Ex Parte Put et al

Patent Trial and Appeal Board

Sep 24, 2018

13321348 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/321,348 11/18/2011 Kurt Hans Put
23368 7590 09/26/2018
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BBTOOOl PA/73012.1 5905
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
daytonipdocket@dinsmore.com
denise.suter@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT HANS PUT, KRIS CYRIEL JOHAN JANS,
GUIDO MARIO KAREL MICHEL STERK,
GUY SMAGGHE, VEERLE MOMMAERTS,
FELIX LEOPOLD WACKERS, and
YANN BRUNO LOIC JACQUES
Appeal2018-000906
Application 13/3 21,348
Technology Center 3600
Before JENNIFER D. BAHR, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kurt Hans Put et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 30-33, 35-39, and 41-52. 2
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Appellants identify Biobest Belgium NV and Vrije Universiteit Brussel as
the real parties in interest. Appeal Br. 1.
2 Claims 34 and 40, which are the only other pending claims, have been
withdrawn from consideration "due to a prior restriction/election
requirement." Appeal Br. 1.
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Application 13/3 21,348
THE CLAIMED SUBJECT MATTER
Claim 30, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
30. A hive disseminator device comprising a first chamber
comprising side members and a floor member, said first
chamber further comprising:
- an entrance that allows bees to enter the first chamber;
a unidirectional exit that allows bees to exit from the first
chamber toward the outside of the hive and prevents bees from
entering the first chamber through said exit; and
- means to immobilize a substance on the floor member of said
first chamber; wherein bees are able to walk on the means to
immobilize a substance.
REJECTIONS
I. Claims 30, 31, 33, 35, 37-39, and 41-52 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Gross et al.
(US 5,348,511, iss. Sept. 20, 1994, hereinafter "Gross") and Legge
(GB 1 470 385, pub. Apr. 14, 1977).
II. Claims 32 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gross, Legge, and Root (US 3,200,419, iss. Aug.
17, 1965).
DISCUSSION
In rejecting independent claim 30, the Examiner found that Gross
discloses a hive disseminator device substantially as claimed, including, in
pertinent part, "a first chamber (portion of 10 above 36; see figure 2a)"
comprising "an entrance (at 68) that allows bees to enter the first chamber,"
"an exit ( 45) that allows bees to exit from the first chamber toward the
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outside of the hive," and "means (galvanized 28 gauge metal; see figure 1
and column 4, lines 42-47) to immobilize a substance on the floor member
of the first chamber." Final Act. 3. The Examiner found that "Gross
discloses that bees are discouraged from entering the first chamber through
the exit (see column 4, lines 34-41 ), but does not expressly disclose that bees
are prevented from doing so." Id.
The Examiner found that Legge teaches that it is well-known, in a
hive disseminator device, "to have an entrance (14) that allows bees to enter
the hive and a unidirectional exit (15) that allows bees to exit from the hive
toward the outside of the hive and prevents bees from entering the hive
through the exit." Id. (citing Legge 2:40-50; Fig. 3). The Examiner
determined that it would have been obvious "to modify the exit of Gross to
have the unidirectional gating of Legge, in order to prevent contamination of
the biocontrol agent of Gross or improve the efficiency of the hive." Id. at
3--4.
A dispositive issue raised in this appeal is whether the Examiner erred
in determining that it would have been obvious to modify the device of
Gross by providing unidirectional gating as taught by Legge at exit 45. See
Appeal Br. 6-13. The Examiner articulated two rationales for the proposed
modification-namely, "to prevent contamination of the biocontrol agent"
and to "improve the efficiency of the hive." Final Act. 3--4.
Appellants argue that the Examiner's rationale that the proposed
modification would have been obvious to prevent contamination of the
biocontrol agent of Gross "is not supported by any evidence of record," but,
rather, "appears to be a prohibited hindsight attempt to reconstruct the art to
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meet [Appellants'] claims." 3 Appeal Br. 9. Appellants note that "[n]either
Gross nor Legge teach or suggest that bees entering through an exit would
cause adverse 'contamination' of the biocontrol agent or that such should be
prevented." Id. According to Appellants, "preventing contamination of the
biocontrol agent appears to be a motivation artificially created by the
Examiner." Id.
The Examiner responds by pointing out that "there is no requirement
that the prior art itself expressly teach the motivation." Ans. 6. The
Examiner finds that "it is a well-known, established fact that particulates
( e.g., pollen, dust particles, and other particulates in the air) that have
accumulated on bees' bodies will fall off as the bees travel; a bee that travels
further will retain fewer of those particulates on its body, than a bee that
travels a lesser distance." Ans. 7. The Examiner reasons that a bee that
enters via arrival pathway 12, then ascends inclined walkway 75 and passes
through opening 68 toward the hive body before passing through galvanized
tray 48 containing the biocontrol agent and powdered carrier (see Gross
4:24--47; Fig. 2a), would have fewer particulates on its body by the time it
reaches tray 48 than a bee that would otherwise enter the hive through exit
45. See Ans. 7. According to the Examiner, "[t]hese particulates would be
'cleaned off,' as noted by Appellants, at least by virtue of the bee traveling a
longer distance to reach the biocontrol agent." Id.
The Examiner is correct that a determination of obviousness does not
require that the prior art itself expressly teach the motivation to combine
3 See Spec. 4:8-11 (disclosing that Appellants' invention "assures a
unidirectional exit passage of the bees through the dispenser, thereby
preventing bees from entering through the exit (i.e., from entering through
the dispenser)").
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teachings of references. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007) (stating that "[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents"); see id. at 418 (stating, "the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for [the PTO] can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ").
However, a conclusion of obviousness must be supported by explicit
findings and analysis establishing an apparent reason to combine the known
elements in the manner required in the claim at issue. Id.
Appellants do not specifically dispute either the Examiner's finding
that it is well-known that particulates, such as pollen, dust, and other
particulates, that accumulate on the bodies of bees will fall off as a bee
travels or that a bee that enters the hive via arrival pathway 12, inclined
walkway 75, and opening 68 would have fewer particulates on its body by
the time it reaches tray 48 than a bee that would otherwise enter the hive
through exit 45. See Reply Br. 5. However, Appellants "submit that this
record contains no factual evidence as to why contamination with these
types of particulates should be prevented and why the skilled person would
be motivated to provide for this." Id. Appellants further contend that
"[t]here would seem to be no negative effects if some pollen or dust ...
contacted the biocontrol agent as biocontrol agents would not be normally
inactivated when contacted with pollen or dust." Id.
We agree with Appellants that the Examiner's articulated rationale
that it would have been obvious to add unidirectional gating as taught by
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Legge to exit 45 of Gross is not supported by the requisite factual findings.
Rather, the Examiner's rationale appears to be derived from impermissible
hindsight. Even assuming the Examiner is correct that a bee that enters the
hive via arrival pathway 12 would have fewer particulates on its body by the
time it reaches tray 48 than a bee that enters the hive through exit 45, the
Examiner does not direct our attention to any evidence in the record
indicating that persons of ordinary skill in the art would have recognized
such particulates to be problematic if they contacted the biocontrol agent in
tray 48. Further, the Examiner provides no evidence that persons of ordinary
skill in the art would have been prompted to take measures to prevent such
contact.
Appellants argue that the Examiner's second articulated rationale
(improving the efficiency of the hive) "also appears to be an artificially
created motivation." Appeal Br. 10. According to Appellants, Gross does
not discuss hive efficiency, and Legge discusses increasing efficiency of the
hive only in the context of "increasing efficiency of hive bees by coating the
bees with pollen, i.e., increasing pollinating efficiency." Id. (citing Legge
2: 11-17; 4:94--97). Moreover, Appellants argue that "Legge teaches away
from using its unidirectional exit for improving the efficiency of the hive."
Id. Appellants add that Gross teaches away from the proposed modification
by describing Legge's device as having "the disadvantage of possible loss of
pollen prior to the bees exiting the hive." Id. In particular, Appellants
submit that Legge' s unidirectional exit gating devices would brush off the
biocontrol agent from the bodies of the bees, and that contrary to the
Examiner's position, Legge teaches that its exit gating devices should not be
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used when using a dispenser, in order "to avoid pollen being removed [ from
the legs] by the springs" of the gates. Id. at 11-12 (brackets in original).
In response, the Examiner finds that it is well-known that "creating a
one-way pathway decreases the amount of time required to traverse that
pathway, at least because occupants are not running into each other or
dodging other oncoming occupants," thereby improving the efficiency of the
hive. Ans. 7. The Examiner also finds that it is "well-known in the art of
beekeeping that bees tend to try to cluster if not prevented from doing so,
and that one-way paths are desirable to improve efficiency of a hive by
creating an efficient flow of bees into, and out of, the hive." Id. (citing
Gross 4:34--41 as "disclosing a desire to prevent two-way traveling of the
bees").
The passage of Gross cited by the Examiner as disclosing a desire to
prevent two-way travel is directed, in particular, to discouraging bees from
exiting through opening 68 and arrival pathway 12, thus bypassing tray 48,
which contains the biocontrol agent. See Gross 4:34--45. This passage does
not specifically address discouraging two-way travel of bees through
opening 45. We do note, however, that Legge evidences a recognition in the
art of the desirability of having bees travel one-way through hives via
dedicated entrances and exits, in order to avoid incoming bees interfering
with outgoing bees. See Legge 2:66-78. Thus, although not relied on by the
Examiner, this portion of Legge' s disclosure does generally support the
Examiner's finding that it was well known that one-way travel through
dedicated entrances and exits into and out of hives is desirable to create an
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efficient flow of bees into and out of the hive. 4 Moreover, Gross identifies
as an object of the invention disclosed therein "to provide a simple structure
which is adapted to a conventional commercial hive, providing separate
ingress and egress pathways for honeybees wherein the biocontrol agent to
be disseminated is located in the egress pathway just behind the exit opening
of the beehive." Gross 2: 10-15 ( emphasis added).
Further, Legge discloses first gating means 14, which permit bees to
enter the hive and impede travel out of the hive, and second gating means
15, which permit bees to exit the hive and impede travel into the hive. Id. at
2:40-50; Figs. 3, 4. Each of these gating means comprises a set of gates 16
that permit the bee to pass between two light springs 18 and 19 of each gate,
but passage of a bee in the reverse direction is impeded by these springs. Id.
at 2:40-46. Legge discloses a modified gate arrangement in which springs
18 and 19 are replaced with a single spring 38. See id. at 3:122-126; Figs.
12, 13.
However, Legge also teaches that it is not desirable, and not
necessary, to provide such gates at the exit of a pollen dispenser positioned
at the exit of a hive because of the possible removal of pollen by the springs
of such gates. Id. at 2:80-89. In fact, when such gates are provided on a
hive to which a pollen dispenser will at some point be positioned, Legge
teaches completely blocking all exit gates other than those opening into the
pollen dispenser, and fully opening the exit gates opening into the pollen
dispenser so that they do not impede passage in either direction. See id. at
4 Equally notable, however, is Legg's disclosure that this desired one-way
travel can be achieved by training bees to respond to different colored and
shaped markings over the exit and entrance regions, thereby obviating the
need for one-way gates. See Legge 2:66-89.
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4:31-78; Figs. 14--16. More specifically, Legge teaches welding side plate
48 to each side of casing 29 of dispenser 46 "to blank off all the exit gates
other than those opening into the pollen dispenser 46." Id. at 4:41--45; Fig.
14. Legge also teaches slidably mounting a device comprising metal plate
49 on top of exit gating means 15, and sliding metal plate 49 to the right (as
shown in Figures 15 and 16) when pollen dispenser 46 is attached, to move
and hold springs 38 of gates 16 to the right to leave gates 16 entirely open
"to ensure that there is no impedance to the exit of bees through the pollen
dispenser 46 when this is in place." See id. at 4:56-78. Legge teaches that
"[t]he fact that all the outgoing bees are channelled through the lesser
opening of the dispenser ... makes it unlikely that any bee attempting to
enter the hive by way of the dispenser 46 will succeed." Id. at 4:78-84.
The Examiner insists that "[ t ]he Office is only relying on Legge for
the teachings of a unidirectional exit structure and to show that the
unidirectional exit claimed by Appellants is well-known in the art" and that
"[t]he Office does not purport to modify Gross with the teaching of anything
beyond a unidirectional exit." Ans. 9. However, "[i]t is impermissible
within the framework of section 103 to pick and choose from any one
reference only so much of it as will support a given position, to the exclusion
of other parts necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art." In re Wesslau, 353 F.2d 238,
241 (CCPA 1965) (cited with approval in Bausch & Lomb, Inc. v. Barnes
Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)).
Similar to the operation of the pollen dispenser of Legge, "[a]s bees
move through the biocontrol agent applicator tray [ of Gross], their legs,
underbodies, and in some instances their entire bodies, become surface-
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contaminated with the biocontrol agent formulation." Gross 4:60-64. "As
bees forage for nectar or pollen, some of the biocontrol agent is dislodged
and is deposited on flowers and foliar surfaces." Id. 4:64--66. Thus, a
person of ordinary skill in the art would evaluate the efficiency of the hive in
the context of the invention of Gross by how much biocontrol agent bees
exiting the hive can deposit on flowers and foliar surfaces. A person having
ordinary skill in the art would readily appreciate from the teachings of Legge
that placing unidirectional exit gates, as disclosed by Legge, at exit 45 of the
Gross device would impede the egress of bees from the device and could
remove some of the biocontrol agent from bees' bodies, both of which
would have a negative effect on the efficiency of the hive.
Moreover, Gross explicitly expresses concern about the "possible loss
of [agent] prior to the bees exiting the hive." Gross 2: 1. Gross seeks to
address this concern by locating "the biocontrol agent to be disseminated ...
in the egress pathway just behind the exit opening of the beehive." Id. 2: 13-
15 ( emphasis added). Placing any additional impediments to the passage of
bees out of the hive after they have picked up the biocontrol agent on their
bodies, especially impediments that could result in loss of agent prior to the
bees exiting the hive, would undermine those efforts.
Further, based on the evidence before us in this appeal, it is not clear
that providing unidirectional exit gating at exit 45 of Gross would provide
any benefit with respect to creating efficient flow of bees into and out of the
hive, as the Examiner posits (Final Act. 3--4; Ans. 7-8). The Examiner finds
that the transparent plexiglass panels ( cover member 41 and baffle 54) along
the departure pathway adjacent the exit from the first chamber of Gross will
allow light into the chamber near the exit, thereby discouraging bees from
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trying to enter the hive at exit 45. Ans. 4--5. By contrast, according to the
Examiner, the chamber below dividing member 36 will be shielded from
sunlight by dividing member 3 6 and will appear darker to bees, who will be
encouraged by the darker color of the lower chamber to enter the hive via
arrival pathway 12 instead. Id. at 4--6; see also Spec. 14:16-20 (disclosing
use of a light transparent door for the exit pathway and an opaque ( dark)
material for the entrance door); id. at 18:4--5 (disclosing that "bees looking
to exit are responsive to light entering the hive"). Moreover, baffle 54 of
Gross, which forces bees exiting the hive via departure pathway 14 to pass
through tray 48, which contains the biocontrol agent, will channel all
outgoing bees through a relatively narrow opening, and, thus, like the "lesser
opening" of Legge's pollen dispenser, should make it unlikely that any bee
attempting to enter the hive by way of exit 45 of Gross will be successful.
See Gross 4:42--45; Legge 4:78-84.
Thus, considering the teachings of Gross and Legge in their entirety,
on the basis of the record before us, we agree with Appellants that a person
having ordinary skill in the art would not have been prompted to provide a
unidirectional gating means as taught by Legge at exit 45 of Gross, either to
avoid contamination or to improve the efficiency of the hive. Accordingly,
we do not sustain the rejection of independent claim 30, or claims 31, 33, 35,
37-39, and 41-52, which depend from claim 30, as unpatentable over Gross
and Legge.
Rejection II
Root teaches a pivoted awning structure comprising panels 68
pivotally secured in apertures 72 of inclined support standards 7 4 and
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selectively positionable over the exit opening to the hive to deflect incoming
bees from the opening of the hive toward landing platform 30 or to deflect
the outgoing bees to move upwardly. Root 7:35-55. Notably, Root's
pivoted awning structure is not configured to prevent bees from entering the
hive through the exit opening and, further, is not disposed on a beehive-
mounted disseminator device. Thus, the Examiner's reliance on this
teaching in rejecting claim 32 (see Final Act. 8) does not make up for the
deficiency in the combination of Gross and Legge discussed above. Thus,
we also do not sustain the rejection of claim 32 as unpatentable over Gross,
Legge, and Root.
In rejecting claim 36, the Examiner determined it would have been
obvious "to modify Gross as modified by Legge to have means to close the
entrance of the first chamber, as taught by Root, in order to minimize the
size of the entrance during wintertime to maintain heat within the hive."
Final Act. 8-9 (citing Root 9:36-41; Fig. 5 (control elements 104, 110)).
This modification would not cure the aforementioned deficiency in the
combination of Gross and Legge. Accordingly, we do not sustain the
rejection of claim 36 as unpatentable over Gross, Legge, and Root.
DECISION
The Examiner's decision rejecting claims 30-33, 35-39, and 41-52 is
reversed.
REVERSED
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