Ex Parte WebsterDownload PDFPatent Trial and Appeal BoardSep 15, 201712516226 (P.T.A.B. Sep. 15, 2017) 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. 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. 2 Appeal 2017-003616 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 3 Appeal 2017-003616 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 4 Appeal 2017-003616 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 5 Appeal 2017-003616 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. 6 Appeal 2017-003616 Application 12/516,226 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 7 Copy with citationCopy as parenthetical citation