Ex Parte Lee et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11754994 (B.P.A.I. Mar. 13, 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.
11/754,994 05/29/2007 Albert L. Lee IV 29441.01 8393
22465 7590 03/13/2012
PITTS & LAKE P C
P O BOX 51295
KNOXVILLE, TN 37950-1295
EXAMINER
CONLON, MARISA
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/13/2012 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 ALBERT L. LEE, IV and WILLIAM S. GROH
____________

Appeal 2010-011733
Application 11/754,994
Technology Center 3600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-18 and 23 (App.
Br. 5-6). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a bark control device for use with a dog.
Claims 1 and 13 are representative and are reproduced in “Appendix A” of
Appellants‟ Brief (App. Br. 27 and 29-30).
Appeal 2010-011733
Application 11/754,994

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Claims 1-3, 6-10, and 13-16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by So.
1

Claims 4, 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of So and Mainini.
2

Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over So.
We reverse.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that So teaches the placement of a vibration dampening
material on a bark control device at a location required by Appellants‟
claimed invention?
FACTUAL FINDINGS (FF)
FF 1. So teaches “a dog barking restraining device for applying an impulse
wave to the neck of a dog when the dog barks” (So, col. 1, ll. 6-8).
FF 2. For clarity, we reproduce So‟s figures 2A and 2B below:

1
So, US 5,601,054, issued February 11, 1997.
2
Mainini et al., US 5,927,233, issued July 27, 1999.
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Application 11/754,994

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So‟s “FIG. 2A is a sectional view of the dog barking restraining device” (So,
col. 1, ll. 53-54). So‟s “FIG. 2B is a sectional view of enlarged principal of
„A‟ portion in FIG. 2A” (So, col. 1, ll. 56-57).
FF 3. So‟s device 10 comprises a casing 12, a cover 14, an electrode
housing 38 for accepting and supporting electrodes 26 and 28, and an
electrode cap 40 “made of a resilient material to prevent vibration signals
other than the vibration signal generated by the dog barking from being
transmitted to the vibration signal detecting means 22” that “is integrally
formed at an upper part thereof with an outwardly bent vibration transfer
prevention unit 40a, so that . . . vibration signals other than the vibration
signal generated by the dog barking can be prevented from being transmitted
by way of an electrode support member 37” (So, col. 2, ll. 12-13, 34, 52-60,
and col. 2, l. 62 - col. 3, l. 1).
FF 4. With reference to an annotated version of So‟s figure 2b, reproduced
below, Examiner finds that annotation “a” identifies “a portion of . . . [So‟s]
housing not facing the dog when said housing is carried by the dog” and
annotation “b” identifies “a vibration dampening material forming an outer
surface of at least a portion of . . . [So‟s] housing”:

Appeal 2010-011733
Application 11/754,994

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FF 5. Examiner finds that “[a]s defined by Merriam-Webster Dictionary,
the word „exposed‟ means „open to view; not shielded or protected‟” (Ans.
14).
ANALYSIS
Appellants‟ independent claim 1 requires, inter alia, a “housing
comprising a vibration dampening material forming an outer surface of at
least a portion of said housing not facing the dog when said housing is
carried by the dog” (Claim 1). Examiner finds that So‟s electrode cap 40
meets the foregoing limitation of Appellants‟ claim 1 (Ans. 3-4). We are not
persuaded. So‟s electrode cap 40: (1) is an internal element of So‟s device
not an outer surface and (2) faces the dog when the housing is carried by the
dog (FF 2-3; App. Br. 18; Cf. FF 4). Claims 2, 3, and 6-10 depend directly
from claim 1.
Appellants‟ independent claim 13 requires, inter alia, a “housing
defining a facing area, said facing area being a portion of said housing
adapted to face the dog when said housing is carried by the dog . . . [and] a
vibration dampening material covering a portion of an outer surface of said
housing beyond said facing area” (Claim 13). Examiner finds that So‟s
electrode cap 40 meets the foregoing limitation of Appellants‟ claim 13
(Ans. 6). We are not persuaded. As discussed above, electrode cap 40 is an
internal element of So‟s device and does not cover a portion of an outer
surface of the housing that resides beyond the facing area of the device (FF
2-3; App. Br. 21; Cf. FF 4). Claims 14-16 depend directly from claim 13.
Appellants‟ independent claim 23 requires, inter alia, a “housing
comprising a vibration dampening material on an exposed surface of at least
a portion of said housing” (Claim 23). Examiner finds that So‟s transfer
Appeal 2010-011733
Application 11/754,994

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prevention unit 40a meets the foregoing limitation of Appellants‟ claim 23
(Ans. 6). We are not persuaded. As illustrated in So‟s FIG. 2B, transfer
prevention unit 40a is not on an exposed surface of at least a portion of So‟s
housing, but instead is covered by electrode support member 37 (FF 2-3;
App. Br. 24; Cf. FF 5).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner finding that So teaches the placement of a vibration dampening
material on a bark control device at a location required by Appellants‟
claimed invention. The rejection of claims 1-3, 6-10, and 13-16 under 35
U.S.C. § 102(b) as being anticipated by So is reversed.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s conclusion that So alone, or in combination with Mainini
suggests the placement of a vibration dampening material on a bark control
device at a location required by Appellants‟ claimed invention?
FACTUAL FINDINGS (FF)
FF 6. Examiner relies on So as discussed above (see generally Ans. 8).
FF 7. Examiner finds that So fails to suggest an externally located
vibration probe adapted to make physical contact with the dog (Ans. 8).
FF 8. Examiner relies on Mainini to suggest a bark sensor with a vibration
probe external to the housing and in contact with the dog (id.).
Appeal 2010-011733
Application 11/754,994

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ANALYSIS
Appellants contend that each of the rejected claims depend from either
claim 1 or claim 13 and that So alone, or in combination with Mainini, fails
to suggest the placement of a vibration dampening material on a bark control
device at a location required by Appellants‟ claimed invention. We agree.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner‟s conclusion that So alone, or in combination with Mainini
suggests the placement of a vibration dampening material on a bark control
device at a location required by Appellants‟ claimed invention.
The rejection of claims 4, 5, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of So and Mainini is reversed.
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over So is reversed.

REVERSED

cdc