Ex Parte Younger

Board of Patent Appeals and Interferences

Dec 22, 2009

11185407 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL P. YOUNGER
____________________

Appeal 2009-002969
Application 11/185,407
Technology Center 3600
____________________

Decided: December 22, 2009
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
9-17, 21 and 22. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-002969
Application 11/185,407

2
The claims are directed to a portable vapor bee smoker. Claim 9,
reproduced below, is illustrative of the claimed subject matter:

9. A portable vapor bee smoker comprising:
a housing;
a reservoir carried by the housing;
vapor fluid containing liquid smoke carried by the
reservoir, the vapor fluid effecting bees for control thereof;
a vapor generator carried by the housing and coupled to
the reservoir for receiving the vapor fluid; and
a heat source carried by the housing for heating the vapor
generator for turning the vapor fluid into a vapor.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cale
Swiatosz
Burayez
Higashimoto
Aronie
US 4,615,138
US 4,818,843
US 5,398,016
US 5,967,027
US 6,421,502 B1
Oct. 7, 1986
Apr. 4, 1989
Mar. 14, 1995
Oct. 19, 1999
Jul. 16, 2002

Claims 9-12, 14, 15, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Swiatosz and Burayez. Ans. 3.
Claims 13 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swiatosz, Burayez and Aronie. Ans. 5.
Claims 9-12, 14, 15, and 17 additionally stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Swiatosz and Higashimoto.
Ans. 5.
Claims 13 and 16 additionally stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Swiatosz, Higashimoto and Aronie. Ans. 7.
Appeal 2009-002969
Application 11/185,407

3
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swiatosz, Burayez and Cale. Ans. 8.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swiatosz, Burayez, Cale and Aronie. Ans. 9.
Claim 21 additionally stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Swiatosz, Higashimoto and Cale. Ans. 9.
Claim 22 additionally stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Swiatosz, Higashimoto, Cale and Aronie. Ans. 10.

ISSUES
Appellant argues the rejection of claims 9-12, 14, 15 and 17 as being
unpatentable over Swiatosz and Burayez as a group. App. Br. 8-16. We
select claim 9 as the representative claim, and claims 10-12, 14, 15 and 17
stand or fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii). Appellant contends
that the preamble of claim 9, which defines the claimed apparatus as a “bee
smoker,” along with the phrase “the vapor fluid effecting bees for control
thereof” are not merely intended use limitations as suggested by the
Examiner. App. Br. 9-10; Ans. 4, 11. Appellant contends that these terms
create a patentable distinction between the claimed invention and the prior
art. App. Br. 9-11. Thus, the first issue for our consideration is whether
Appellant has established that the Examiner erred by determining that the
claim terms relating to the control of bees do not patentably distinguish the
claimed invention from the prior art.
Also regarding the rejection of claim 9 as being unpatentable over
Swiatosz and Burayez , Appellant contends that the Examiner erred by
finding that Swiatosz and Burayez are analogous art because they are not
Appeal 2009-002969
Application 11/185,407

4
within Appellant’s field of endeavor, keeping bees, or reasonably pertinent
to the problem of keeping bees. App. Br. 12-13. Thus the next issue for our
consideration is whether Appellant has established that the Examiner erred
by finding that Swiatosz and Burayez are analogous art.
In addition, regarding the rejection of claim 9 as being unpatentable
over Swiatosz and Burayez, Appellant contends that the Examiner has failed
to establish a prima facie case of obviousness because using the liquid
smoke of Burayez in the device of Swiatosz would render Swiatosz’ device
inoperable for its intended purpose. App. Br. 13-16. Thus, the next issue for
our consideration is whether Appellant has established that the Examiner
erred in concluding that the subject matter of claim 9 would have been
obvious to one having ordinary skill in the art because the liquid smoke of
Burayez in the device of Swiatosz would render Swiatosz’ device inoperable
for its intended purpose.
Regarding the rejection of claims 13 and 16 as being unpatentable
over Swiatosz, Burayez and Aronie, Appellant contends that Aronie is non-
analogous because it does not relate to bees. App. Br. 17. Appellant further
contends Aronie’s bulb 36 is too small to function properly in place of the
Swiatosz pump. App. Br. 18. Appellant further contends that since Aronie’s
bulb is arranged so as to pump air into the inlet of the reservoir the
Examiner’s proposed combination would not meet the limitation requiring
the pump to be coupled to the conduit coupling the outlet of the reservoir to
the inlet of the vapor generator. App. Br. 19-20. Regarding the rejection of
claims 13 and 16 as being unpatentable over Swiatosz, Higashimoto and
Aronie, Appellant merely repeats the arguments previously set forth
regarding the rejection over Swiatosz, Burayez and Aronie. App. Br. 25.
Appeal 2009-002969
Application 11/185,407

5
These arguments are again repeated regarding the rejection of claim 22 as
being unpatentable over Swiatosz, Burayez, Cale and Aronie or in the
alternative Swiatosz, Higashimoto, Cale and Aronie. App. Br. 29-30, 31-32.
In light of these contentions, we must determine whether Appellant has
established that the Examiner erred in concluding that the subject matter of
claims 13, 16 and 22 would have been obvious.
Appellant argues the rejection of claims 9-12, 14, 15 and 17 as being
unpatentable over Swiatosz and Higashimoto as a group. App. Br. 20-24.
We select claim 9 as the representative claim, and claims 10-12, 14, 15 and
17 stand or fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii). Appellant repeats
the arguments discussed above related to the analogousness of Swiatosz.
Appellant additionally contends that Higashimoto is non-analogous art. App.
Br. 22. Appellant again contends that the Examiner proposed inclusion of
liquid smoke would render Swiatosz inoperable for its intended purpose.
App. Br. 22-24. In light of these contentions, we must determine whether
Appellant has established that the Examiner erred in concluding that the
subject matter of claim 9 would have been obvious over Swiatosz and
Higashimoto.
Regarding the rejection of claim 21 as being unpatentable over
Swiatosz, Burayez and Cale, Appellant repeats the argument that Swiatosz
and Burayez are non-analogous art. App. Br. 26-27. Appellant further
contends that the Examiner’s rejection of claim 21 is mystifying, and poses a
number of questions relating to the Examiner’s proposed combination. App.
Br. 28-29. In light of these contentions we must determine whether
Appellant has established that the Examiner erred in concluding that the
subject matter of claim 21 would have been obvious. These arguments are
Appeal 2009-002969
Application 11/185,407

6
repeated regarding the rejection of claim 21 as being unpatentable over
Swiatosz, Higashimoto and Cale. App. Br. 30-31.

FINDINGS OF FACT
1. The Specification provides that,
as they have been used for many years, smokers are prone to
many problems and safety hazards.…[A] smoker must have a
fire burning at all times. Thus if the fire goes out, the smoker
will be unusable. With a fire burning for extended period of
time, the smoker itself will become hot and can injure the user
or damage property.…It would be highly advantageous,
therefore, to remedy the foregoing and other deficiencies
inherent in the prior art.”
Spec. 2:6-16.
2. The Specification provides that “This invention relates to smoke
simulating devices. [] In a further and a more specific aspect, the instant
invention concerns smoke simulating machines for use by bee keepers.”
Spec. 1:10-14.
3. The particular problem with which Appellant was concerned was the
inconvenience and danger of relying upon a burning fire to produce a
portable source of smoke. See Fact 1.
4. Swiatosz discloses a low cost, fast startup resistance tube smoke
generator for educational, theater, or aerosol dispensing purposes. Col.
1, ll. 5-10.
5. Swiatosz discloses a housing 11, a reservoir 13 carried by the housing,
and vapor fluid carried by the reservoir. Col. 3, ll. 8-10, 62-64. A
container 21 (a “vapor generator”) is carried by the housing and coupled
to the reservoir for receiving the vapor fluid. Col. 3, l. 66 – col. 4, l. 15;
Appeal 2009-002969
Application 11/185,407

7
fig. 1. A heat source 30 is carried by the housing for heating the vapor
generator 21 for turning the vapor fluid into a vapor. Col. 4, ll. 16-22.
6. Swiatosz does not refer to the device disclosed therein as a “bee
smoker” nor does Swiatosz disclose that the vapor fluid contained in the
device “effect[s] bees for the control thereof.”
7. Swiatosz cites U.S. Patent 2,291,423 to Tiscornia and U.S. Patent
3,496,668 to Slater, each of which deal with smokers or foggers for
insect control. Swiatosz, p. 1, References Cited; col. 2, ll. 37-38.
8. Swiatosz suggests that the reservoir may be filled with propylene glycol
or a wide variety of smoke agents. Col. 3, ll. 8-10; col. 8, ll. 1-2.
9. Swiatosz does not specifically disclose that “liquid smoke” can be
added to the vapor fluid.
10. Burayez teaches a vehicle defense system wherein would-be thieves are
scared away due to the generation of a thick harmless smoke. Col. 1, ll.
9-14, 52-53. Burayez suggests using “[l]iquid smoke (a product which is
readily available in the market)” in the disclosed device. Col. 2, ll. 8-11.
11. Higashimoto discloses a device for smoking a food material with
smoke or liquid smoke. Col. 1, ll. 4-5. Higashimoto teaches that it is
known to use liquid smoke in place of smoke. Col. 1, ll. 54-57.
12. Neither Burayez nor Higashimoto disclose that their devices in any way
“effect[s] bees for the control thereof.”
13. Aronie aims to provide a toy smoke ring gun that is portable, safe, and
fast-acting for non-continuous operation. Col. 2, ll. 7-10.
14. Aronie discloses a smoke ring gun 10 having a tank (a “reservoir”) 32,
connected by a tube 40 to a heating element 38. Col. 4, ll. 10-11, 38-53.
A rubber bulb 36 is employed to exert a positive fluid pressure on the
Appeal 2009-002969
Application 11/185,407

8
liquid 34 contained in the tank 32 in order to pump the liquid 34 up the
tube 40 toward the heater 38 where it is vaporized. Col. 4, ll. 38-42; col.
5, ll. 32-36. When the bulb 36 is released, negative pressure is delivered
to the tank which facilitates rapid heating. Col. 5, ll. 36-37.
15. Cale demonstrates that it is well known to use smoke generating devices
that rely upon combustible materials to generate smoke to effect bees
for control thereof. See Abstract; col. 1, 40-43.
16. Although Swiatosz, Burayez, Higashimoto and Aronie do not deal with
bee keeping, they each deal with substituting smoke or combustible
materials for a more reliable, safer form of smoke and are therefore
reasonably pertinent to the particular problem with which Appellant was
faced. See Facts 1, 10, 11, and 13.

PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble
is “necessary to give life, meaning, and vitality” to the claim,
then the claim preamble should be construed as if in the balance
of the claim.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely states, for
Appeal 2009-002969
Application 11/185,407

9
example, the purpose or intended use of the invention, rather than any
distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. Id.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in
Swinehart:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
439 F.2d at 213.
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. See e.g., In re Schreiber,
128 F.3d at 1477-78.
“35 U.S.C. § 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
Appeal 2009-002969
Application 11/185,407

10
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407.
The determination of the scope and content of the prior art includes
determining whether prior art references are “analogous.” Whether a
reference in the prior art is “analogous” is a fact question. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810
F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)). Two
criteria have evolved for determining whether prior art is analogous: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. Id. (citing In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA
1979)). “A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.” In re Clay, 966 F.2d at
659.
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
Appeal 2009-002969
Application 11/185,407

11
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See id. (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
KSR, 550 U.S. at 417. When considering obviousness of a combination of
known elements, the operative question is thus “whether the improvement is
more than the predictable use of prior-art elements according to their
established functions.” Id.

Appeal 2009-002969
Application 11/185,407

12
ANALYSIS
We agree with the Examiner’s claim construction that the recitation of
a “portable vapor bee smoker” in the preamble of claim 9 and that “the
vapor fluid effect[s] bees for control thereof” in the body of the claim relate
to the intended use of the device. These recitations do not impose any
structural requirements on the claimed subject matter that serve to
distinguish it over the prior art. The recitation of a “portable vapor bee
smoker” in the preamble does not limit claim 9 because the claim defines a
complete apparatus independent of the preamble. The preamble relates only
to the name and intended use of the device—exposing bees to smoke.
Neither does the functional recitation that “the vapor fluid effect[s] bees for
control thereof” in the body of the claim provide a basis for patentability.
While the prior at does not expressly describe these recitations (Facts 6 and
12), Appellant has not provided persuasive evidence to support the position
that the prior art structure relied upon by the Examiner would be incapable
of performing the recited function or use. See e.g., In re Swinehart, 439 F.2d
at 213.
Swiatosz, Burayez, Higashimoto and Aronie are properly considered
analogous art for purposes of an obviousness determination. First,
Appellant’s Specification itself suggests that the field of endeavor is not
necessarily restricted to bee keeping. See Fact 2. Secondly, the particular
problem with which Appellant was faced was not keeping bees as Appellant
suggests. App. Br. 12. The particular problem with which Appellant was
concerned was the inconvenience and danger of relying upon a burning fire
to produce a portable source of smoke. See Facts 1 and 3. Although
Swiatosz, Burayez, Higashimoto and Aronie do not deal with bee keeping,
Appeal 2009-002969
Application 11/185,407

13
they each deal with replacing smoke or combustible materials for a more
reliable, and safer form of smoke, and are therefore reasonably pertinent to
the particular problem with which Appellant was faced. See Facts 4, 10, 11,
13, and 16. Additionally, Swiatosz’s citation of references relating to
smokers or foggers for insect control further evidences the fact that the
ultimate purpose of the smoke produced does not necessarily limit which
references would have logically commended themselves to an inventor’s
attention. See Fact 7.
Swiatosz discloses the basic structure of the device described by claim
9 absent liquid smoke. Facts 5 and 9. Swiatosz specifically suggests that
alternate smoke generating agents may be employed in the disclosed device.
Fact 8. Burayez and Higashimoto each disclose that liquid smoke is known
in the art as a smoke substitute. Facts 10 and 11. The subject matter of claim
9 involves no more than predictable use of prior art elements according to
their known functions and would have been obvious to one having ordinary
skill in the art. The alteration of the smoke generating composition is
expressly suggested by Swiatosz and it would have been obvious to try other
compositions which were known to produce a smoke substitute.
Appellant’s contention that the Examiner’s proposed inclusion of the
known liquid smoke, as taught by Burayez and Higashimoto, into the vapor
fluid of Swiatosz, would render Swiatosz’ device inoperable because the
“specific constituents of Swiatosz’ liquid are critical to the operation of his
device” directly contradicts Swiatosz’ teaching that the device may be used
with a wide variety of smoke producing agents. Fact 8.
Appellant’s arguments regarding the Examiner application of Aronie
relates to the specific structure of Aronie. The relevant inquiry, however, is
Appeal 2009-002969
Application 11/185,407

14
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). “Combining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973). One of ordinary skill in the art would have
known how to appropriately size Aronie’s bulb pump 36 so that it could
adequately perform the function of Swiatosz’ electric pump 16. Similarly,
the fact that Aronie uses the bulb pump 36 to create a positive pressure on
the liquid 34 does not mean that one of ordinary skill in the art would have
interpreted Aronie as teaching that a bulb pump must be confined to a
location on the inlet side of the liquid reservoir. Aronie also recognizes that
such a pump can exert a negative or suction force on a fluid and not only a
positive one. See Fact 14. It would have been obvious to one having ordinary
skill in the art to substitute Swiatosz’ suction pump with a bulb pump as
taught by Aronie in order to achieve the predictable result of reducing
energy requirements and improving portability. Once substituted, the bulb
pump would be coupled to the conduit coupling the reservoir to the vapor
generator as required by claim 13.
The subject matter of claim 21 involves the use of a known smoke
generating device as taught by Swiatosz to improve upon the well known
technique of bee control, as demonstrated by Cale, in order to achieve the
predictable results of providing a low cost, fast startup smoke generator that
does not rely upon a fire to generate smoke. Facts 4, 10, 11 and 15. As noted
Appeal 2009-002969
Application 11/185,407

15
above, Burayez and Higashimoto are properly considered analogous art and
it would have been obvious to substitute other vapor fluid compositions,
such as those taught by Burayez and Higashimoto, which were known to
produce smoke substitutes. This combination of known elements would have
been obvious to one having ordinary skill in the art.
As mentioned above, Appellant contends that the Examiner’s
rejection of claim 21 is mystifying. See App. Br. 28. A request to clarify a
rejection must be made by petition and not by Appeal to the Board. Where
an Appellant’s remarks do not point to any specific language within the
claims to distinguish over the prior art (App. Br. 27-29), those remarks
amount to a general allegation that the claims define a patentable invention.
Such allegations will not be considered an argument for patentability. 37
C.F.R. § 41.37(c)(1)(vii) (2007).

CONCLUSION OF LAW
On the record before us, Appellant has not established that the
Examiner erred by determining that the claim terms relating to the control of
bees do not patentably distinguish the claimed invention from the prior art.
Appellant has not established that the Examiner erred by finding that
Swiatosz and Burayez are analogous art. Appellant has not established that
the Examiner erred in concluding that the subject matter of claim 9 would
have been obvious to one having ordinary skill in the art because the liquid
smoke of Burayez or Higashimoto in the device of Swiatosz would render
Swiatosz’s device inoperable for its intended purpose. Appellant has not
established that the Examiner erred in concluding that the subject matter of
claims 13, 16, and 22 would have been obvious. Appellant has not
Appeal 2009-002969
Application 11/185,407

16
established that the Examiner erred in concluding that the subject matter of
claim 9 would have been obvious over Swiatosz and Higashimoto.

DECISION
For the above reasons, the Examiner’s rejections of claims 9-17, 21
and 22 are affirmed.
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) (2007).
AFFIRMED

Vsh

ROBERT A. PARSONS
4000 N. CENTRAL AVENUE, SUITE 1220
PHOENIX AZ 85012