review:
Claims 1-7 and 15-17 stand rejected under 35 USC § 103(a) as being
obvious over Caccamo in view of Sugimoto (Ans. 3).1
Claims 1-7 and 15-17 stand rejected under 35 USC § 103(a) as being
obvious over Sugimoto in view of Caccamo (Ans. 3).
Claims 8-14 and 18-20 stand rejected under 35 USC § 103(a) as being
obvious over Caccamo as modified by Sugimoto further in view of Porter
(Ans. 3).

1 Examiner’s Answer mailed April 21, 2006.
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Claims 8-14 and 18-20 are rejected under 35 USC § 103(a) as being
obvious over Sugimoto as modified by Caccamo further in view of Porter
(Ans. 3).
OBVIOUSNESS -- CACCAMO AND SUGIMOTO
ISSUE
The Examiner makes two separate obviousness rejections of claims
1-7 and 15-17 over Caccamo and Sugimoto (see Ans. 3). Each rejection
advances a distinct rationale. In the first rejection, the Examiner cites
Caccamo as disclosing a decoy on a support arm, and Sugimoto as
disclosing a decoy attached to a motor-driven rotatable platform (Final
Rejection 2). The Examiner contends that a person of ordinary skill would
have considered it obvious “to provide the decoy of Caccamo with a rotating
platform, a force generating unit and a power source as shown by Sugimoto
for the purpose of rotating the decoys in a circle to attract more waterfowl at
times when wind and water power is not providing enough power” (id. at 2-
3).
In the alternative ground of rejection, the Examiner contends that one
of ordinary skill would have considered it obvious “to provide the decoy of
Sugimoto with arms extending above the platform as shown by Caccamo for
the purpose of using the device in locations where a top mount is not
practical by mounting the rotatable platform and box from the bottom” (id.
at 4).
Appellant contends that Caccamo’s device is a “simple, passive
system that uses wind to animate a decoy for the purpose of luring waterfowl
(unlike that claimed by Appellant),” whereas Sugimoto’s device “employs a
complex, active system for the purpose of scaring fowl (also unlike that
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claimed by Appellant)” (App. Br. 10). Appellant argues that “[t]here is no
objectively reasonable basis to assert that the person of ordinary skill
attempting to solve the myriad of problems associated with a waterfowl
luring apparatus would combine only those elements selected by the
Examiner from a passive waterfowl-luring device and an active bird-scaring
device” to arrive at the claimed apparatus (id. at 11).
The issue with respect to these rejections, therefore, is whether the
Examiner erred in concluding that one of ordinary skill would have
considered claims 1-7 and 15-17 obvious in view of Caccamo and Sugimoto.
FINDINGS OF FACT
1. Claims 1 and 16 are the independent claims rejected as obvious over
Caccamo and Sugimoto. Claim 1 recites an apparatus for luring waterfowl.
The apparatus has a rotatable platform, a force-generating unit for rotating
the rotatable platform, a power source for powering the force-generating
unit, and one or more support arms attached to the rotatable platform. Each
of the support arms has a lower end attached to the rotatable platform, and
an upper end positioned above the rotatable platform.
Claim 1 requires a waterfowl decoy to be attached to the upper end of
each support arm, with the decoy being positioned above the rotatable
platform. The claim requires each decoy to move along a substantially
circular path above the rotatable platform when the rotatable platform is
rotated, thereby providing a lure for waterfowl.
Claim 16 recites a similar apparatus, but also requires each support
arm to be flexible and to bend when attached to a decoy.
2. Appellant’s Figure 5, reproduced below, shows a side view of one
embodiment of the claimed waterfowl-luring apparatus:
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The figure shows support arm 4 “securely fastened to shaft 3 of the motor 1
by way of rotatable platform 12 with a decoy 8 attached to the upper end B
of the arm 4” (Spec. 7). The Specification discloses that “[w]hen the motor
1 is engaged, the platform 12 is rotated and the support arm 4 turns and the
decoy 8 resembles a bird in flight. A counterweight 5 is shown to give the
system 11 balance when only one decoy 8 is used” (id.).
3. Caccamo discloses a device that “relates to waterfo[w]l and the like,
decoys and more particularly to means for mounting such decoys in a
manner to achieve animation thereof during use. Decoys as such are old and
well known. The present invention is intended for use in combination with
any type of decoys of ducks, geese and like fowl” (Caccamo, col. 1, ll. 11-
17).
4. Figure 1 of Caccamo is reproduced below:
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The figure shows “a panoramic view of a duck blind having decoys mounted
in accordance with the present invention” (Caccamo, col. 2, ll. 10-12).
More specifically, the figure shows duck-shaped decoys with spread
wings secured to the ends of long flexible arms 14 by the mountings 10, the
opposite ends of the flexible arms being “adapted to [be] . . . anchored in
earth or in a length of pipe P. The pipe P or end of the [arm] 14 is driven
stake-like into the bottom of a pond adjacent a duck blind as illustrated” (id.
at col. 2, ll. 58-64). Caccamo states that “[t]he arrangement is such that the
decoy will bob up and down at the end of the flexible arm 14 as the latter
flexes due to wind action against the spread wings” (id. at col. 2, ll. 64-67).
5. Caccamo discloses that one embodiment of the mounting apparatus 10
“facilitates rockability of the decoy D about the horizontal axis” as well as
“rotary swinging of the decoy D about the vertical axis” (Caccamo, col. 3, ll.
44-50). Caccamo states:
With the combined action afforded by the vertical and
horizontal axis of the mounting means 10 the decoy D is
enabled to achieve an animated action against and into the
wind. This coupled with the up and down bobbing of the decoy
at the end of the flexible arm 14 attains animation simulating
the natural action of a bird over a pond adjacent a blind as
illustrated in FIG. 1.
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(Id. at col. 3, ll. 51-58.) Caccamo does not disclose moving its decoys in a
rotating motion about the central anchored portion of the flexible arm.
6. Sugimoto discloses “an apparatus for preventing doves and crows and
the like from accessing to buildings such as an aeroplane hangar or a large
warehouse to preclude damage incurred by these kinds of birds” (Sugimoto,
col. 1, ll. 4-7). Sugimoto’s apparatus “scares birds into flying away by
flying a flying object having a predatory-bird-like figure. The flying object
may [be] provided with a light emission unit, an ultrasonic sound
transmitter, and a sound generator, alone or in combination to increase the
scaring effect of the flying object against the birds” (id. at col. 1, ll. 32-37).
7. Figure 3 of Sugimoto, reproduced below, shows one embodiment of
Sugimoto’s device:

The figure shows the predatory bird-shaped flying object 1 attached to
suspension wire 3, which is in turn is attached to “motor 5 and rotary body 6
[which] are mounted on the top end of the mast 7 to allow the flying object 1
to circularly fly” (Sugimoto, col. 3, ll. 53-55).
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8. Sugimoto emphasizes that the bird-shaped “flying object 1 imitates
features of predators such as eagles, hawks and falcons thought of as natural
enemies of the dove and crow (hereinafter referred to as birds), namely
mocks large wings 1a, sharply pointed beaks 1b, and claws 1c. . . . A
stuffed bird of prey is sometimes used which naturally exhibits an excellent
scaring effect” (Sugimoto, col. 2, ll. 26-34; see also Figure 1). Sugimoto
also discloses that the “flying trajectory of the flying object 1 may simulate
the flying behavior of an actual bird of prey by controlling in a regular
pattern or randomly the rotational speed of the motor 5 and the reel-in rate
pre unit time of the suspension wire 3 by the reel” (id. at col. 3, ll. 39-44).
9. Sugimoto states:
To scare the birds away more effectively, the flying object 1
may be provided with a light emission unit such as red light-
emission diodes or bulbs at the locations corresponding to the
eyes of the flying bird 1, and by continuously lighting or
blinking them, scaring effect is further increased. The color of
the light emission unit is not limited to red. Since the birds are
generally known to avert variations in electromagnetic wave, it
is useful to mount a relatively strong permanent magnet or an
ultrasonic wave transmitter in the flying object 1. The scaring
effect of the flying object 1 is further increased by housing in
the flying object 1 a sound generator giving off a call of birds of
prey.

(Sugimoto, col. 2, ll. 39-50).
PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. “[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
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one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.”

In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted,
bracketed material in original).
Recently addressing the issue of obviousness, the Supreme Court
pointed out that the analysis under 35 U.S.C. § 103 “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 Int’l v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007). The Court advised that “[a] person of
ordinary skill is . . . a person of ordinary creativity, not an automaton.” Id. at
1742.
The Court also advised, however, that “it can be important to identify
a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does . . .
because inventions in most, if not all, instances rely upon building blocks
long since uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.” Id. at 1741. Thus,
“[i]n determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
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account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
However, while claims under examination must be given their broadest
reasonable interpretation, in In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir.
2007), the Federal Circuit recently found it unreasonable to interpret a claim
to encompass a prior art product where “a person of ordinary skill in the
field” would have recognized that the two products were different, and
where the specification and claims had “specifically state[d]” that the claims
required a particular product. Buszard, 504 F.3d at 1367.
ANALYSIS
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness based on Caccamo and Sugimoto. With respect to
the Examiner’s first obviousness rationale, we do not agree that a person of
ordinary skill would have been prompted to provide Caccamo’s apparatus
with Sugimoto’s motor-driven rotating platform “for the purpose of rotating
the decoys in a circle to attract more waterfowl at times when wind and
water power is not providing enough power” (Final Rejection 2-3).
We agree with the Examiner that Caccamo’s device uses wind action
to animate its decoys (see Finding of Fact (“FF”) 4, above). However, the
actual movements of Caccamo’s decoys caused by the wind are a bobbing
motion at the end of the flexible arm, a back-and-forth rocking motion about
the horizontal axis enabled by the decoy’s mounting device on the arm, and
a pivoting motion about the vertical axis, also enabled by the decoy’s
mounting mechanism (see FF 4 and 5).
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Thus, even assuming for argument’s sake that it would have been
desirable to provide Caccamo’s device with a power source to supplement
the wind, a person of ordinary skill would not have been prompted to add a
power-driven rotatable platform to Caccamo’s device because Caccamo
simply does not suggest that moving the entire flexible arm and its attached
decoy in the manner disclosed by Sugimoto (FF 7) would be desirable from
a waterfowl-attracting standpoint. Because adding a power-driven rotatable
platform to Caccamo’s device would not enhance the desired bobbing,
rocking, and pivoting motion of Caccamo’s decoy, we do not agree that a
person of ordinary skill would have been prompted to modify Caccamo in
the manner proposed in the Examiner’s first rejection.
In the second obviousness rejection over Caccamo and Sugimoto, the
Examiner concludes that one of ordinary skill would have considered it
obvious “to provide the decoy of Sugimoto with arms extending above the
platform as shown by Caccamo for the purpose of using the device in
locations where a top mount is not practical by mounting the rotatable
platform and box from the bottom” (Final Rejection 4).
We do not agree that providing Sugimoto’s decoy with Caccamo’s
flexible arms would result in the device recited in independent claims 1 and
16. Claims 1 and 16 both recite “[a]n apparatus for luring waterfowl.” Both
claims require the apparatus to have “a waterfowl decoy” that “provid[es] a
lure for waterfowl” when the apparatus is set in motion.
While the Specification does not define “waterfowl,” the Specification
states that “[s]tatic decoys have been used for many years to attract wild
game such as ducks and geese” (Spec. 2). Also, Caccamo discloses that its
device “relates to waterfo[w]l and the like, decoys and more particularly to
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means for mounting such decoys in a manner to achieve animation thereof
during use. Decoys as such are old and well known. The present invention
is intended for use in combination with any type of decoys of ducks, geese
and like fowl” (FF 3 (Caccamo, col. 1, ll. 11-17)). We therefore interpret
“waterfowl” as encompassing ducks, geese, and similar birds.
Caccamo discloses that movements suitable for luring waterfowl
include a wind-aided bobbing motion at the end of the apparatus’ flexible
arm, a back-and-forth rocking motion about the decoy’s horizontal axis
enabled by the decoy’s mounting device, and a pivoting motion about the
vertical axis (see FF 4 and 5).
Sugimoto discloses a device intended to scare birds such as doves and
crows away from buildings (FF 6). Sugimoto discloses that its device scares
doves and crows by mimicking predatory birds such as eagles, hawks, and
falcons (FF 8 and 9). In contrast to Caccamo’s waterfowl-luring bobbing
and rocking motions, Sugimoto discloses that its device mimics the flying
trajectory of predators by flying in a circular pattern (see FF 7 and 8).
We recognize that claim terms must be given their broadest
reasonable interpretation consistent with the prior art and the Specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, given
Caccamo’s disclosure that decoys with bobbing and rocking motions lure
waterfowl, and the absence of any evidence that a circular motion would lure
waterfowl, we do not agree with the Examiner that it is reasonable to
interpret the claimed “waterfowl decoy” that “provid[es] a lure for
waterfowl” to encompass Sugimoto’s bird-scaring device that moves in a
circular pattern that emulates birds of prey. Thus, even assuming for
argument’s sake that a person of ordinary skill would have been prompted to
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use Caccamo’s flexible arms to support Sugimoto’s decoy, we do not agree
with the Examiner that doing so would result in the claimed apparatus which
would provide “a lure for waterfowl” when “moved along a substantially
circular path.”
In sum, we do not agree that either of the rationales advanced by the
Examiner shows that the claimed apparatus would have been prima facie
obvious to a person of ordinary skill viewing Caccamo and Sugimoto. We
therefore agree with Appellants that the Examiner erred in concluding that
one of ordinary skill would have considered claims 1-7 and 15-17 obvious in
view of those references.
The Examiner argues that the motivation for making the claimed
apparatus would have been “generally available to one of ordinary skill in
the art” rather than explicitly stated in the references (Ans. 4). Specifically,
the Examiner urges that a person of ordinary skill in the art would have
known that it would be “obvious to use the concepts shown by Sugimoto to
devi[s]e a waterfowl decoy to attract other waterfowl by employing a
waterfowl decoy to replace the bird repelling decoy of Sugimoto with a
waterfowl decoy as shown by Caccamo,” and that a person of ordinary skill
would have been “capable of varying the control parameters of Sugimoto to
make the decoy fly in a waterfowl attracting pattern” (id.).
We are not persuaded by this argument. We recognize that, in
addition to the references’ specific teachings, the obviousness analysis must
take into account the ordinary creativity and common sense of a person of
ordinary skill in the art. See KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727,
1741-42 (2007). However, we do not agree that a person of ordinary skill in
the art, advised by Caccamo that the desired movement of a suspended
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waterfowl-luring decoy was a bobbing and rocking motion, would have been
induced to add a motor-driven rotatable platform to Caccamo’s device by
Sugimoto’s disclosure of a bird-frightening device that mimic birds of prey.
Thus, because the Examiner has not made out a prima facie case of
obviousness based on Caccamo and Sugimoto, we reverse both of the
Examiner’s obviousness rejections of claims 1-7 and 15-17 over those
references.
OBVIOUSNESS -- CACCAMO, SUGIMOTO, AND PORTER
ISSUE
The Examiner makes two separate obviousness rejections of claims
8-14 and 18-20 over Caccamo, Sugimoto, and Porter (see Ans. 3). In the
first rejection the Examiner cites Porter as disclosing a decoy mounted on a
buoyant housing, and contends that “it would have been obvious to mount
the decoy and housing of Caccamo as modified by Sugimoto on a buoyant
housing as shown by Porter to use the unit in water too deep to sink a pipe
into the ground” (Final Rejection 3).
In the alternative ground of rejection, the Examiner contends that “it
would have been obvious to provide the decoy of Sugimoto as modified by
Caccamo with a floating platform as shown by Porter for the purpose of
using the decoys in water too deep to drive a pole into the bottom” (id. at 4-
5).
The issue with respect to these rejections, therefore, is whether the
Examiner erred in concluding that one of ordinary skill would have
considered claims 8-14 and 18-20 obvious in view of Caccamo, Sugimoto,
and Porter.

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FINDINGS OF FACT
10. Claims 8-14 and 18 all ultimately depend from independent claims 1
and 16, and therefore recite apparatuses having the rotatable platform, force-
generating unit, power source, and support arm(s) recited in claims 1 and 16.
Claims 19 and 20 recite apparatuses similar to those of claims 1 and 16,
including the rotatable platform, force-generating unit, power source, and
support arm(s).
11. Porter discloses “a waterfowl decoy provided with a pair of wings
mounted on an axle. The axle is biased against rotation in one direction,
typically with surgical tubing or a spring” (Porter, [0019]; see also Figures
2A, 2B, 2C). Pulling a cord attached to the axle causes the wings to spin (id.
at [0019]).
“The underside of the wings are preferably white while the top side of
the wings are painted a dull color such a green or brown. As the wings spin,
the white side flashes in a strobelike fashion, giving the appearance of a
duck or goose flapping its wings” (id. at [0020]). Porter discloses that in
“the preferred embodiment, the decoy is a floating decoy or is mounted to a
floating frame” (id. at [0021]).
ANALYSIS
As discussed above, we agree with Appellant that the Examiner has
not established a prima facie case that a person of ordinary skill viewing
Caccamo and Sugimoto would have been prompted to add a motor-driven
rotatable platform to Caccamo’s waterfowl decoy device. We see nothing in
Porter’s disclosure of a buoyant decoy with spinning wings (FF 11) that
remedies the shortcomings of Caccamo and Sugimoto. Because the
Examiner has not shown that all of the elements in claims 8-14 and 18-20
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would have been obvious to a person of ordinary skill, we reverse both of
the Examiner’s obviousness rejections of those claims.
SUMMARY
We reverse both of the Examiner’s obviousness rejections over
Caccamo and Sugimoto. We also reverse both of the Examiner’s
obviousness rejections over Caccamo, Sugimoto, and Porter.

REVERSED

dm

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