Ex Parte Wells

Board of Patent Appeals and Interferences

Sep 9, 2009

11388127 (B.P.A.I. Sep. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LEOLA WELLS
__________

Appeal 2009-008909
Application 11/388,127
Technology Center 3600
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Decided: September 9, 2009
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Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a fly
swatter. The Examiner has rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The Specification discloses a “vacuum-creating fly swatter” (Spec. 1:
8) with a blade having “a plurality of through bores 16 extending
Appeal 2009-008909
Application 11/388,127

therethrough in a specific configuration and orientation forming a vacuum
when the blade 12 is swatted, thereby sucking the fly thereto. Applicant is
not aware of the exact mechanism causing this effect.” (Id. at 7: 15-18.)
Claims 1 and 3-18 are on appeal. Claims 1 and 3 are representative
and read as follows:
Claim 1: A vacuum-creating fly swatter, comprising:
a) a blade; and
b) a handle;
wherein said blade is flat;
wherein said handle is slender;
wherein said handle is elongated;
wherein said handle extends from said blade;
wherein said handle is for being hand-held;
wherein said blade has a plurality of through bores extending
therethrough in a specific configuration and orientation forming a vacuum
when said blade is swatted, thereby sucking a fly thereto; and
wherein each through bore in said blade is diamond-shaped in planar
view.

Claim 3: The swatter of claim 1, wherein said plurality of through
bores in said blade are five in number.

The claims stand rejected as follows:
• claim 1 under 35 U.S.C. § 102(b) in view of DiLeo;1 and
• claims 3-18 under 35 U.S.C. § 103(a) in view of DiLeo.
ANTICIPATION
Issue
The Examiner has rejected claim 1 under 35 U.S.C. § 102(b) as being
anticipated by DiLeo. The Examiner finds that DiLeo shows a fly swatter

1 DiLeo, US 5,377,446, Jan. 3, 1995
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Application 11/388,127

having a flat blade, a slender elongated handle extending from the blade, and
a plurality of diamond-shaped through bores (Office Action mailed Jan. 17,
2007, pg. 2). The Examiner reasons that “DiLeo shows the same structure
and if applicant’s fly swatter creates a vacuum, then so does DiLeo” (Ans.
4).
Appellant contends that the Examiner erred in finding that DiLeo
discloses “with sufficient clarity … all of the same elements in exactly the
same situation and united in the same way to perform the identical function”
as the invention of claim 1 (App. Br. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that DiLeo discloses the invention of claim
1?
Findings of Fact
1. DiLeo discloses a flying insect swatter (DiLeo, abstract).
2. Figure 1 of DiLeo is shown below:

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Figure 1 shows a “top plan view of a flying insect swatter” (id. at col. 1, ll.
47).
3. DiLeo discloses that the head includes “a plurality of cutting
elements or blades arranged in groups 18 and 19. The elements in each
group are parallel to each other, with elements 18 extending at right angles
to elements 19 to form a grid-like array.” (Id. at col. 1, ll. 55-61.)
4. DiLeo discloses that “[a]djacent ones of the cutting elements 18
and adjacent ones of the cutting elements 19 are spaced apart from each
other by a distance less than the wingspan of the insects to be killed” (id. at
col. 1, ll. 65-68).
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., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).
“Where . . . the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Claim 1 is drawn to a fly swatter comprising, among other things, a
blade having a plurality of through bores that are diamond-shaped in planar
view and arranged “in a specific configuration and orientation forming a
vacuum when said blade is swatted, thereby sucking a fly thereto.”
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Appellant argues that “DiLeo does not teach with sufficient clarity as
required by the Courts all of the same elements in exactly the same situation
and united in the same way to perform the identical function as appellant’s
invention does” (App. Br. 7).
The Examiner reasons that “DiLeo shows the same structure and if
applicant’s fly swatter creates a vacuum, then so does DiLeo” (Ans. 4).
Appellant’s arguments are not persuasive. The claimed fly swatter
and the DiLeo fly swatter both comprise a flat blade with diamond-shaped
through bores. The Specification does not disclose any specific parameters
for the through bores that are required to provide a vacuum-creating effect.
The Specification does not disclose, for example, that a minimum or
maximum number of bores are required to create a vacuum, or that the bores
must have a minimum or maximum size, or that a minimum or maximum
ratio of bores to solid area is required.
We conclude that the Examiner has set forth a reasonable basis for
finding that the through bores of the DiLeo fly swatter would carry out the
function recited in claim 1. Appellant has provided no evidence or scientific
reasoning to support a contrary conclusion.
Conclusions of Law
The evidence of record supports the Examiner’s finding that DiLeo
discloses the invention of claim 1.
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OBVIOUSNESS
Issue
The Examiner has rejected claims 3-18 under 35 U.S.C. § 103(a) as
obvious in view of DiLeo. The Examiner reasons that “DiLeo shows more
than 5 through bores, but it would have been obvious to employ 5 since
routine experimentation would be used to determine the optimum number of
through bores” (Office Action mailed Jan. 17, 2007, pg. 3).
Appellant contends that the Examiner has not provided factual
evidence to show that DiLeo would suggest a fly swatter with five through
bores (App. Br. 8) and that “the configuration of the through bores is not
merely a matter of design choice but is significant and of critical
importance” (id. at 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that it would have been obvious to
modify DiLeo’s fly swatter to have five through bores?
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
“[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious.” In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992).
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Analysis
The Examiner reasons that, in view of DiLeo, it would have been
obvious to employ five bores since routine experimentation would be used to
determine the optimum number of through bores. Appellant argues that the
Examiner has “taken facts beyond the record” in finding that it would have
been obvious to employ five bores (App. Br. 8).
Appellant’s arguments are persuasive. DiLeo discloses a fly swatter
having cutting elements 18 and 19 that form a grid pattern, with spaces or
bores between the cutting elements. DiLeo discloses that the cutting
elements are separated by a distance smaller than the wingspan of the
targeted insects. Modifying DiLeo’s swatter to have only five spaces (bores)
between the cutting elements, while following DiLeo’s direction to keep the
spaces (bores) smaller than an insect’s wingspan, would require drastically
shrinking the size of DiLeo’s blade. Such a modification would decrease the
effectiveness of the DiLeo fly swatter in its intended purpose of killing
insects. We conclude that the Examiner has not adequately explained why it
would have been obvious to one of skill in the art to modify DiLeo’s fly
swatter to have only five bores. Thus, the rejection of claim 1 as obvious in
view of DiLeo is reversed. The rejection of claims 4-18, which depend from
claim 3, is reversed for the same reason.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that it would have been obvious to modify DiLeo’s fly swatter to have five
through bores.
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Application 11/388,127

SUMMARY
We affirm the rejection claim 1 under 35 U.S.C. § 102(b) as
anticipated by DiLeo, but we reverse the rejection of claims 3-18 under 35
U.S.C. § 103(a) as obvious in view of DiLeo.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Ssc:
RICHARD L. MILLER
12 PARKSIDE DRIVE
DIX HILLS, NY 11746-4879

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