Ex Parte Mabey et al

Patent Trials and Appeals Board

Jul 24, 2013

11654486 - (R) (P.T.A.B. Jul. 24, 2013)

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.
11/654,486 01/17/2007 Michael John Mabey FIRE-5U-insect 6562
41324 7590 07/25/2013
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
07/25/2013 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 MICHAEL JOHN MABEY
and
WILLIAM KISH
____________

Appeal 2011-013133
Application 11/654,486
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellants request rehearing of our Decision on Appeal entered
April 1, 2013 (“Decision”), in which we affirmed the Examiner’s rejections
of claims 5-24 in the subject application.1 We have jurisdiction under 35
U.S.C. § 6(b).
We deny the Appellants’ request to modify our Decision.

1 Request for Rehearing filed June 3, 2013 (“Req. Reh’g”).
Appeal 2011-013133
Application 11/654,486

2
Analogous Art
The Appellants appear to be arguing that, in the context of a chemical
invention, the test for whether a reference is analogous must also include a
consideration of the unpredictability in the art. Req. Reh’g 1. This
argument fails because the Appellants point to no persuasive legal authority
supporting this view. The Appellants also fail to direct us to evidence
demonstrating any unpredictability of the claimed subject matter. Moreover,
the Appellants’ argument is not consistent with the notion that even in the
unpredictable arts, only a reasonable expectation of success—not absolute
predictability—is required to establish obviousness. In re O’Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988).
The Appellants contend:
The Board confused statements of utility such as found in
the specification at page 4, lines 5-6, and of introduction to
details of the composition in the specification at page 5, lines 1-
2, with the problems addressed by the inventors, and has
employed such statements as if they constituted problems. This
is material error.
Req. Reh’g 2. According to the Appellants, we overlooked more detailed
disclosures relating to preferred embodiments of the invention disclosed in,
e.g., the second and third paragraphs of page 5 of the Specification. Id. The
Appellants assert that “[n]o applied art falls into the field of the present
invention” and “[n]o applied art addresses the same problems that the
inventors addressed in making their discoveries of inventions, necessarily as
claimed.” Id.
We disagree. In identifying the “problem addressed” prong of the
non-analogous art test, it is inappropriate to limit the problems addressed to
those attributed to the preferred embodiments of the invention. Rather, it is
Appeal 2011-013133
Application 11/654,486

3
appropriate to take into account any problem addressed by any embodiment
falling within the broad scope of the claim. In other words, the number of
pertinent or relevant prior art references would naturally increase with
expanding claim scope. The Specification statements we highlighted at page
6 of our Decision demonstrate the expansiveness of the problems addressed
by the invention.
More importantly, the Appellants’ arguments based on non-analogous
art are inconsistent with binding precedent of the Supreme Court of the
United States. The Supreme Court stated that it is error to foreclose an
obviousness analysis “by holding that . . . patent examiners should look only
to the problem the [applicants were] trying to solve.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). Instead, the Court observed that
“the problem motivating the [applicants] may be only one of many
addressed by the [application’s] subject matter.” Id. The Court then
explained:
The question is not whether the combination was obvious
to the patentee but whether the combination was obvious to a
person with ordinary skill in the art. Under the correct analysis,
any need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.
Id.; see also In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed.
Cir. 2007) (quoting from and applying KSR, 550 U.S. at 420); Ex parte
Talkowski, 2013 WL 3327156 *8-*11 (Patent Tr. & App. Bd. May 22, 2013)
(informative).

Appeal 2011-013133
Application 11/654,486

4
Double Patenting
The Appellants argue that the Examiner impermissibly used both the
claims and the supporting disclosure of the conflicting Mabey patent. Req.
Reh’g 4. The Appellants, however, do not identify what specific teachings
in the supporting disclosure but not in the claims of the conflicting patent are
required to support the double patenting rejection. Thus, to the extent the
Examiner might have also referred to the patent’s disclosure other than the
claims, it constitutes harmless error because the claims of the conflicting
patent support the Examiner’s rejection.

Summary
While we have reconsidered our original Decision in light of the
Appellants’ arguments, we decline to modify our affirmance of the
Examiner’s rejections of claims 5-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED

tc