Ex Parte Eger et al

Patent Trial and Appeal Board

Aug 30, 2016

13839940 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/839,940 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.
14764-226434 6063
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
Appeal2015-000768
Application 13/839,940
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
composite bait material that have been rejected as obvious. 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.)
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Application 13/839,940
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-20 are on appeal. (Claims Appendix, Appeal Br. 17-19.)
Claim 1 is illustrative and reads as follows:
1. A composite bait material operable to be consumed or displaced by
one or more species of termites, the composite bait material comprising a
plurality of cellulosic food material pieces that are palatable to said termite
species embedded within a matrix comprising a termite-edible or termite-
displaceable polyurethane foam.
Examiner's Rejections
1. Claims 1-10 and 12-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rojas,2 Voris, 3 and Bartlett.4 (Ans. 2.)
2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Rojas, Voris, Bartlett, and Barber. 5 (Id. at 7.)
Appellants argue claims 1-10 and 12-20 as a group. Accordingly, we
limit our consideration of Rejection No. 1 to claim 1.
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.
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.)
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 Bartlett et al., US 4,927,863, issued May 22, 1990 ("Bartlett").
5 Barber et al., US 7,212,129 B2, issued May 1, 2007 ("Barber").
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FF 2. Rojas teaches that the bait matrix may be encased in materials
such as polyurethane foams. (Id. at col. 6, 11. 30-40.)
FF 3. Voris teaches the use of insecticide containing pellets that are
incorporated into a polyurethane foam. (Voris col. 9, 11. 47-56.)
FF 4. 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.)
DISCUSSION
Issue: 35 U.S.C. § 103(a)
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Rejection No. 1
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 encase the cellulose matrix in a polyurethane foam and to use the foam as
a carrier material to provide for the controlled release of insecticides. (Ans.
4.) Furthermore, one of ordinary skill in the art would have had a reasonable
expectation of success because Rojas "expressly states that the matrix
materials may be encased in materials such as polyurethane." (Id.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex 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.
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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. (Appeal Br. 3-14.) All of these contentions 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
termites. (Id.) We note at the outset, however, that claim 1 recites a
composite bait material for termites, 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 F acie 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 4.) 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
describe the deterrence of termites to an area to achieve termite control."
(Id. at 5.)
We are not persuaded. Rojas teaches the encasement of cellulosic
matrix in polyethylene foam, as recited in claim 1, 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
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use of insecticides to kill termites, or as Appellants acknowledge "to achieve
termite control." (Appeal Br. 5.) 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. 11.)
Accordingly, we find no error in the Examiner's establishment of both a
motivation to combine the teachings of Rojas and Voris, and a reasonable
expectation of success in doing so. See DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. 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. 9.) Moreover, Appellants
argue that the Examiner has made "contradictory statements" in relying
upon Rojas and Voris. (Id. at 10.)
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. 5), and neither
reference criticizes, discredits, or otherwise discourages the claimed
invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Moreover, there is no teaching away because the teaching of Voris that was
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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. 10-14.) 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 13.)
This argument is similar to the "teaching away" argument, and it is
unpersuasive for the reasons stated above. Moreover, even if we were to
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).
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Conclusion ofLaw
A preponderance of evidence of record supports the Examiner's
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 2-10
and 12-20 were not argued separately and fall with claim 1.
Rejection No. 2
The Examiner concluded that claim 11 would have been obvious to a
person of ordinary skill in the art, based on a combination of the teachings of
the cited art. (Ans. 9.) In particular, the Examiner concluded that it would
have been obvious to utilize the housing of Barber for containing the bait
material of Rojas, and that it would have been obvious to utilize a termite
sensing circuit to aid in monitoring of termites since Rojas teaches that the
matrix material can be utilized to monitor termites. (Id.) Accordingly, we
find that the Examiner has established a prima facie case of obviousness as
to claim 11 .
Appellants note that claim 11 depends from claim 1, and rely on the
same arguments as set forth above in connection with the rejection of claim
1. (Appeal Br. 15.) In addition, Appellants argue that Barber does not cure
the deficiencies agued in connection with the rejection of claim 1. (Id.)
Appellants also argue that "the Examiner has not shown that the proposed
modification of Rojas in view of Voris and Bartlett arrives at the claimed
invention." (Reply Br. 9.) Accordingly, for the reasons set forth above, and
because Appellants do not set forth any additional arguments, we affirm the
rejection of claim 11. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011).
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Conclusion ofLaw
A preponderance of evidence of record supports the Examiner's
conclusion that claim 11 is obvious under 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a). Claims
2-10 and 12-20 were not argued separately and fall with claim 1.
We affirm the rejection of claim 11under35 U.S.C. § 103(a).
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
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