Bird-B-Gone, Inc.Download PDFPatent Trials and Appeals BoardMar 30, 20222022000214 (P.T.A.B. Mar. 30, 2022) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/266,608 09/15/2016 Bruce Donoho 100745.0079US3 5302 24392 7590 03/30/2022 FISH IP LAW, LLP 2603 Main Street Suite 1000 Irvine, CA 92614 EXAMINER ARK, DARREN W ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 03/30/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Patents@fishiplaw.com rfish@fishiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE DONOHO Appeal 2022-000214 Application 15/266,608 Technology Center 3600 Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-6, 8, and 9. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on February 24, 2022. We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Bird B Gone, LLC. Appeal Br. 2. Appeal 2022-000214 Application 15/266,608 2 CLAIMED SUBJECT MATTER The claims are directed to a method of manufacturing an electrified deterrent device having an insulative layer. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of manufacturing an electric deterrent device, comprising: extruding an elongated base that upon deployment has upper and bottom-most surfaces, the bottom-most surface having a longitudinally running first downward opening trough and a longitudinally running second downward opening trough; sewing a first conductor and a second conductor to the upper surface of the base using fasteners that pass through to the first and second troughs, respectively; and coating at least a portion of a top surface of at least one of the first and second troughs with a non-adhesive coating. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Riddell US 8,434,209 B1 May 7, 2013 Greenwood WO 95/08915 Apr. 6, 1995 REJECTIONS Claims 1, 3-6, 8, and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Riddell. Final Act. 2. Claims 1, 3-6, 8, and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Riddell and Greenwood. Final Act. 5. OPINION Claim 1 is representative of all rejected claims and for both rejections under 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2022-000214 Application 15/266,608 3 The Examiner relies on the Figure 17 embodiment of Riddell as disclosing all subject matter of sole independent claim 1 while acknowledging there may exist some debate as to whether Riddell sufficiently discloses the coating “with a non-adhesive coating” step. Final Act. 3-4. Coating “with a non-adhesive coating” is the sole point of contention raised by Appellant. Appeal Br. 5-8 (emphasis added). Initially we note that although the Examiner begins by acknowledging claim 1 is directed to a method, the Examiner later comments “the present claim is an apparatus claim” and includes product-by-process limitations and the functional language “at a time of manufacturing of the device.” Final Act. 3 (emphasis omitted). These statements appear to be artifacts of subject matter that may have been previously addressed but is not currently present in the claims now before us for review. In any case, despite these remarks, the Examiner’s position is sufficiently clear on the record before us and Appellant does not take issue with these statements by the Examiner. Indeed, even though nothing regarding the quoted language “the time of manufacturing” presently appears in the version of claim 1 now before us, at the oral hearing Appellant conceded that the “non-adhesive” nature of the coating should be evaluated at the conclusion of the manufacturing process and need not necessarily be evaluated during the application of the coating. Oral Hearing Transcript at 10-11. If this is a fair and reasonable reading of claim 1, this defeats Appellant’s own position and supports the Examiner’s initial position that Riddell fairly discloses, or at the very least implies or suggests, a glue or adhesive that has fully cured by the conclusion of manufacturing and prior to installation. This is a reasonable inference by the Examiner because, as the Examiner points out, there would seemingly be no need for any adhesive applied in cavities 270a and 270b to retain adhesive Appeal 2022-000214 Application 15/266,608 4 qualities after manufacturing is concluded if Riddell’s device is to be mechanically fastened by other means. Ans. 6-7 (citing Riddell col. 11, 35- 41). In any case, the Examiner takes an alternate position that is also persuasive of the obviousness of the claimed subject matter. As the Examiner correctly points out, at least one, and perhaps the primary, stated purpose of Riddell’s adhesive or glue is to provide insulation. Final Act. 4; Ans. 6 (citing Riddell col. 11, ll. 17-30). The Examiner persuasively reasons that such a result can be achieved with or without the applied coating having any adhesive properties. From this the Examiner reasonably concludes that selecting an insulative coating that is or is not “adhesive” is merely an “obvious matter of design choice.” Final Act. 4. It is true that the phrase “design choice” may be used in a patentability analysis to refer to selecting between equivalents where there exists little or no meaningful distinctions between the structures and the functions they perform. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (citing In re Gal, 980 F.2d 717 (Fed. Cir. 1992)). It is also true that, here, an adhesive would have a chemically different structure, as well as an additional function of helping to adhere the deterrent to a surface. Appeal Br. 5-8. However, the Examiner’s ultimate, and uncontroverted, point was that the adhesive or non-adhesive nature would seem to have little, if any, bearing on whether a coating applied to Riddell’s cavities 270a and 270b performs well as an insulator. We agree with the Examiner that it would have been obvious to one skilled in the art to weigh the pros and cons of each arrangement, adhesive or non-adhesive, and make a selection of one or the other based on the intended application, such as the intended fastening method. Ans. 5-7. Appellant’s argument that an artisan would not know how to make such a Appeal 2022-000214 Application 15/266,608 5 selection (Reply Br. 4) fails to attribute the requisite “skill” to the hypothetical person associated with § 103. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). Appellant further argues that the Examiner “conflates” different embodiments of Riddell. Appeal Br. 7-8. There is nothing wrong with relying on teachings from multiple embodiments in the context of an obviousness rejection, particularly where, as here, it would have been reasonably understood that the discussion of subject matter, here insulators and fasteners, is not intended to relate to only specific embodiments. On the record before us, for the reasons discussed above, we sustain the Examiner’s rejection of claim 1 based on Riddell alone. The subject matter cited by the Examiner in Greenwood adds no further support to the Examiner’s position. The grout cited by the Examiner (Final Act. 6; Ans. 8 (citing Greenwood p. 4, ll. 20-22)) only appears to be applied during the installation, as opposed to during the manufacturing of Greenwood’s device. Greenwood p. 7, ll. 11-14. This would appear to be the precise subject matter expressly excluded and disavowed by the statement, “the coating is expressly defined to exclude glue or other adhesive that may be applied when installing the device to a mounting surface” in paragraph 25 of Appellant’s Specification. Thus, it is unreasonable for the Examiner to rely on such subject matter as meeting the claim language in question. MPEP § 2111.01(IV) (9th ed. Rev. 10.2019, rev. June 2020). Accordingly, as the Examiner relies on an overly broad claim construction with regard to the rejection based in part on Greenwood, we sustain only the Examiner’s rejection on Riddell alone. Appeal 2022-000214 Application 15/266,608 6 CONCLUSION The rejection of claims 1, 3-6, 8, and 9 under 35 U.S.C. § 103 as being unpatentable over Riddell is affirmed. The rejection of claims 1, 3-6, 8, and 9 under 35 U.S.C. § 103 as being unpatentable over Riddell and Greenwood is reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-6, 8, 9 103 Riddell 1, 3-6, 8, 9 1, 3-6, 8, 9 103 Riddell, Greenwood 1, 3-6, 8, 9 Overall Outcome 1, 3-6, 8, 9 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED2 2 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.” 37 C.F.R. § 41.50(a). Copy with citationCopy as parenthetical citation