Ex Parte Stout

Board of Patent Appeals and Interferences

Mar 12, 2007

10448569 (B.P.A.I. Mar. 12, 2007)

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for publication and is not binding precedent of the Board.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 JAMES V. STOUT
____________

Appeal 2006-3386
Application 10/448,569
Technology Center 3600
____________

Decided: March 12, 2007
____________

Before STUART S. LEVY, ROBERT E. NAPPI, and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James V. Stout (“Appellant”) seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 3 and 4, the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2006-3386
Application 10/448,569

2
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant invented a method and apparatus for delivering more than one
agent in sequence into burrows and runs in order to effectively eradicate gophers
and other rodents (Specification 1: 9-11). Claims 3 and 4 are reproduced below.
3. A system for killing rodents, comprising:
a delivery orifice for placing into an underground
tunnel used by the rodents;
a first delivery mechanism delivering a first
substantially odorless gaseous mixture to and through the
delivery orifice for a first period of time, the first mixture
specifically chosen to render the gophers1 unconscious,
preventing the gophers in the tunnel from blocking the
tunnel against further application of gaseous mixture; and
a second delivery mechanism delivering a second
gaseous mixture to and through the delivery orifice for a
second period of time, after the first gaseous mixture is
delivered, the second gaseous mixture specifically chosen
to kill the gophers rendered unconscious by the first
gaseous mixture.

1 We note that the reference to “the gophers” throughout the remainder of this
claim lacks proper antecedent basis.
Appeal 2006-3386
Application 10/448,569

3
4. A method for killing rodents, comprising the steps
of
(a) placing a delivery orifice into an underground
tunnel used by the rodents;
(b) delivering a first substantially odorless gaseous
mixture to and through the delivery orifice for a first
period of time, the first mixture specifically chosen to
render the gophers2 unconscious, preventing the gophers
in the tunnel from blocking the tunnel against further
application of gaseous mixture; and
(c) delivering a second gaseous mixture to and
through the delivery orifice for a second period of time
after the first gaseous mixture is delivered, the second
gaseous mixture specifically chosen to kill the gophers
rendered unconscious by the first gaseous mixture.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
McQueen US 4,594,807 Jun. 17, 1986
Chu US 5,349,778 Sep. 27, 1994
The following rejections are before us for review.
1. Claims 3 and 4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Chu.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious in view
of McQueen.

2 We note that the reference to “the gophers” throughout the remainder of this
claim lacks proper antecedent basis.
Appeal 2006-3386
Application 10/448,569

4
FIRST ISSUE
Appellant contends the Examiner erred in rejecting claims 3 and 4 as
anticipated by Chu, because Chu does not disclose using a first treatment to render
a gopher unconscious and using a second treatment, after the first, to kill the
gopher (Br. 6). The Examiner found that Chu teaches using both freezing air and
hot air from the same apparatus and that the hot air would render a gopher
unconscious and the cold air would then kill the gopher (Answer 3-4). The issue
before us is whether Appellant has shown that the Examiner erred in finding claims
3 and 4 anticipated by Chu.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Chu discloses using a vortex tube to provide lethal temperatures to
destroy undesirable organisms such as insects, termites, mildews, or tumors in a
human body (Chu, col. 1, ll. 11-16).
2. Chu recognizes that rodents have a normal temperature range within
which they can survive and thrive and that temperatures appreciably outside of the
normal range are lethal especially if they are maintained for a long period of time
(Chu, col. 1, ll. 46-51).
3. Chu teaches that cold air can be used to cool down an enclosed
infestation area 19 to a sub-freezing lethal temperature for a long enough period to
exterminate objectionable organisms and hot air can be used to heat up an enclosed
Appeal 2006-3386
Application 10/448,569

5
infestation area 20 to an elevated lethal temperature for a long span of time to
eliminate undesirable organisms (Chu, col. 3, ll. 41-49).
4. Chu discloses a method of using cold air and hot air in sequence at the
same infestation area for a long enough period to exterminate organisms at the
infestation area (Chu, col. 4, ll. 47-49).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“To establish inherency, the extrinsic evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted).

ANALYSIS
Claims 3 and 4 require that a first gaseous mixture, specifically chosen to
render rodents unconscious, is delivered through a delivery orifice for a first period
Appeal 2006-3386
Application 10/448,569

6
of time, and after the first mixture has been delivered, a second gaseous mixture,
specifically chosen to kill the rodents, is delivered for a second period of time.
Chu does not disclose delivering a first substantially odorless gaseous
mixture that has been specifically chosen to render the gophers unconscious, as
required by claims 3 and 4. Rather, Chu teaches applying the cold and hot air at
lethal temperatures for a long enough period of time to exterminate the organisms
(Findings of Fact 1-3). In particular, Chu discloses using a vortex tube to apply
cold and hot air in sequence at the same infestation area for a long enough period
to exterminate organisms at the infestation area (Finding of Fact 4). The Examiner
asserts that hot air will render a gopher unconscious and cold air will then kill the
gopher (Answer 4). We disagree. Chu clearly teaches applying hot air and cold air
at lethal temperatures to kill the gopher, not simply render it unconscious (Finding
of Fact 3). Further, it is not inherent from Chu that applying the hot air would
necessarily result in the gopher becoming unconscious. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient to show
anticipation by inherency. As such, we find that Chu does not anticipate the
invention of claims 3 and 4.

CONCLUSIONS OF LAW
We conclude that the Examiner erred in rejecting claims 3 and 4 under 35
U.S.C. § 102(b) as anticipated by Chu.

Appeal 2006-3386
Application 10/448,569

7
SECOND ISSUE
Appellant contends the Examiner erred in rejecting claims 3 and 4 as
obvious in view of McQueen, because McQueen does not teach or suggest using a
first treatment to render a gopher unconscious and using a second treatment, after
the first, to kill the gopher (Br. 8-10). The Examiner found that McQueen teaches
a first step of destabilizing the pest, wherein being unconscious is clearly being
destabilized, and a second step of applying a toxic agent to kill the pests (Answer
4). The issue before us is whether Appellant has shown that the Examiner erred in
finding claims 3 and 4 obvious in view of McQueen.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. McQueen discloses a crawling pest eliminator system for eliminating
cockroaches, ants, and spiders from residential and commercial structures
(McQueen, col. 1, ll. 6-10).
2. McQueen discloses that the system is used to apply a flushing agent
from a first aerosol canister 70 onto a treatment surface to cause the crawling pests
to be flushed out of cracks (McQueen, col. 2, ll. 55-62).
3. McQueen discloses that a vacuum motor 26 is then turned on to
suction the pests up through a vacuum hose 46 into a recovery bag 30 (McQueen,
col. 2, l. 62 – col. 3, l. 3).
4. McQueen discloses that after the pests and their eggs have been
vacuumed up, the vacuum motor 26 is turned off and a spray gun 96 is used to
Appeal 2006-3386
Application 10/448,569

8
spray a residual from aerosol canister 72 onto the treatment surface (McQueen, col.
5, ll. 9-15).

PRINCIPLES OF LAW
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art.
In addition to our review of the Graham factors, we must also consider
“whether a person of ordinary skill in the art, possessed with the understandings
and knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in the
claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
From this it may be determined whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the art – i.e., the
understandings and knowledge of persons having ordinary skill in the art at the
time of the invention – support the legal conclusion of obviousness. Id.

ANALYSIS
Claims 3 and 4 require that a first gaseous mixture, specifically chosen to
render rodents unconscious, is delivered through a delivery orifice for a first period
of time, and after the first mixture has been delivered, a second gaseous mixture,
Appeal 2006-3386
Application 10/448,569

9
specifically chosen to kill the rodents, is delivered for a second period of time.
The object of the invention of claims 3 and 4 is to immobilize the rodents so that
they remain within their hiding places for application of the second gaseous
mixture.
McQueen does not teach or suggest this two step process. Instead,
McQueen teaches a system to flush pests out of cracks in surfaces so that the pests
can be vacuumed into a recovery bag (Findings of Fact 1-3). McQueen teaches
that after the pests and their eggs have been vacuumed up, a residual is then
sprayed onto the treatment surface (Finding of Fact 4). McQueen does not teach or
suggest applying a gaseous mixture to render the pests unconscious. Rather,
McQueen desires the opposite result, viz., that the pests will be left capable of
movement so that they will leave their hiding places to be suctioned into the
recovery bag. As such, we see no teaching, suggestion, or motivation in McQueen
that would have led one having ordinary skill in the art to the system or method
recited in claims 3 and 4.

CONCLUSIONS OF LAW
We conclude that the Examiner erred in rejecting claims 3 and 4 under 35
U.S.C. § 103(a) as obvious in view of McQueen.

Appeal 2006-3386
Application 10/448,569

10
DECISION
The decision of the Examiner to reject claims 3 and 4 is reversed.

REVERSED

hh

CENTRAL COAST PATENT AGENCY, INC
3 HANGAR WAY SUITE D
WATSONVILLE, CA 95076