Neil Ziegmannv.Carlis Stephens

Patent Trial and Appeal Board

Feb 24, 2016

13937403 (P.T.A.B. Feb. 24, 2016)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: February 24, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NEIL ZIEGMAN, N.P.Z., INC.,
Petitioner,
v.
CARLIS G. STEPHENS,
Patent Owner.
_______________

Case IPR2015-01860
Patent 8,881,447 B2
_______________

Before MICHAEL W. KIM, CARL M. DEFRANCO, and
JAMES J. MAYBERRY, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION
Decision Denying Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Neil Ziegmann, N.P.Z., Inc. (“Petitioner”) filed a Petition to institute
an inter partes review of claims 12–15 of U.S. Patent No. 8,881,447 B2
(Ex. 1001, “the ’447 patent”). Paper 1 (“Pet.”). Carlis G. Stephens (“Patent
Owner”) filed a Preliminary Response (Paper 9; “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
inter partes review may not be instituted unless the information presented in
the Petition shows “there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition.”
Upon consideration of the Petition and Preliminary Response, we conclude
that the Petition presents substantially the same art or arguments as those
previously presented to the Office, and, thus, exercise our discretion under
35 U.S.C. § 325(d) to deny institution of an inter partes review as to claims
12–15.
B. Related Proceedings
Petitioner and Patent Owner identify the following district court
proceedings concerning the ’447 patent: Stephens v. Neil P. Ziegmann,
NPZ, Inc., et al, Civ. No. 4:15-cv-00954 (E.D. Mo.). Pet. 1; Paper 7, 2.
C. The ’447 Patent
The ’447 patent discloses the following in its “Field of the Invention”
section:
The present invention relates generally to a trap and more
specifically it relates to an animal trap for efficiently restraining
animals, such as raccoons, in a secure manner using a diamond-
shaped restraint and having an interchangeable and easy-setting
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trigger which allows for a push-pull type or a pull-only type
trigger and having an easy clean-out system for the trap.
Ex. 1001, 1:17–23. The ’447 patent discloses that “current traps [ ]
generally either have a push or a pull-type trigger thus either not efficiently
providing a means to engage the trap, wherein the animal may possibly
retrieve the bait without causing the trap to engage.” Ex. 1001, 1:30–34.
Thus, according to the ’447 patent, there is a need for an interchangeable and
easy-setting trigger which allows for a push-pull type trigger. Ex. 1001,
1:41–48.
A version of Figure 3 of the ’447 patent annotated by Petitioner is set
forth below:

Annotated Figure 3 discloses a front upper perspective view of a cutaway
portion of hollow body 20 of animal trap 10. Ex. 1001, 2:36–37. When an
animal places an extremity within hollow body 20 to retrieve bait placed
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behind trigger member 61, 81, the animal pushes or pulls trigger member 61,
81, causing the animal’s extremity to be retained by restraint member 50.
Ex. 1001, 3:39–54, 7:46–57.
D. Illustrative Claim
Petitioner challenges claims 12–15 of the ’447 patent. Independent
claim 12 is illustrative of the challenged claims and is reproduced below:
12. An animal trap for humanely trapping animals and for
preventing theft by an animal of bait placed in the trap to lure the
animal to the trap, comprising:
a hollow body having an entrance opening;
a spring supported adjacent said body and a restraint
member connected to said spring, said restraint member adapted
to engage an extremity of the animal when the extremity is
inserted into said body through said entrance opening to restrain
the animal in the trap;
a trigger assembly restraining said restraint member in an
armed position, said trigger assembly including a trigger member
located intermediate said entrance opening and a location within
the trap where bait is placed for the animal’s extremity to contact
said trigger member when attempting to reach the bait thereby
releasing said restraint member from said armed position when
either a first directional force or a second and substantially
opposite directional force is applied to the trigger member of said
trigger assembly; and,
wherein said trigger member has a shaped end
encompassing a substantial cross-section portion of said hollow
body whereby insertion of the animal’s extremity into the hollow
body to reach the bait causes contact of the extremity with the
shaped end of the trigger member and results in capture of the
animal while also preventing theft of the bait.
Id. at 10:5–31.
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E. Asserted Grounds of Unpatentability
Petitioner challenges claims 12–15 on the following grounds.
Reference(s) Basis Challenged Claims
Ziegmann1 in view of
Custard2
§ 103(a) 12–15
Ziegmann in view of Custard
and the Sullivan Circle
Triggers Advertisement3
§ 103(a) 12–15
Ziegmann in view of Danison4 § 103(a) 12, 14
Ziegmann in view of Danison
and the Berkshire U-Forms
Triggers Advertisement5
§ 103(a) 12, 14
Ziegmann in view of
Lindblad6
§ 103(a) 12, 15
Ziegmann in view of Mast7 § 103(a) 12, 13, 15

1 U.S. Patent No. 8,230,642 B2, issued July 31, 2012 (Ex. 1003).
2 U.S. Patent No. 4,158,929, issued June 26, 1979 (Ex. 1007).
3 The Snare Shop, 2006–2007 Catalog, p. 26 (Ex. 1019).
4 U.S. Patent No. 4,601,128, issued July 22, 1986 (Ex. 1008).
5 The Snare Shop, 2006–2007 Catalog, p. 26 (Ex. 1021).
6 U.S. Patent No. 4,306,370, issued Dec. 22, 1981 (Ex. 1009).
7 U.S. Patent No. 600,156, issued Mar. 8, 1898 (Ex. 1010).
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Reference(s) Basis Challenged Claims
Ziegmann in view of Mast and
Edwards8
§ 103(a) 12, 13, 15
II. ANALYSIS
Our discretion on whether to institute is guided by 35 U.S.C. § 325(d),
which provides, in relevant part:
MULTIPLE PROCEEDINGS -- . . . In determining whether to
institute or order a proceeding under this chapter, chapter 30, or
chapter 31, the Director may take into account whether, and
reject the petition or request because, the same or substantially
the same prior art or arguments previously were presented to the
Office.9
Patent Owner asks that we deny institution of trial on all grounds in
the Petition, because all of the prior art cited in the Petition was either before
the Examiner during prosecution, or does not present any new issues that
were not addressed fully during prosecution. Prelim. Resp. 25–47. We,
therefore, first examine whether the grounds asserted in the instant Petition
present “the same or substantially the same prior art or arguments” as those
previously presented to the Office. Then, we determine whether it is
appropriate to exercise our discretion to deny institution.

8 U.S. Patent No. 465,056, issued Dec. 15, 1891 (Ex. 1022).
9 Although this provision appears in Chapter 32 of the Patent Act, which is
directed to post-grant reviews, by its terms it is applicable also to
proceedings under Chapter 31, which covers inter partes review
proceedings.
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A. Prosecution History of Claims 12–15 of the ’447 Patent
The ’447 patent issued from U.S. Patent Application No. 13/937,403
(the ’403 application). Originally-filed claims 13–16 of the ’403 application
were prosecuted and renumbered at issuance as claims 12–15 of the ’447
patent. For clarity and consistency, all references herein will be to claims
12–15 of the ’447 patent, unless indicated otherwise.
Ziegmann was previously published as U.S. Patent Application
Publication No. 2010/0275503 A1 (“Ziegmann ’503”). Ex. 1003, [65].
Both Ziegmann and Ziegmann ’503 were cited to the Examiner via an
Information Disclosure Statement (“IDS”) filed July 22, 2013. Ex. 1002,
234. On March 27, 2014, the Examiner indicated that Ziegmann and
Ziegmann ’503 were considered by appending the following to the bottom of
the IDS: “ALL REFERENCES CONSIDERED EXCEPT WHERE LINED
THROUGH. /J.B./” Ex. 1002, 182. Ziegmann and Ziegmann ’503 are both
listed under the References Cited section of the ’447 patent, and each
include an asterisk indicating that they were “* cited by examiner.”
Ex. 1001, [56].
In an Office Action mailed June 4, 2014, claims 12–15 were rejected
under 35 U.S.C. § 103(a) as unpatentable over McCulloch10 in view of
Armstrong.11 Ex. 1002, 68–69. In rejecting claims 12–15, the Office Action
reads “McCulloch does not teach wherein said trigger member has a shaped
end encompassing a substantial cross-sectional portion of said hollow body,
said trigger member end has a generally circular shape or cross shape or

10 U.S. Patent Application Publication No. 2005/0274057 A1, published
Dec. 15, 2005. Ex. 1026.
11 U.S. Patent No. 872,041, issued Nov. 26, 1907. Ex. 1013.
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square shape. Armstrong teaches a circular trigger (11).” Ex. 1002, 69.
Independent claim 12 recites “wherein said trigger member has a shaped end
encompassing a substantial cross-sectional portion of said hollow body,”
(hereinafter “shaped-end trigger”). In the same Office Action, claim 1 was
rejected under 35 U.S.C. § 103(a) as unpatentable over Ziegmann ’503 in
view of Golden.12 Ex. 1002, 67.
In response to the above Office Action, an Amendment was filed, in
which evidence was submitted in support of an argument concerning
secondary considerations, to overcome the rejection of claims 12–15 as
obvious over McCulloch and Armstrong. Ex. 1002, 25–57. In response to
that Amendment, a Notice of Allowability was mailed on September 30,
2014, in which the Office asserted the following:
The following is an examiner’s statement of reasons for
allowance: Applicant has supplied written accounts from those
highly skilled in the art for a period of time that dates back prior
to the filing of the prior art stating that the invention as claimed
has provided a long felt need which has been unsolved in the
entire history of trapping substantially eliminating the huge
problem of bait theft. The results of and success of the
application as provided by applicant show that not only does the
invention as claimed solve the problem but practically eliminated
bait theft. Support is also given related to the increased sales and
increased competitors using the design of applicant’s invention.
Because of the level of success and the solution to a long felt,
and unsolved need in the art as well as consideration by the
highest level of those skilled in the art, the prior art would not
have been used in combination to anticipate applicants invention.
Ex. 1002, 14.

12 U.S. Patent No. 1,002,260.
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B. Relevant Portions of Petition
Petitioner asserts that “[i]n essence, the Examiner concluded that
McCollough ’057 [sic] disclosed all elements of claim 12 with the exception
of a shaped trigger which was disclosed by Armstrong ’041.” Pet. 7; see
also Pet. 51. Petitioner asserts further that “[t]o begin, Ziegmann ’642
discloses all of the elements of claim 12 as arranged in the claim with the
exception of a trigger end which encompasses a substantial cross section
portion of the interior of the trap housing.” Pet. 25; see also Pet. 39, 44, 46.
C. Same or Substantially the Same Prior Art or Arguments
Petitioner asserts that claims 12–15 are unpatentable as obvious over
Ziegmann in view of several secondary references, where the secondary
references are directed to the shaped-end trigger recited in independent
claim 12. To that end, an analysis under 35 U.S.C. § 325(d) for this
proceeding requires two determinations: (1) whether or not Ziegmann was
presented to and considered previously by the Office in conjunction with
claims 12–15; and (2) whether or not modifying the primary reference to
include the shaped-end trigger was also presented to and considered
previously by the Office.
Concerning Ziegmann, we determine that Ziegmann was substantively
presented to and considered by the Office in conjunction with claims 12–15.
The totality of facts in support of that determination are as follows. First,
both Ziegmann and Ziegmann ’503 were cited in an IDS of the ’403
application, and the Examiner indicated that both Ziegmann and Ziegmann
’503 were presented and considered. Ex. 1001, [56]; Ex. 1002, 182, 234;
Ex. 1003, [65]. Additionally, Ziegmann ’503 was cited expressly in a
rejection of a claim of the ’403 application. Ex. 1002, 67. While the
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rejection where Ziegmann ’503 was cited was for a claim other than claims
12–15, claims 12–15 were rejected, albeit on another ground, in the same
Office Action in which a claim was rejected as obvious over Ziegmann ’503.
Ex. 1002, 68–69. Specifically, claims 12–15 were rejected as obvious over
McCulloch, where the Office indicated that McCulloch lacked the shaped-
end trigger recited in claim 12. Ex. 1002, 69. In other words, for claims 12–
15, McCulloch was used in the same manner by the Office as Petitioner uses
Ziegmann in the instant proceeding. Pet. 7, 25. Accordingly, based on the
totality of evidence, we find that Ziegmann itself, and certainly the substance
of Ziegmann, was considered by the Office with regards to claims 12–15.
We determine also that it was previously presented to and considered
by the Office as to whether it would have been obvious to modify a primary
reference to include the shaped-end trigger recited in independent claim 12.
As noted above, both the Office and the Petitioner agree that the only
difference between the primary reference and claim 12 is the shaped-end
trigger. Ex. 1002, 69; Pet. 25; see also Pet. 39, 44, 46. While the Office
cited Armstrong and Petitioner cites other references to account for the
aforementioned difference with the primary reference, we are persuaded that
prior art and arguments substantially similar to those set forth by Petitioner
were previously presented to and considered by the Office. Specifically, (1)
the Office articulated expressly the differences between the primary
reference and the claimed invention as being the shaped-end trigger and
cited Armstrong for that difference (Ex. 1002, 69), (2) we find that all of the
references cited by the Petitioner are directed to the shaped-end trigger, and
(3) the Office acknowledged expressly that the evidence of secondary
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considerations presented overcame the Office’s previous analysis concerning
modifying the primary reference to include the shaped-end trigger.
Petitioner asserts that “secondary considerations of non-obviousness
simply cannot overcome a strong prima facie case of obviousness.” Pet. 50–
51 (citing LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, Paper No. 73 at
26 (PTAB Mar. 27, 2014) (quoting Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010) (alterations omitted))). Petitioner’s assertions
are misplaced, as the relevant question here is whether “the same or
substantially the same prior art or arguments previously were presented to
the Office,” which is unrelated to the relative strength of evidence of
secondary considerations in an obviousness analysis. To that end, we
determine, for the reasons set forth supra, that arguments, concerning
weighing evidence of secondary considerations relative to the Office’s
previous analysis regarding modifying the primary reference to include the
shaped-end trigger, was previously presented to and considered by the
Office.
Petitioner asserts further that “[f]or whatever reason, the Examiner
failed to fully appreciate the relevant teachings in Ziegmann ’642 during the
original prosecution, including, inter alia, the disclosure of a two-way/push-
pull trigger.” Pet. 51. While we agree that it is unclear whether the Office
considered Ziegmann ’642 expressly in relation to the limitation that
corresponds to the two-way/push-pull trigger, we find that the Office did
consider expressly that limitation with respect to McCulloch. Ex. 1002, 69–
70. Furthermore, Petitioner’s assertions are misplaced, as the prosecution
history indicates that the difference overcome by the evidence of secondary
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considerations was the shaped-end trigger, and not the claimed two-
way/push-pull trigger. Ex. 1002, 69.
Petitioner asserts additionally that there is an insufficient nexus
between the evidence of secondary considerations and claims 12–15.
Specifically, Petitioner asserts that the significant improvement of the ’447
patent is the two-way/push-pull trigger, and that it is unclear whether the
evidence of secondary considerations was directed more to the shaped-end
trigger or the two-way/push-pull trigger. Petitioner’s assertions are again
misplaced, as the relevant question here is whether “the same or
substantially the same prior art or arguments previously were presented to
the Office,” which is unrelated to the relative strength of evidence of
secondary considerations in an obviousness analysis. To that end, we
determine that arguments concerning weighing evidence of secondary
considerations relative to the Office’s previous analysis regarding modifying
the primary reference to include the shaped-end trigger were previously
presented to and considered by the Office.
D. Discretion to Deny Institution of Trial
Having found that the instant Petition raises the same or substantially
the same prior art and arguments as those previously presented to the Office,
§ 325(d) states that we may take these facts into consideration when
determining whether to institute trial. The question, therefore, is whether we
should exercise our discretion to deny the Petition, after weighing the
particular circumstances of this proceeding, the interests of the parties, and
the needs of the Board.
While petitioners may have sound reasons for raising art or arguments
similar to those previously considered by the Office, the Board weighs
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petitioners’ desires to be heard against the interests of patent owners, who
seek to avoid harassment and enjoy quiet title to their rights. See H.R. Rep.
No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools
for harassment or a means to prevent market entry through repeated
litigation and administrative attacks on the validity of a patent. Doing so
would frustrate the purpose of the section as providing quick and cost
effective alternatives to litigation.”).
We acknowledge that there are several factors weighing in
Petitioner’s favor and against denying the instant Petition under § 325(d).
Foremost among them include that the ’447 patent has not previously been
before the Board, and Petitioner has not challenged previously the ’447
patent in a proceeding before the Office. Nevertheless, we determine that
these factors are outweighed by the following countervailing factors. The
same primary reference asserted by the Petitioner was previously presented
to, and considered by, the Office in the same substantive manner as
advocated for by Petitioner. Petitioner identifies the same difference
between the primary reference and claims 12–15 as identified expressly and
unambiguously by the Office, and, thus, asks the Board to, essentially,
second-guess the Office’s previous decision on substantially the same issue.
And in requesting that second-guess, Petitioner asks the Board to reconsider
evidence of secondary considerations that, again, the Office expressly
determined was sufficient to overcome the expressly and unambiguously
identified difference between the primary reference and claims 12–15.
Indeed, given the relative clarity of the already-considered difference in
scope between the primary reference and claims 12–15, we need not resort
to undue speculation to conclude that the proceeding will devolve into a
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resource-consuming dispute concerning evidence with regards to secondary
considerations, again, on an issue already and unambiguously presented
previously to and considered by the Office. Under these facts, we are
unpersuaded that adjudicating such a dispute on an already-considered issue
is an efficient use of Board resources.
E. Conclusion
For the foregoing reasons, we conclude that the instant Petition raises
the same or substantially the same prior art or arguments as those previously
presented to the Office concerning claims 12–15 of the ’447 patent.
Furthermore, we conclude that the circumstances of this case justify
exercising our discretion not to institute trial.
III. ORDER
It is ORDERED that the Petition is denied, and no trial is instituted.

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For PETITIONER:

Jeffrey Harty
Glenn Johnson
jharty@nyemaster.com
gjohnson@nyemaster.com

For PATENT OWNER:

Edward Robinson
Patrick Delaney
erobinson@dcpatent.com
pdelaney@dcpatent.com