Ex Parte Webster

Patent Trial and Appeal Board

Sep 15, 2017

12516226 (P.T.A.B. Sep. 15, 2017)

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.
12/516,226 05/26/2009 David Webster Webster-16528 6174
25628 7590 09/15/2017
William TT Holt
EXAMINER
Law Offices of William H. Holt HIRT, ERIN E
14584 West Dartmouth Avenue
Lakewood, CO 80228 ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
09/15/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WEBSTER
Appeal 2017-0036161
Application 12/516,226
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims to a compact for insect control consisting
of particles of a first and second wax. The Examiner rejected the claims
under 35 U.S.C. § 103 as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). The § 103 rejection is reversed.
1 The Appeal Brief (“Br.”) (Feb. 2, 2016) 1 identifies Exosect, Limited, as
the real-party-in-interest.
Appeal 2017-003616
Application 12/516,226
STATEMENT OF THE CASE
Claims 25, 29—31, 33, 35, 45, and 48 stand rejected by the Examiner
under 35 U.S.C. § 103(a) as obvious in view of US 2009/0084024 Al, publ.
Apr. 2, 2009 (“Baxter”) as evidenced by WO 03/051112 Al, publ. June 26,
2003 (“Howse”). Final Act. 3.
Claim 25, the only independent claim, is reproduced below:
25. A compact for insect control having a density of from 0.3
to 1 gem'3 consisting of
particles of a first wax,
particles of second wax,
and an active agent selected from the group consisting of
an arthropod pesticide, an arthropod attractant, an arthropod
semiochemical and a mixture of two or more of said group,
the particles of said first wax and particles of said second
wax having been compressed together for forming a friable
solid,
wherein said first wax is camauba wax and said particles
thereof are present in an amount of at least 51 % by weight of
said compact and said particles of said second are present in an
amount of at least 19.5% by weight of said compact.
Br. 26 (Claims Appendix).
OBVIOUSNESS
Claim interpretation
Claim 25 is directed to a compact for insect control “having a density
of from 0.3 to 1 gem'3 that consists of three ingredients, namely “particles
of’ two waxes and an active agent. The claim further requires:
1) the first wax is camauba wax, and is required to be present in the
compact as particles that are at least 51% by weight of the compact; and
2) “particles of a second wax,” though not limited as to its type, is
present as at least 19% by weight of the compact.
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Application 12/516,226
The phrase “consisting of’ limits the scope of the claim to
components 1), 2), and 3), excluding other ingredients.
[I]n patent lexicography . . . [it] is equally well understood . . .
that “consisting of’ is closed-ended and conveys limitation and
exclusion. SeeNorian Corp. v. Stryker Corp., 363 F.3d 1321,
1331 (Fed. Cir. 2004) (“‘consisting of is a term of patent
convention meaning that the claimed invention contains only
what is expressly set forth in the claim ... [however] it does not
limit aspects unrelated to the invention”); In re Gray, 19
C.C.P.A. 745, 53 F.2d 520 (CCPA 1931) (the use of the claim
term “consists” is limited to the claim’s enumerated alloy
metals without other elements, unlike the term “comprising”
which permits the inclusion of other metals than those
claimed”).
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007).
The claim requires that the particles of the first and second wax have
been “compressed together forming a friable solid.” We interpret the term
“friable” to mean “able to be crumbled . . ., for example by hand, and in situ
gives rise to particulates that are picked up by insects as they walk over it.”
Br. 4 ; see Spec. 5:2^4.
Rejection
The Examiner found that Baxter teaches a compact/matrix formed
“by compression” from wax particles made of camauba wax as recited in the
claim. Final Act. 3. The Examiner found that Baxter doesn’t teach that the
compact is friable, but found that
it would be well within the skill of an ordinary artisan to control
the pressure with which the wax compact is compressed in
order to make a friable compact. Especially in light of Baxter’s
teachings at paragraphs 36—37, 39, and 85 that
insects/arthropod can enter the device and encounter the wax
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Application 12/516,226
compact/lure and the pheromone/semiochemical which is on/in
wax particulates and that these particulates can become attached
to the insect (i.e. are triable) and are retained by the insect and
interfere with the males ability to find females and mate.
Id., 4.
The Examiner found the skilled worker would have had reason to
make the compact friable because that
allows for the formation of a more effective compact for
delivering active agents to the pests and/or their locus because .
. . friability of the wax particulate allows for the wax particles
containing the active to stick onto the surface of the pest or
locus to effectively deliver an active agent over a period of time
or carry the active back to the colony/nest or other pests.
Id., 5. To support these findings, the Examiner cited to Baxter, paragraph
37, andHowse atpp. 5,11. 6—11; p. 6,11. 1^4; pg. 8,11. 16—21; pg. 9,11. 22—
28; pg. 19,11. 5-18 & 30; pg. 20,1. 5. Id.
Discussion
The evidence does not support the Examiner’s finding that Baxter
teaches a solid compact formed by compression of particles (Final Act. 3) as
recited in claim 25. Baxter’s paragraph 37, referenced by the Examiner,
describes a dispenser comprising a lure. Baxter teaches that a “solid wax
matrix having the semiochemical dispersed and/or dissolved and/or
encapsulated therein acts as a lure for arthropods.” Baxter 140. The solid
wax matrix preferably comprises camauba wax. Id.,^ 41. Baxter also
teaches particulates. Paragraph 36 of Baxter teaches that a pesticide or
semiochemical “may be dissolved in or located on a particulate.” Baxter
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Application 12/516,226
does not teach that particulates are part of the solid wax matrix or arise from
the wax matrix materials. Rather, Baxter teaches:
In one embodiment of the present invention the target
arthropod, preferably an insect is attracted to a dispenser
containing a lure. Upon entering the dispenser the insect comes
into contact with the sex pheromone of that species and/or
particulates formulated with the sex pheromone of that species.
Id., 137.
Thus, Baxter explains that the lure made of the solid wax matrix is
used to attract insects into the dispenser where they subsequently come in
contact with particulates: “[T]he target insect is attracted to a dispenser
containing a lure. Upon entering the dispenser the insect comes into contact
with particulates formulated with the sex pheromone of that species.” Id.,
| 85. The solid wax matrix is different from the particulates in the solid wax
matrix.
The Examiner did not direct us to a teaching from Baxter which
describes how the particulates are made, let alone a teaching that the solid
wax matrix is made of the particulates. Baxter describes making the matrix
with first and second waxes using steps of “melting, dissolving, absorbing,
adsorbing, or compression.” Id., 127—129. However, there is no
disclosure that such solid matrix is made from particles as required by the
claim (“particles of said first wax and particles of said second wax having
been compressed together for forming a friable solid”). The Examiner erred
in finding that Baxter teaches that the solid matrix consists of particles of
wax.
In addition, the Examiner did not provide adequate reasoning to make
the lure friable such that particulates would crumble from it. As explained
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Application 12/516,226
above, the particulates are independent from the solid matrix. The Examiner
did not adequately explain why one of ordinary skill in the art would have
made the solid matrix of the lure the source of the particulates and whether
there would have been a reasonable expectation of success of doing so.
Howse does not compensate for this deficiency. Howse is drawn to a
pest control material comprising a degradable material in the form of a
matrix. Howse 4:24—30. The Examiner found that “Howse provides
evidence that friable wax compacts are especially effective for delivering
active agents to the pests and/or their locus.” Final Act 10 (emphasis
added). However, as pointed out by Appellant, this finding about wax being
friable is not supported by Howse’s disclosure. Rather, Howse teaches that
friability is conferred by the presence of a degradable material.
Degradation of the degradable material results in release
of the pest control material from an outer surface thereof. This
is advantageous because the pest control material is lost at only
the surface of the degradable material, as it becomes freed
therefrom, for example, from the matrix thereof. . . .
The degradable material may comprise any suitable
material but preferably comprises a photodegradable polymer,
biodegradable polymer, starch-based polymer, hydrolysable
polymer, silicon-based polymer or a micro-porous material, for
example, an aerogel or any combination thereof.
Howse 5: 6—22.
Howse teaches that wax may be present, but the wax is not described
as being the degradable material:
Each pest control device 4 is made by mixing the pest control
material 5 in the form of an electro statically-chargeable
powder, for example, a wax, with the degradable polymer.
Id., 13:1-5.
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Thus, Howse does not teach that the degradable material, itself, is the
wax. Id., 5: 6—30. The Examiner did not establish nor assert that the
degradable material is wax, but instead cited the teaching in Howse, as
reproduced above, of wax mixed with the degradable material. Claim 25, as
explained above, utilizes the term “consisting of’ in its preamble, excluding
anything other than recited first wax particulate, second wax particulate, and
active ingredient, from the scope of the claim. Thus, the degradable material
is excluded from claim 25. The Examiner did not establish that the wax,
alone, when compressed would produce a friable solid as required by claim
25.
Summary
Because the Examiner did not establish the obviousness of claim 25,
we reverse the rejection. Claims 29-31, 33, 35, 45, and 48 depend from
claim 25 and are reversed for the same reason.
REVERSED
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