10686815 (B.P.A.I. Jun. 11, 2012)

Ex Parte Durand et al

Board of Patent Appeals and InterferencesJun 11, 2012

10686815 (B.P.A.I. Jun. 11, 2012)

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. 10/686,815 10/17/2003 Emma A. Durand 009554-0306194 8788 136 7590 06/11/2012 JACOBSON HOLMAN PLLC 400 SEVENTH STREET N.W. SUITE 600 WASHINGTON, DC 20004 EXAMINER POON, PETER M ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 06/11/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte EMMA A. DURAND and MICHAEL J. PALOMBO ____________________ Appeal 2010-005227 Application 10/686,815 Technology Center 3600 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and PATRICK R. SCANLON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005227 Application 10/686,815 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 42. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a system for trapping flying insects and a method for making the same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A device for attracting and capturing flying insects, the device comprising: a frame providing at least one outlet opening and at least one inlet opening, each of the outlet and inlet openings being communicated to a surrounding atmosphere; an insect trap chamber communicated to the surrounding atmosphere through the at least one inlet opening; a supply of a diffusible insect attractant; at least one airflow generator operable to generate (a) an outflow flowing outwardly to the surrounding atmosphere through the at least one outlet opening, the outflow consisting essentially of ambient air from the surrounding atmosphere with the insect attractant diffused therein from the supply and (b) an inflow flowing inwardly from the surrounding atmosphere through the at least one inlet opening and then into the insect trap chamber, thereby enabling the inflow to draw insects attracted to the device by the insect attractant diffused in the outflow into the insect trap chamber; an attractant receptacle in which the supply of diffusible insect attractant is received, the attractant receptacle being positioned such that the outflow flows through the receptacle for exposure to the insect attractant, the attractant receptacle being constructed to enable the insect attractant to be removed therefrom for replacement; and an electrically-powered heater disposed proximate the attractant receptacle, the heater being operable to heat the supply of the diffusible insect attractant in the attractant Appeal 2010-005227 Application 10/686,815 3 receptacle above ambient temperature so as to facilitate diffusion of the insect attractant in the outflow. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wigton Prather US 6,145,243 US 6,443,434 Nov. 14, 2000 Sep. 3, 2002 REJECTIONS Claims 1-31 and 42 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wigton and Prather. Ans. 4. Claims 32-41 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wigton. Ans. 6. OPINION In an effort to distinguish the subject matter of independent claims 1 and 26 from Wigton (discussed in Appellants’ Specification at p. 5, para. 15), which uses combustion to generate a flow of carbon dioxide for attracting mosquitoes and other flying insects, Appellants have defined the outflow as “consisting essentially of ambient air from the surrounding atmosphere.” The Examiner considers the outflow or exhaust of Wigton to consist essentially of ambient air because “ambient air” contains nitrogen, oxygen, carbon dioxide, and many other gases in small amounts such as ozone. The concentration of ozone, for example, can change from day to day and even hour to hour depending sunlight, temperature, and pollutants. In the same manner, carbon dioxide levels can vary from time to time and place to place. The ambient air at the outflow of the Wigton device would resemble ambient air from Appeal 2010-005227 Application 10/686,815 4 near a mammals mouth since there would be more carbon dioxide in the air at this point. Ans. 6. First, we cannot agree with the Examiner that a sample of air taken from near a mammal’s mouth (presumably during or subsequent to exhaling) would be considered by one of ordinary skill in the art as “ambient air.” In any case, the Examiner has not established a correlation between the concentration of such air and that of Wigton’s exhaust. In fact, Wigton provides specific examples for the amount of CO2 introduced into the flow, 300 ml/min to 500 ml/min, and the concentration of CO2 in the exhaust, 500 ppm to 2500 ppm. Col. 2, ll. 6-13. Even using the smallest value in this range, 500 ppm, based on Wigton’s filing date, it can be readily estimated1 that Wigton’s device increases the CO2 concentration of ambient air by at least about 37%. As Appellants correctly point out (App. Br. 9-10), “consisting essentially of” is a term of art in claim drafting meaning “open only for the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition.” Ex parte Davis, 80 USPQ 448, 450 (BPAI 1948). We cannot agree with the Examiner that Wigton’s exhaust flow, which is steadily and purposefully augmented with CO2 at a rate of 300 ml/min to 500 ml/min to cause at least about a 37% increase in the concentration thereof, thereby making it attractive to insects, would be considered by one of ordinary skill in the art as “consisting essentially of ambient air” since adding CO2 in such concentrations materially affects the basic and novel characteristics of the air. Prather, as applied by the Examiner does not cure this deficiency. Accordingly, we are 1 Using data retrieved from ftp://ftp.cmdl.noaa.gov/ccg/co2/trends/co2_annmean_gl.txt. Appeal 2010-005227 Application 10/686,815 5 constrained to reverse the Examiner’s rejection of claims 1 and 26 along with the rejection of those claims depending therefrom. Regarding the limitation of independent claim 32, “the attractant receptacle having at least one adjustable opening,” the Examiner does not allege this feature is shown in any cited prior art. Rather the Examiner contends “it would have been obvious to employ an adjustable opening to change the amount of attractant released to suit different operating conditions such as wind and temperature”, citing only In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954) for support of this determination. Ans. 6. The evidentiary situation in Stevens is easily distinguishable from the case before us. In Stevens, the Examiner, as here, cited a reference disclosing the basic device claimed but without a specific type of adjustment capability. Id. at 197-8. However, in Stevens, the Examiner additionally cited two references demonstrating that it was known in the art that such adjustment capability was desirable. Id. at 198. The Examiner in Stevens also cited two more references demonstrating that a specific structure that could effectuate such an adjustment was also known in the art. Id. Here, the Examiner appears to be extracting a rule from Stevens that claimed subject matter that differs from the prior art in terms of some type of adjustability is per se obvious. Our reviewing court has cautioned: The use of per se rules, while undoubtedly less laborious than a searching comparison of the claimed invention ‑‑ including all its limitations ‑‑ with the teachings of the prior art, flouts section 103 and the fundamental case law applying it. Per se rules that eliminate the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board. Indeed, they have been sanctioned by the Board as well. But reliance on per se rules of Appeal 2010-005227 Application 10/686,815 6 obviousness is legally incorrect and must cease. Any such administrative convenience is simply inconsistent with section 103, which, according to Graham and its progeny, entitles an applicant to issuance of an otherwise proper patent unless the PTO establishes that the invention as claimed in the application is obvious over cited prior art, based on the specific comparison of that prior art with claim limitations. We once again hold today that our precedents do not establish any per se rules of obviousness, just as those precedents themselves expressly declined to create such rules. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor [the United States Court of Appeals for the Federal Circuit] is capable of reviewing that determination.” In re Vaidyanathan, 96 USPQ2d 1507 (Fed. Cir. 2010)(nonprecedential)(citing KSR and In re Kahn, supra). Since the Examiner has not established with facts or reasoning why the claimed subject matter would have been obvious to one of ordinary skill in the art, we are constrained to reverse the Examiner’s rejection of claim 32 and of those claims depending therefrom. DECISION The Examiner’s rejections are reversed. REVERSED mls