Ex Parte Eger et al

Patent Trial and Appeal Board

Aug 30, 2016

13840619 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/840,619 03/15/2013 Joseph Edward Eger JR.
107540 7590 09/01/2016
Barnes & Thornburg LLP (Dow)
11 South Meridian Street
Indianapolis, IN 46204
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.
14764R-226435 1020
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH EDWARD EGER JR., DONALD E. WILLIAMS III,
SOL M. MIRASOL, MIKE P. TOLLEY, JOSEPH J. DeMARK,
MATTHEW T. MESSENGER, and PHILLIP J. HOWARD 1
Appeal2015-000611
Application 13/840,619
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and TA WEN
CHANG, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a termite
control device. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Dow AgroSciences,
LLC. (Appeal Br. 2.)
Appeal 2015-000611
Application 13/840,619
STATEMENT OF THE CASE
Claims on Appeal
Claims 131-151 are on appeal. (Claims Appendix, Appeal Br. 21-
23.) Claim 131 is illustrative and reads as follows:
131. An above ground termite control device, comprising: a housing
configured to hold a composite bait material; and a composite bait material
contained within said housing, the composite bait material including a
plurality of cellulosic food material pieces operable to be consumed or
displaced by one or more species of termite and a termite edible or termite-
displaceable polyurethane foam matrix surrounding at least some of the
cellulosic food material pieces; wherein the polyurethane foam defines an
internal network of channels opening through pores on the surface of the
polyurethane foam; and wherein the polyurethane foam is effective to hold
moisture in the channels to keep the food material pieces moist for an
extended period of time.
(Id. at 21.)
Examiner's Rejection
Claims 131-151 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rojas, 2 Voris, 3 and Thomson. 4 (Ans. 2.)
Appellants state that they "will argue this ground of rejection as a
single claim group (claims 131-151)." (Appeal Br. 5.) Accordingly, we
limit our consideration to claim 131. See 37 C.F.R. § 41.37(c)(l)(iv).
FINDINGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
2 Rojas et al., US 6,585,991 Bl, issued July 1, 2003 ("Rojas").
3 Voris et al., US 5,801,194, issued Sept. 1, 1998 ("Voris").
4 Thomson, US 2002/0018884 Al, published Feb. 14, 2002 ("Thomson").
2
Appeal 2015-000611
Application 13/840,619
FF 1. Rojas teaches a bait matrix for termites that comprises
cellulose, water, and termite-preferred nutrients, and can be used to deliver
termite toxins to termites. (Rojas col. 3, 11. 6-13.)
FF 2. Rojas teaches that the bait matrix must be moist. (Id. at col. 5,
11. 10-15.)
FF 3. Rojas teaches that the bait matrix may be encased in materials
such as polyurethane foams. (Id. at col. 6, 11. 30-40.)
FF 4. The Examiner finds that Rojas teaches that "[t]he matrix
materials can be in containers and delivered via bait stations (i.e. housing)."
(Ans. 3, citing Rojas col. 2, 11. 42--47 .)
FF 5. Voris teaches the use of insecticide containing pellets that are
incorporated into a polyurethane foam. (Voris col. 9, 11. 47-56.)
FF 6. Voris teaches "the controlled release of insecticide which lasts
for a predetermined period of time" and that the insecticides kill or repel
termites. (Id. at col. 2, 11. 65----67; col. 5, 11. 33-35.)
FF 7. Thomson teaches an open-cell polyurethane foam that absorbs
water readily and in which additives, such as pesticides (including controlled
release pesticides), may be incorporated. (Thomson i-fi-1 60, 14 7, and 15 3.)
FF 8. Thomson teaches the preparation of lobster bait in which
attractants (e.g., ground herring) are combined with hydrophilic
polyurethane to form an emulsion which is massaged into reticulated foam.
(Id. i-fi-1217-218.) The baits thus prepared are then allowed to cure and then
cut into bait samples. (Id. i1219.) In one comparative test, ground herring
impregnated in the composite "was nearly 50% more effective than standard
herring bait." (Id.)
3
Appeal 2015-000611
Application 13/840,619
DISCUSSION
Issue: 35 US.C. § 103(a)
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention, based on the cited art,
to "place the cellulosic particles [in] a container and then encase the
cellulosic particles by placing the polyurethane into the bait enclosure and
then curing the polyurethane." (Ans. 5.) Furthermore, the Examiner finds,
one of ordinary skill in the art would have been motivated to do so because
Rojas "teach[ es] encasement of the cellulosic particles with polyurethane,"
and Thomson teaches "bait materials wherein the bait [comprises]
entrapment of an additive such as a pesticide in a polyurethane foam []
created by mixing the two (polyurethane and additive)." (Id.) The
Examiner also concludes that it would have been obvious to one of ordinary
skill in the art "to maintain a moist environment in order to make the bait
more attractive to termites" and, because Rojas and Voris "suggest the same
polyurethane foam as claimed, [the matrix] would be expected to be
effective in holding this moist environment." (Id.) In addition, the
Examiner contends, one of ordinary skill in the art "would have been
motivated to utilize an open-cell polyurethane as taught by Thomson in
order to keep the cellulosic particles moist as open-cell polyurethane absorbs
water readily as taught by Thomson." (Id.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
4
Appeal 2015-000611
Application 13/840,619
conclusion of obviousness." KSR Int? Co. v. Telejlex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
Appellants contend that (1) a prima facie case of obviousness has not
been established, (2) the teachings of Rojas and Voris teach away from their
combination, and (3) the proposed modification of Rojas according to the
teachings of Voris would render Rojas unsatisfactory for its intended
purpose, and (4) that Thomson is non-analogous art. (Appeal Br. 5-20.)
Contentions (1 }-(3) are based on the same argument; namely, that the bait
matrix taught by Rojas is used to attract termites and the foam containing
insecticide of Voris is used to deter or repel termites. (Id. at 5-16.) We note
at the outset, however, that claim 131 recites a termite control device, not a
method for killing termites via attraction or deterrence. Moreover, the
deterrence taught by Voris is "deterring insects ... from entering wooden
objects," not deterrence from an exclusion zone or insecticide in the
exclusion zone. (Voris col. 1, 11. 20-22.)
Prima Facie Case
Appellants contend that a person of ordinary skill would not have
been motivated to modify Rojas according to the teachings of Voris, and
would not have had a reasonable expectation of success if Rojas was
modified according to the teachings of Voris. (Id. at 6.) According to
Appellants, "[a] person of ordinary skill would have no reason whatsoever to
combine the teachings of Rojas, which describe the attraction of termites to
a matrix to achieve termite control, with the teachings of Voris, which
5
Appeal 2015-000611
Application 13/840,619
describe the deterrence of tennites to an area to achieve termite control."
(Id. at 7.)
We are not persuaded. Rojas teaches the encasement (surrounding) of
cellulosic matrix in polyethylene foam, as recited in claim 131, and as the
Examiner makes clear, Voris is cited because Rojas "does not exemplify this
encasement." (Ans. 3.) Moreover, both Rojas and Voris are directed to the
use of insecticides to kill termites, or as Appellants acknowledge, "to
achieve termite control." (Appeal Br. 7.) We thus agree with the
Examiner's statement that it would have been obvious to combine the
teachings of Rojas and Voris "and attract the termites to the device ... and
then kill the termites ... [t]his isn't an incredulous statement but exactly
what Rojas []is designed to do and would still be expected to do if
combined with Voris." (Ans. 9--10.) Accordingly, we find no error in the
Examiner's establishment of both a motivation to combine the teaching of
Rojas and Voris, and a reasonable expectation of success in doing so. See
DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006) (evaluating suggestion or motivation in an
obviousness analysis "not only permits, but requires, consideration of
common knowledge and common sense"); see also KSR, 550 U.S. at 421
("A person of ordinary skill is also a person of ordinary creativity, not an
automaton.").
Teaching Away
Appellants argue that a person of ordinary skill in the art "would not
have combined [the] divergent teachings of Rojas (attraction of termites)
and Voris (deterrence of termites)." (Appeal Br. 11.) Moreover,
6
Appeal 2015-000611
Application 13/840,619
Appellants argue that the Examiner has made "contradictory statements" in
relying upon Rojas and Voris. (Id. at 12.)
We are not persuaded. As noted above, Rojas and Voris are both
directed to the use of insecticides to kill termites, or as Appellants
acknowledge "to achieve termite control" (Appeal Br. 7), and neither
reference criticizes, discredits, or otherwise discourages the claimed
invention. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
Moreover, there is no teaching away because the teaching of Voris that was
applied by the Examiner in the combination was the exemplification of the
polyethylene foam encasement and not any teaching that Appellants contend
is a "teaching away." (Ans. 3.) See Allied Erecting and Dismantling Co.,
Inc. v. Genesis Attachments, LLC, 2016 WL 3344093, *6 (Fed. Cir. June 15,
2016). Accordingly, we find no error in the Examiner's combination of
Rojas and Voris.
Satisfaction for Intended Purpose
Appellants argue that the modification of Rojas according to the
teachings of Voris would render Rojas unsatisfactory for its intended
purpose. (Appeal Br. 12-16.) In particular, Appellants argue that
if the bait matrix of Rojas (designed to be an attractant for
termites) was modified according to the exclusion zone taught by
Voris (designed to completely deter and repel termites for a
period of at least 6 years), the bait matrix of Rojas would be
rendered unsatisfactory for its intended purpose as a bait and an
attractant for termites.
(Id. at 15.)
This argument is similar to the "teaching away" argument, and it is
unpersuasive for the reasons stated above. Moreover, even if we were to
7
Appeal 2015-000611
Application 13/840,619
assume that the attraction of termites as taught by Rojas was contrary to the
deterrence of termites as taught by Voris, the adoption of the desirable
property taught by Rojas (attraction) at the expense of foregoing the benefit
taught by Voris (deterrence) would not constitute a teaching away or make
Rojas unsatisfactory or inoperable for its intended purpose. See In re
Urbanski, 809 F.3d 1237, 1243--44 (Fed. Cir. 2016.)
Non-Analogous Art
Appellants argue that Thomson is non-analogous art because it is not
reasonably pertinent to the problem faced by the inventor. (Appeal Br. 17-
18.) In particular, according to Appellants, Example 16 of Thomson "relates
to preparation of an underwater artificial lobster bait" that is "inapposite of
solving the problem of creating an above ground termite control device."5
(Appeal Br. 16-17.) In addition, Appellants argue that "Thomson does not
suggest that the polyurethane foam matrix surrounds the food material
pieces, nor that the polyurethane foam defines an internal network of
channels opening through pores on the surface of the polyurethane foam."
(Id. at 18.) Furthermore, according to Appellants, Thomson teaches "that
water must flow through a controlled release device" whereas Voris teaches
"that water does not flow through a controlled release device." (Id. at 19.)
We are not persuaded by Appellants' arguments. Thomson teaches a
method of encasing pesticides and bait (attractant) in polyurethane foam.
5 For purposes of this appeal and the non-analogous art argument, we need
not decide whether the phrase "above ground," which appears in the
preamble of claim 131 but nowhere else in the claim, limits the claim or is
merely a non-limiting statement of intended use. See, e.g., Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003).
8
Appeal 2015-000611
Application 13/840,619
(FF 7, 8.) As noted by the Examiner, Thomson is also reasonably pertinent
because "it discloses the features of a polyurethane foam that would be
desirable to one of ordinary skill in the art viewing Rojas." (Ans. 12.)
Moreover, the fact that Thomson teaches that the bait was impregnated into
the composite suggests that the foam surrounds at least some of the food
material pieces, and the use of a reticulated foam suggests channels opening
through pores on the surface of the foam. (FF 7, 8.) Appellants' argument
regarding the alleged flow of water is not persuasive because claim 131 does
not recite any limitation regarding water flow. Accordingly, we find that
Thomson is at least reasonably pertinent to the particular problem with
which the inventor is involved.'' See In re Klein, 647 F.3d. 1343, 1348 (Fed.
Cir. 2011) (citing In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 131 is obvious under 35 U.S.C. § 103(a). Claims 132-
151 were not argued separately and fall with claim 131.
SUMMARY
We affirm the rejection of claim 131under35 U.S.C. § 103(a).
Claims 132-151 were not argued separately and fall with claim 131.
TIME PERIOD FOR 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).
AFFIRMED
9