Ex Parte Sloop

Board of Patent Appeals and Interferences

Nov 15, 2010

10625146 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/625,146 07/23/2003 John R. Sloop 141901-1010 8269
24504 7590 11/16/2010
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994
EXAMINER
LEVY, NEIL S
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
11/16/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN R. SLOOP
____________

Appeal 2010-006248
Application 10/625,146
Technology Center 1600
____________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 27, and 28.2 We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
2 Pending “[c]laims 2-8 and 22-26 have been withdrawn” as a result of a
restriction requirement (App. Br. 2; see also January 11, 2008 Office Action
2).
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STATEMENT OF THE CASE
The claims are directed to a wild animal control apparatus. The
Examination of the claimed subject was limited to the elected species of the
claimed invention. Specifically, wherein the attractant species is meat, the
trigger is any component configured to dissolve at a pH of 0.5-5, and the
subduing agent is any agent causing energy release, with the exception of a
bullet or explosive device (January 11, 2008 Office Action 2). Claim 1 is
representative and is reproduced in the “Claims Appendix” of Appellant’s
Brief (App. Br. 13).
The rejections presented by the Examiner follow:
1. Claims 1, 27, and 28 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1, 27, and 28 stand rejected under the written description
provision of 35 U.S.C. § 112, first paragraph.
3. Claims 1, 27, and 28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fajt3 as evidenced by Getachew.4
4. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103 as obvious over Shulyer.5
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Fajt as evidenced by Getachew. However, because our
rationale differs from that of the Examiner, we designate our affirmance as a
new ground of rejection. We affirm the rejection of claim 1 under 35 U.S.C.

3 Fajt, US 5,674,518, Oct. 7, 1997.
4 T. Getachew, Stomach pH, feeding rhythm and ingestion rate in
Oreochromis niloticus L. (Pisces/Cichlidae) in Lake Awasa, Ethiopia, 174
HYDROBIOLOGIA 43-48 (1989).
5 Shuyler, US 2,957,804, Oct. 25, 1960.
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§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Shulyer.
We reverse the rejections under 35 U.S.C. § 112, first and second
paragraphs. We reverse the rejection of claims 27 and 28 under 35 U.S.C.
§ 102(b) as being anticipated by Fajt as evidenced by Getachew.

Definiteness:
ISSUE
Is the relationship between the trigger and subduing agent as set forth
in Appellant’s claimed invention reasonably clear to a person of ordinary
skill in the art when read in light of Appellant’s Specification?
FINDINGS OF FACT
FF 1. According to the Examiner’s restriction requirement, the trigger of
Appellant’s claimed invention is any component configured to dissolve at a
pH of 0.5-5 (January 11, 2008 Office Action 2).
FF 2. For clarity we reproduce Appellant’s figure 8 below:

FIG. 8 depicts an embodiment of Appellant’s claimed invention, wherein

the subduing agent 102 may comprise a metal, chemical, a
plurality of metals, a plurality of chemicals, or any combination
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thereof. . . . When the trigger device 104 reacts and dissolves,
and after nonreactive layer 108 dissolves, the subduing agent
102 releases reacts in the target wild animal’s stomach. The
reaction between the subduing agent 102 and the body of the
target wild animal . . . results in the death or incapacitation of
the target wild animal . . . due to the energy release of the
subduing agent 102.

(Spec. 12-13: ¶ [0035].)
ANALYSIS
The Examiner finds that Appellant’s “invention as claimed presents
no distinct coupling agents or means as to how the subduing agent is coupled
to the trigger, or what the trigger is” (Ans. 8). However, as defined by the
Examiner’s restriction requirement, the trigger is any component configured
to dissolve at a pH of 0.5-5 (FF 1). Appellant’s Specification describes the
relationship between the trigger and the subduing agent (see e.g., FF 2).
Accordingly, we agree with Appellant’s contention that “there is no
ambiguity in the claims or specification” (Reply Br. 5).
CONCLUSION OF LAW
The relationship between the trigger and subduing agent as set forth in
Appellant’s claimed invention is reasonably clear to a person of ordinary
skill in the art when read in light of Appellant’s Specification. The rejection
of claims 1, 27, and 28 under 35 U.S.C. § 112, second paragraph is reversed.

Written Description:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s conclusion that Appellants’ Specification fails to provide written
descriptive support for the claimed invention?
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FINDINGS OF FACT
FF 3. Appellant’s Specification discloses that
One of ordinary skill would know that varied quantities
of the subduing agent 102 may be used to achieve the desired
effect for the desired target wild animal. As a non-limiting
example, a larger or smaller quantity of subduing agent 102
(i.e., sodium, potassium, or lithium) may be used to subdue an
alligator as opposed to a coyote or a wild hog.

(Spec. 12: ¶ [0036].)
ANALYSIS
The Examiner finds that Appellant’s device does not preclude “dogs,
cats & rats from being attracted & killed by” Appellant’s device (Ans. 5).
The Examiner finds that Appellant’s “[S]pecification does not present
exemplification of effectiveness to subdue one species, but not harm
another” (id. at 6). We agree, however, with Appellant’s contention that
there is no requirement in the claims that precludes non-target animals from
being subdued by the control apparatus or that “the subduing agent only
subdues one species” (Reply Br. 3).
While the Examiner finds that Appellant’s Specification exemplifies
the use of sodium, potassium, or lithium as energy release agents, the
Examiner finds that Appellants’ Specification fails to explain “how much of
what components are to be used to subdue a desired species” (Ans. 5-6).
Appellant’s Specification, however, discloses that the determination of the
quantity of subduing agent utilized depends on the target animal and is
known to a person of ordinary skill in this art (FF 3). The Examiner has not
provided persuasive evidence or argument to support a conclusion that
Appellant’s Specification is not correct.
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The Examiner finds that “[t]he metal subduing agents were not
presented in any shape, form, or amount, in connection with any specific
trigger material and meat or other attractant material, to enable one of
ordinary skill to practice the claimed invention” (Ans. 6). We are not
persuaded. The claims do not require the subduing agent to exhibit a
particular shape or form. As discussed above, the Examiner failed to rebut
Appellant’s disclosure that the amount of subduing agent required for a
particular application is known to a person of ordinary skill in this art. That
said, we recognize that the ground of rejection presented to this panel by the
Examiner is under the written description provision, not the enablement
provision, of 35 U.S.C. § 112, first paragraph. To the extent that the
Examiner intended to reject the claims under the enablement provision of 35
U.S.C. § 112, first paragraph, the Examiner failed to provide a persuasive
evidentiary basis to support such a rejection.
Lastly, the Examiner finds that Appellant provides “no specific
compound, material or composition of the trigger, thus it is beyond the
capabilities of one of ordinary skill in the art of formulating wild animal
control apparatus’ [sic] to know what to use as a trigger & how to couple it
to the subduing agent and attractant” (Ans. 7). We are not persuaded for the
reasons set forth on pages 4 and 5 of Appellant’s Reply Brief.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support the
Examiner’s conclusion that Appellant’s Specification fails to provide written
descriptive support for the claimed invention. The rejection of claims 1, 27,
and 28 under the written description provision of 35 U.S.C. § 112, first
paragraph is reversed.
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Anticipation:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Fajt teaches the claimed invention as evidenced by
Getachew?
FINDINGS OF FACT
FF 4. Fajt teaches a formulation wherein fish feed and a target species
attractant are combined to form poison oral bait pellets to selectively
exterminate a target species by ingestion without poisoning the aqueous
environment (Fajt, Abstract).
FF 5. For clarity, we reproduce Fajt’s figure 1 below:

“FIG. 1 is a cut-away view of a poison bait pellet” according to Fajt’s
invention (Fajt, col. 2, l. 11).
FF 6. The core 1 of Fajt’s “pellet contains the toxicant either in its solid
form or, in the case of liquid toxicants, absorbed into a solid matrix” (Fajt,
col. 2, ll. 18-19).
FF 7. Rotenone is used as the toxicant in a preferred embodiment of Fajt’s
invention (Fajt, col. 2, ll. 44-45). In this regard Fajt teaches a formulation
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that comprises rotenone with or without an adsorption agent such as an
antacid (Fajt, col. 6, l. 61 – col. 7, l. 26).
FF 8. The core of Fajt’s pellet may “be coated with a water resistant gel
layer 2 to prevent leaching of the toxic formulation into the aqueous
environment” (Fajt, col. 2, ll. 24-26).
FF 9. “Encapsulating the entire core [of Fajt’s pellet] is a fish-food layer 3
that may be simple fish-food but is preferably an attractant selective for the
target species,” such as “fish meal, blood meal, or beef by-products” (Fajt,
col. 2, ll. 34-36 and col. 6, l. 37).
FF 10. Fajt teaches that a fish’s stomach has a low or acidic pH (Fajt, col.
4, ll. 18-19).
FF 11. Getachew teaches that pH values of 1.4 and 1.5 are very common for
Oreochromis niloticus L. (Pisces: Cichlidae) (Getachew 44, col. 2).
ANALYSIS
We are not persuaded by the Examiner’s assertion that Fajt’s teaching
of surfactants and metal hydroxides to increase the absorption of a toxin can
be considered energy releasing agents within the scope of Appellant’s
subduing agents as required by Appellant’s claimed invention (see Ans. 9).
Nevertheless, applying a different rationale, we agree with the
Examiner’s finding that Fajt anticipated Appellant’s claim 1. Accordingly,
for the reasons set forth below, we affirm the rejection of Appellant’s claim
1 as a new ground of rejection.
Appellant’s claim 1 is drawn to a wild animal control apparatus that
comprises an attractant, a trigger and a subduing agent. Fajt teaches a
control apparatus that comprises a core, a gel layer, and a fish food layer (FF
4-9).
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Appellant’s claim 1 requires “an attractant configured to entice a
target wild animal to consume the wild animal control apparatus” (Claim 1).
Fajt’s fish food layer serves as “an attractant selective for the target species”
(FF 9).
Appellant’s claim 1 requires a trigger covered by a portion of the
attractant, the trigger adapted to dissolve in an environment having a
predetermined pH (Claim 1). Fajt’s pellet comprises a water resistant gel
layer that “prevent[s] leaching of the toxic formulation into the aqueous
environment” (FF 8). Appellant contends that since Fajt does not indicate
that the gel layer dissolves in an environment with a predetermined pH, Fajt
cannot anticipate Appellant’s claimed invention (App. Br. 9; Reply Br. 6).
We are not persuaded.
Fajt’s gel layer prevents the toxin from leaching into the aqueous
environment, e.g., a pond, stream, etc. Fajt’s gel layer allows the toxic core
to be released in the stomach of a fish (FF 4 (a target fish species is
exterminated by ingesting the poison). The stomach of a fish has a low or
acidic pH (FF 10-11). Taken as a whole, Fajt teaches a trigger (a gel layer)
that prevents the release of toxin in one environment, but allows the toxin’s
release in another environment (e.g., the acidic pH environment of a fish’s
stomach). Since it is known that the stomach of a fish has a low or acidic
pH, the selective release of the toxin in a fish’s stomach is obtained at a
predetermined pH (e.g., a low or acidic pH).
Like Appellant’s claim 1, the core of Fajt’s pellet contains a toxin or
subduing agent, which is encapsulated by (or coupled to) a gel layer trigger.
As discussed above, like Appellant’s claim 1, the subduing agent is adapted
to subdue the fish (e.g., wild animal) that consumes the apparatus once fluids
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in the digestive system of the fish having a predetermined low or acidic pH
cause the trigger to dissolve, wherein the subduing agent is released (e.g.,
activated) and the wild animal is subdued. We are not persuaded by
Appellant’s focus on rotenone and Fajt’s corresponding disclosure that
chemicals that neutralize the digestive acids of the target fish should be
utilized in combination with rotenone (App. Br. 9). Fajt discloses rotenone
as a preferred toxin, not the sole toxin that can be used in the Fajt’s
formulation (FF 7). In this regard, Appellant failed to establish that other
toxins useful in Fajt’s invention require a neutralization of stomach acid.
Further, Fajt does not require neutralization of stomach acid, but instead
discloses embodiments that contain and exclude an antacid (id.).
We do, however, recognize that the foregoing discussion steps outside
of the Examiner’s restriction requirement, which limits the subduing agent to
any agent causing energy release, with the exception of a bullet or explosive
device (January 11, 2008 Office Action 2). The Examiner failed to establish
that a toxin within the scope of Fajt’s disclosure is an energy release device.
Because claims 27 and 28 are expressly limited to an apparatus which
comprises an energy release device, we are compelled to reverse the
rejection of these claims.
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Fajt, as evidenced by Getachew, teaches the subject
matter of Appellant’s claim 1. The rejection of claim 1 under 35 U.S.C. §
102(b) as being anticipated by Fajt as evidenced by Getachew is affirmed.
The preponderance of evidence on this record fails to support the
Examiner’s finding that Fajt, as evidenced by Getachew, teaches the subject
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matter of Appellant’s claims 27 and 28. The rejection of claims 27 and 28
under 35 U.S.C. § 102(b) as being anticipated by Fajt as evidenced by
Getachew is reversed.

Anticipation/Obviousness:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Shulyer teaches the claimed invention or conclusion
that Appellant’s claimed invention is obvious in view of Shulyer?
FINDINGS OF FACT
FF 12. The Examiner finds that Shulyer teaches or in the alternative
suggests the subject matter of Appellant’s claim 1.
ANALYSIS
We agree with the Examiner’s findings. Appellant fail to address this
rejection. Since Appellant failed to identify error in the rejection of record,
we are compelled to affirm.
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Shulyer teaches the claimed invention or conclusion
that Appellant’s claimed invention is obvious in view of Shulyer. The
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Shulyer is affirmed.

TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
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In addition to affirming the Examiner’s rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. §
103 as obvious over Shulyer, this decision contains a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69
Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner….

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record….

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
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this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.

AFFIRMED; 37 C.F.R. § 41.50(b)

cdc
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994