10445584 (B.P.A.I. May. 19, 2010)

Ex Parte Wilbanks

Board of Patent Appeals and InterferencesMay 19, 2010

10445584 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ALVIN D. WILBANKS ____________________ Appeal 2009-006911 Application 10/445,584 Technology Center 3600 ____________________ Decided: May 20, 2010 ____________________ Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alvin D. Wilbanks (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-11 and 13-37. Claim 12 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2009-006911 Application 10/445,584 2 SUMMARY OF DECISION We REVERSE. THE INVENTION Appellant’s claimed invention is directed to attracting mosquitoes for electrocution and/or trapping (Spec. 1: para. [02]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of attracting mosquitoes to a mosquito-killing device for electrocution and/or trapping, the method comprising: using a heat source other than a light bulb to generate heat within the device such that a heat gradient between an outer surface of the device and the atmosphere surrounding the device is created thereby emulating emission of body heat by an animal; creating an airflow that flows into, through, and out of the device; using the heat source to heat the airflow as it flows through the device; introducing into the airflow at least one mosquito attractant other than heat; and creating an airflow that sucks mosquitoes, which have been attracted to the outside of the device, into the device for electrocution and/or trapping by the device. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Browne US 4,442,624 Apr. 17, 1984 Appeal 2009-006911 Application 10/445,584 3 Cheshire US 5,255,468 Oct. 26, 1993 Chrysanthis US 5,749,168 May, 12, 1998 The following rejections by the Examiner are before us for review: 1. Claims 1-3, 5-9, 16-23, 25-29, 31-33 and 35-37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheshire in view of Browne. 2. Claims 4, 24 and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheshire in view of Browne, and further in view of Chrysanthis. 3. Claims 10, 13-15 and 34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheshire in view of Chrysanthis. 4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheshire in view of Chrysanthis, and further in view of Browne. ISSUE The issue before us is whether the Examiner erred in finding that Cheshire describes a source other than a light bulb to generate heat as called for in independent claims 1, 10, 16, 21 and 27. (App. Br. 7 and 12-13). ANALYSIS Appellant contends that Cheshire does not describe using any type of heat source other than a light for attracting mosquitoes as called for in independent claims 1, 10, 16, 21 and 27. (App. Br. 7 and 12-13). The Examiner found that in Cheshire, “the motor that turns the fan, the transformer and the electrical grid also are sources of heat and therefore also contribute to attracting mosquitoes.” (Ans. 3). The Examiner further Appeal 2009-006911 Application 10/445,584 4 found that “it is inherent that they [sic. the] devices generate heat . . . noting that the materials used are not perfect conductors of electricity.” (Ans. 6). Appellant further contends that Cheshire is “silent with respect to using heat generated by the fan motor, the transformer, or the electrocution grid as mosquito attractants. Instead, a light bulb is the only mosquito- attracting heat source taught or suggested by Cheshire.” (App. Br. 7-8 and 14). Claims 1, 10, 16, 21 and 27 call for, inter alia, a source other than a light bulb to generate heat. Cheshire describes a light bulb 42 for emitting heat, wherein the heat from the bulb attracts insects. (Cheshire, col. 11, 28-36). Cheshire further describes a fan 49, a transformer 30, and an electric grid 20, 56. (Cheshire, col. 7, ll. 15-51; and col. 11, 44-col. 12, ll. 11). Cheshire, however, is silent as to (1) using heat generated by the fan 49, the transformer 30, or the electric grid 20, 56 to attract insects; and (2) whether any heat is, in fact, generated by the fan 49, the transformer 30, or the electric grid 20, 56. Therefore, it is speculative, at best, whether any heat is generated by the fan 49, the transformer 30, or the electric grid 20, 56. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (holding that under principles of inherency, when a reference is silent about an asserted inherent characteristic, it must be 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). See also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (holding that “[i]nherency, however, may not be established by probabilities or possibilities. The mere fact that a Appeal 2009-006911 Application 10/445,584 5 certain thing may result from a given set of circumstances is not sufficient.”). See also In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (When relying on the theory of inherency, the examiner has the initial burden of providing a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic reasonably flows from the teachings of the applied prior art.). The Examiner has not relied on Browne or Chrysanthis for any teaching that would remedy the deficiency in Cheshire (Ans. 3, 5). Since speculation and conjecture cannot form the basis for a legal conclusion of obviousness, that is, since any heat generated in Cheshire other by the light bulb 42 appears to be based on speculation, we are constrained to reverse the rejection of independent claims 1, 10, 16, 21 and 27. Likewise, we are constrained to reverse the rejection of claims 2-9, 11, 13-15, 17-20, 22-26 and 28-37, which depend from claims 1, 10, 16, 21 and 27, respectively. CONCLUSION The Examiner has erred in finding that Cheshire describes a source other than a light bulb to generate heat as called for in independent claims 1, 10, 16, 21 and 27. DECISION The decision of the Examiner to reject claims 1-11 and 13-37 is reversed. REVERSED Appeal 2009-006911 Application 10/445,584 6 mls MICHAEL J. COLITZ, JR. 640 DOUGLAS AVENUE DUNEDIN, FL 34698