Ex Parte Spaulding

Board of Patent Appeals and Interferences

Mar 27, 2007

10281474 (B.P.A.I. Mar. 27, 2007)

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for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS R. SPAULDING, SR.
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Appeal 2006-0636
Application 10/281,474
Technology Center 3600
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Decided: March 29, 2007
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and JENNIFER D.
BAHR, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our decision mailed September 14, 2006,
wherein we affirmed the rejection of claims 1 and 12 and reversed the rejection of
claims 3, 4, 6, 7, 8, 9, 10, 17 and 18.
In this request, the Appellant argues that the board erred by determining that
Appellant did not argue the separate patentability of claim 12. The Appellant
Appeal 2006-0636
Application 10/281,474
directs our attention to page 10 of the brief and page 4 of the reply brief as
evidence of argument regarding the separate patentability of claim 12.
On these pages of the brief and the reply brief, Appellant argues that the
prior art does not disclose a bird decoy that “may pivot with respect to the support
stand, on an axis extending generally perpendicular to said support stand….from
one side to the opposite side when said upper and lower body members are
engaged by a current of wind.”
In our decision at page 5, we stated that a person of ordinary skill in the art
would have been motivated to modify the decoy of McKnight so that the lower
body pivots in the wind so as to simulate the movement of a bird in flight (see
Lamkin, col. 1, ll. 21-23 and 52-53).
The language of claim 12 is that the bird decoy may pivot from side to side
when engaged by a current of wind. In our view, our discussion regarding the
pivoting of the modified McKnight bird decoy addressed the pivoting of the bird in
all directions. However, for clarity, we state that the modified McKnight bird
certainly has the ability to pivot in all directions including from side to side on an
axis extending perpendicular to, for example, the top face of the post, when
engaged by a current of wind. Such would necessarily be the case because the
connection disclosed in Lamkin of the body 1 to the post 2 would permit the bird
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Appeal 2006-0636
Application 10/281,474
to pivot from side to side at least to some extent, especially when engaged by a
strong enough wind. We note that by its use of the word may, all that the claim
requires is that this pivoting from side to side is possible when engaged by a
current of wind. This would be met by the pivotal connection disclosed in Lamkin.
In view of the foregoing, we modify our decision to remove the sentence at
page 5 of our decision regarding Appellant’s lack of making a separate argument
regarding the patentability of claim 12. However, we also modify our decision to
state that the subject matter of claim 12 is taught by the combined teachings of
McKnight and Lamkin as discussed above. Therefore, the request for rehearing is
granted. However, we decline to change our decision regarding the patentability of
claim 12 for the reasons stated above.
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Application 10/281,474
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
GRANTED

JRG
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Appeal 2006-0636
Application 10/281,474
THOMTE, MAZOUR & NIEBERGALL, L.L.C.
2120 S. 72ND STREET, SUITE 1111
OMAHA, NE 68124
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