Ex Parte Su

Board of Patent Appeals and Interferences

Jun 12, 2007

10161519 (B.P.A.I. Jun. 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for publication and is not binding precedent of the Board.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 NAN-YAO SU
____________

Appeal 2006-3332
Application 10/161,519
Technology Center 3600
____________

Decided: June 12, 2007
____________

Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and
JENNIFER D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nan-Yao Su (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 4-13, and 15-22. Claims 3 and 14
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6 (2002).
Appeal 2006-3332
Application 10/161,519

Appellant’s claimed invention is directed to a delivery system and
method for controlling termites. Independent claims 1 and 12 are illustrative
of the claimed invention and read as follows:
1. A delivery system for controlling termites
wherein said delivery system comprises a toxicant-
free monitoring device, a toxicant-containing
matrix, and a durable non-termite-edible delivery
housing for simultaneously holding the toxicant-
free monitoring device and the toxicant-containing
matrix, wherein the delivery housing has a
plurality of openings permitting termite access to
the toxicant-free monitoring device and the
toxicant-containing matrix, and the matrix of the
toxicant-containing matrix comprises a cellulose-
containing material.
12. A method for controlling termites wherein said
method comprises positioning a durable non-
termite-edible delivery housing at a location
accessible to termites, placing a toxicant-free
monitoring device so that said toxicant-free
monitoring device is held by said delivery housing,
and adding a toxicant-containing matrix within
said delivery housing, wherein the delivery
housing has a plurality of openings permitting
termite access to the toxicant-free monitoring
device and toxicant-containing matrix.
The Examiner relies upon the following as evidence of
unpatentability:
Takenaka JP 60-64076 May 7, 19851
Homma (as translated) JP 63-56240 Apr. 10, 1992
Appellant’s admissions (AAPA) (Specification 19:2, 19:11-13)

1 We derive our understanding of this reference from the translation of
excerpts thereof in the electronic record, as this appears to be the only
translation relied upon by the Examiner.
2
Appeal 2006-3332
Application 10/161,519

Appellant seeks review of the Examiner’s rejection of claims 1, 2, 4-7,
12, 13, 16, 17, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by
Takenaka, and rejections under 35 U.S.C. § 103(a) of claims 15 and 22 as
unpatentable over Takenaka, claims 8 and 19 as unpatentable over Takenaka
in view of Homma, and claims 9-11 and 18 as unpatentable over Takenaka
in view of AAPA.2
The Examiner provides reasoning in support of the rejections in the
Final Rejection (mailed April 8, 2003) and Answer (mailed April 20, 2004).
Appellant presents opposing arguments in the Appeal Brief (filed December
11, 2003) and Reply Brief (filed June 24, 2004).

OPINION
The first issue for our consideration is whether the Examiner erred in
rejecting claims 1, 2, 4-7, 12, 13, 16, 17, 20, and 21 as anticipated by
Takenaka and, more specifically, whether Takenaka’s disclosure of a
container 1 having a hollow portion 3 “filled with a mixture of pulp,
sawdust, sugars which termites like, and a slowly-acting insecticide”
(Takenaka Translation 1) satisfies the limitation in claims 1 and 12 of “a
toxicant-free monitoring device.” The Examiner’s position is that “[p]art of
the matrix [i.e., mixture] can be considered as the monitoring device and

2 Although the Examiner did not expressly restate the rejection of claims 9-
11 and 18 in the Answer, the Examiner’s discussion of these claims on page
3 of the Answer indicates that the Examiner intended to maintain this
rejection. Appellant also understands this rejection to have been maintained
by the Examiner (Reply Br. 2)
3
Appeal 2006-3332
Application 10/161,519

another part of the matrix [i.e., mixture] having an insecticide can be
considered as the toxicant containing matrix” (Final Rejection 5). The
Examiner further explains that,
on page 1 of the translation, it is stated that the
hollow portion of the housing is filled with a
mixture of pulp, sawdust, sugars and a slowly-
acting insecticide. Hence, there are three areas in
the housing. The first is the mixture of pulp,
sawdust and sugars. The second is the slow-acting
insecticide. The third is a small area where the
first two ingredients mix when one is poured over
the other. This forms a matrix. The housing
holds both a toxicant free monitoring device which
is the pulp and sawdust and sugar, and a toxicant
containing matrix. A second interpretation is that
the pulp, sawdust and sugar are mixed with the
toxicant to form a matrix. Part of the matrix
contains only the bait, part of the matrix contains
the toxicant and part contains both. That part of
the matrix containing the bait is considered to be
the monitoring device.
(Answer 3.)
The portion of the Takenaka Translation alluded to by the Examiner
does not support the Examiner’s apparent assumption that some portion of
the mixture of pulp, sawdust, sugars, and slowly-acting insecticide described
by Takenaka is free of insecticide or toxicant. While Takenaka’s mixture
comprises several ingredients, the Takenaka Translation gives no indication
that the mixture is anything other than homogeneous, with insecticide
present throughout. Accordingly, we conclude the Examiner erred in
determining that Takenaka’s mixture satisfies the “toxicant-free monitoring
device” limitation of claims 1 and 12. Anticipation is established only when
a single prior art reference discloses, expressly or under the principles of
4
Appeal 2006-3332
Application 10/161,519

inherency, each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). In other words, there must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010
(Fed. Cir. 1991). In light of the Examiner’s error in determining that
Takenaka’s mixture satisfies the “toxicant-free monitoring device” limitation
of claims 1 and 12, the rejection of independent claims 1 and 12, and
dependent claims 2, 4-7, 13, 16, 17, 20, and 21, as anticipated by Takenaka
cannot be sustained.
The next issue before us is whether the subject matter of claims 15
and 22, which depend from claim 12, is unpatentable over Takenaka. In
rejecting claims 15 and 22 as unpatentable over Takenaka, the Examiner
concedes that Takenaka’s monitoring device is not toxicant free, but
contends “it would have been obvious to employ a toxicant free monitoring
device since there is no reason to employ a toxicant unless termites are
present and then add a toxicant containing matrix after termites are detected”
(Final Rejection 3). What is lacking in Takenaka, the only evidence relied
upon by the Examiner in making this rejection, is disclosure of the use of
bait alone to monitor termite activity. While Takenaka discloses
periodically digging the device out of the ground and examining it to
monitor whether termites are still surviving in the neighborhood of the
device (Takenaka Translation 1), Takenaka lacks any teaching of conducting
such monitoring with an insecticide-free device. Takenaka’s method
employs a device containing insecticide from the moment of its positioning
5
Appeal 2006-3332
Application 10/161,519

in the ground. We do not sustain the rejection of claims 15 and 22 as
unpatentable over Takenaka because of the lack of evidence cited therein
that the use of a device containing only bait, without toxicant or insecticide,
was known at the time of Appellant’s invention.
The Examiner’s additional reliance on Homma solely for its showing
of a cover on a bait station (Final Rejection 4) does not make up for the
deficiency of Takenaka discussed above, with regard to the “toxicant-free
monitoring device” limitation of claims 1 and 12. Thus, the rejection of
claims 8 and 19 as unpatentable over Takenaka in view of Homma also is
not sustained.
In rejecting claims 9-11 and 18, which depend, directly or indirectly,
from claim 1 or claim 12, as unpatentable over Takenaka in view of AAPA,
the Examiner (Final Rejection 4) relies on AAPA only as evidence that
hexaflumuron is a well known toxicant (Specification 19:2, 19:11-13). This,
of course, does not make up for the deficiency of Takenaka discussed above.
Accordingly, this rejection also is not sustained.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.59(b), we make the
following new ground or rejection.
Claims 1, 2, 4-13, and 15-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Takenaka in view of Homma, and Appellant’s admitted
prior art (Specification 2:19-26, 19:2, and 19:11-13).
Takenaka discloses a device for controlling termites, the device
comprising a hard plastic container 1 having perforations 2 and a hollow
interior 3 filled with a mixture of pulp, sawdust (a cellulose-containing
6
Appeal 2006-3332
Application 10/161,519

material), sugars, and a slowly-acting insecticide. The container is driven
into the soil near a location likely to be invaded by termites. Takenaka’s
device may be dug out of the ground periodically and monitored for
evidence of foraging to determine whether termites are still surviving in the
neighborhood of the device. As long as evidence of termite activity is
detected, the device is repeatedly driven into the soil at regular time
intervals. Termite control is deemed to be successful after the passage of a
predetermined period of time without detecting termite activity. (Takenaka
Translation 1.)
As evidenced by the above findings, Takenaka meets the limitations
of claims 1, 2, 4, 7, 9, 12, 13, 15, 20, 21, and 22 with the exception of a
toxicant-free monitoring device. Takenaka only discloses a termite control
device filled with a mixture containing slowly-acting insecticide.
Homma evidences that it was known in the art at the time of
Appellant’s invention to monitor termite activity using a detection means
comprising a cylindrical vessel 1 open at the top by insertion opening 5, a
toxicant-free detection piece 2 constructed of material termites like, such as
wood or synthetic resin (Homma Translation 5), inserted into the hollow
core 3 of the vessel 1, and a lid 8 placed above the detection piece 2 to cover
the insertion opening 5 to prevent the vessel 1 and detection piece 2 from
drying out, to prevent natural enemies of termites from entering the vessel 1,
and to prevent rain water from entering the vessel (Homma Translation 5
and 7-8). Homma’s detection means is buried in the ground with the lid
exposed, thereby facilitating removal of the lid for periodic inspection
(Homma Translation 6). As long as such inspection reveals no signs of
termites or termite damage, the detection piece 2 is inserted back into the
7
Appeal 2006-3332
Application 10/161,519

vessel 1, the lid 8 is replaced, and the detection means is left in the ground
until the next inspection (Homma Translation 7). If termites or signs of
termite activity are found, routes of termite infiltration are surmised based
on the location of detected termite activity and “[f]urther appropriate
measures” are taken to control the termites (Homma Translation 8-9). One
of ordinary skill in the art at the time of Appellant’s invention would have
inferred that such “[f]urther appropriate measures” could, and probably
would, include use of termiticide.
Moreover, Appellant admits that it was known in the art to place
toxicant-free monitoring devices, in the form of “stakes or blocks of termite
susceptible timber to lure termites” near a known termite problem to monitor
for termite activity. Once termite activity is observed, termiticide, such as
arsenic trioxide, is injected. (Specification 2:19-26.) Hence, Appellant
admits that it was known in the art to monitor for termite activity first with a
toxicant-free monitoring device and then, only after termite activity is
detected, apply termiticide in the areas where termite activity is detected.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1731, 82 USPQ2d 1385,
1395 (2007).
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
8
Appeal 2006-3332
Application 10/161,519

combination was obvious to try might show that it
was obvious under § 103.
Id., 127 S.Ct. at 1742, 82 USPQ2d at 1397.
As our above findings with respect to Homma and Appellant’s
admission (Specification 2:19-26) evidence, a two-step termite detection and
control process, including a monitoring step using a toxicant-free bait or
monitoring device and a control step using a toxicant or termiticide, was
well known in the art at the time of Appellant’s invention. While Takenaka
discloses a method wherein the two steps are combined, using a matrix or
mixture of both the bait and the insecticide, modification of Takenaka’s
termite control device for use in the known two-step process, wherein the
detection step is first carried out using only a toxicant-free monitoring
device followed by a control step using termiticide only when termite
activity is detected in the first step, involves only the combination of two
known elements, a known device for monitoring and controlling termites,
and a known two-step method for first monitoring for and then controlling
termites. Further, such modification requires merely providing a toxicant-
free monitoring device until termite activity is detected and then providing a
toxicant, either in combination with or separate from the toxicant-free
monitoring device, only when termite activity has been detected and thus
would have been well within the technical grasp of a person of ordinary skill
in the art and, in light of the well known two-step method, would yield
predictable results. Additionally, a person of ordinary skill in the art would
have appreciated, from the well-known two-step method, that the use of
toxicant is not required in the monitoring step and can be postponed until
actual termite activity is detected and then specifically targeted to locations
9
Appeal 2006-3332
Application 10/161,519

where termites are active. After all, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id., 127 S.Ct. at 1742, 82
USPQ2d at 1397.
In light of the above, we conclude that it would have been obvious to
modify Takenaka by providing in the container 1 a toxicant-free monitoring
device, in place of the mixture of pulp, sawdust, sugars and insecticide, to
monitor for termite activity and then, after termite activity is detected in such
monitoring step, providing in the container a toxicant-containing matrix. As
a person of ordinary skill in the art would readily appreciate, there are a
finite number of ways in which the toxicant-containing matrix may be
placed in the container 1, specifically, either as a separate matrix alongside
the toxicant-free matrix within the container 1 or as a mixture of bait
(monitoring matrix) and toxicant, with the toxicant-free monitoring device
having been removed from the container 1. Accordingly, either arrangement
would have been obvious to one of ordinary skill in the art. The subject
matter of claims 1, 2, 4, 7, 9, 12, 13, 15, 20, 21, and 22 is therefore
unpatentable over Takenaka in view of Homma, and Appellant’s admissions.
With respect to claims 5, 6, 16, and 17, a person of ordinary skill in
the art would further have appreciated that the toxicant-containing matrix
could take the form of either a dimensionally stable structure or a
dimensionally unstable structure, such as a liquid or a mixture of particulate
and liquid, the latter requiring placement in some form of casing, either one
of which forms would have been obvious for use in Takenaka’s device.
Accordingly, it would have been obvious to enclose the toxicant-containing
matrix within a casing placed within Takenaka’s container 1. The subject
10
Appeal 2006-3332
Application 10/161,519

matter of claims 5, 6, 16, and 17 is thus unpatentable over the combination
of Takenaka, Homma, and Appellant’s admissions.
With respect to claims 8 and 19, it would have been obvious to one of
ordinary skill in the art to place a lid or cover on the Takenaka container 1 to
cover the insertion opening at the top thereof to prevent the toxicant-free
monitoring device and/or toxicant-containing matrix from drying out, to
prevent natural enemies of termites from entering the container 1, and to
prevent rain water from entering the container 1 as taught by Homma
(Homma Translation 5). Accordingly, the subject matter of claims 8 and 19
is also unpatentable over the combination of Takenaka, Homma, and
Appellant’s admissions.
Finally, as admitted by Appellant (Specification 19:2 and 19:11-13),
hexaflumuron, an acyl urea, is a well known termiticide. It follows that its
use as the termiticide in Takenaka’s device would have been obvious to a
person of ordinary skill in the art at the time of Appellant’s invention. The
subject matter of claims 10, 11, and 18 therefore is unpatentable over the
combination of Takenaka, Homma, and Appellant’s admissions.

SUMMARY
The Examiner’s rejections are reversed. A new rejection of claims 1,
2, 4-13, and 15-22 is entered pursuant to 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 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.”
11
Appeal 2006-3332
Application 10/161,519

37 C.F.R. § 41.50(b) also provides that 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. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

REVERSED; 37 C.F.R. § 41.50(b)

jlb

Stephen H. Docter
McDonnell Boehnen Hulbert & Berghoff
32nd Floor
300 S. Wacker Drive
Chicago, IL 60606
12