Ex parte MASON et al.

Board of Patent Appeals and Interferences

Mar 30, 1998

07490760 (B.P.A.I. Mar. 30, 1998)

Application for patent filed March 8, 1990. According to appellants, this application is a1
continuation-in-part of Application 07/394,932, filed August 17, 1989, now abandoned; which is
a continuation-in-part of Application 07/351,841, filed May 12, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES R. MASON,
RICHARD A. DOLBEER
and GEORGE PRETI
_____________
Appeal No. 94-0291
Application 07/490,7601
______________
ON BRIEF
_______________
Before METZ, GRON and ELLIS , Administrative Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, 4 through 12, 19 through 23, and
50 through 52, all the claims pending in the application.
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
1. A method of repelling carnivorous or omnivorous animals selected from the group
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Application 07/490,760
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consisting of domestic cats, rodents, raccoons and canids comprising applying to the locus from
which said animals are to be repelled an effective repellent amount of one or more volatile
compounds selected from the group consisting of pulegone and piperitone.
The references relied on by the examiner are:
Freeman 3,474,176 Oct. 21, 1969
Inazuka, Chemical Abstracts, Vol. 100, p. 196, Abstract No. 116461p (1984).
Claims 1, 2, 4 through 12, 19 through 23, and 50 through 52 stand rejected under 35
U.S.C. § 103 as being unpatentable over Freeman alone or in view of Inazuka.
We reverse both rejections primarily for the reasons set forth in the appellants’ Brief
(Paper No. 14) and Reply Brief (Paper No. 16). In addition, we remand this case to the
examiner for further consideration of the scope of the claims.
The subject matter on appeal, as set forth in claim 1 above, is directed to a method of
repelling animals using pulegone and/or piperitone. According to the specification, pulegone and
piperitone are volatile compounds which exhibit a mint-like odor. Specification, p. 1, para. 2.
The examiner’s first rejection is predicated solely on the teachings of Freeman, a
reference which discloses a method of repelling carnivorous animals such as bears, wolves,
coyotes, etc. and small animals such as rats, mice and squirrels. The method involves the use of a
repellent comprising a carrier and an aliphatic or alicyclic ketone containing from about 6 to about
20 carbon atoms, wherein said ketones can be saturated or unsaturated aliphatic or alicylcic
materials. Freeman, col. 1, lines 13-18, and col. 2, lines 4-8. The preferred ketones are ethylbutyl
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ketone, methylisoamyl ketone, 4-t-amylcyclohexanone and methylnonyl ketone. Id., col. 2, lines
16-20.
The examiner points out that Freeman teaches that compositions containing alicyclic
ketones of 6-20 carbon atoms are effective for repelling animals. From this teaching the examiner
concludes that
[i]t would have been obvious to one of ordinary skill in the art to substitute piperitone and
pulegone, alicyclic ketones of 10 carbons each, for the animal repellents of Freeman which
teaches similar alicyclic ketones for use as animal repellents with a high expectation that
said materials would function as suggested by Freeman, i.e. as repellents [Answer, p. 3].
We disagree. As developed in the Brief, there are significant structural differences
between pulegone and piperitone and the ketones disclosed by Freeman. For example, we direct
attention to the structural comparisons set forth on pp. 4-5 of the Brief. On this record, we do
not find that the examiner has even begun to establish that, based on the teachings of Freeman,
one of ordinary skill in the art would have found it obvious to select the claimed compounds for
use in repelling animals. Rather, we only find sweeping statements by the examiner, such as
“[p]iperitone and pulegone clearly fall within the scope or general subject matter of those
compounds disclosed by the reference [Freeman].” Answer, p. 4, lines 11-12. See also, the
supplemental Answer, para. bridging pp. 1-2. Such statements do not indicate the motivation, if
there is any, for a person having ordinary skill in the art to use pulegone and piperitone to repell
mammals. Here, the only teaching we find that ties the claimed method of using pulegone and
piperitone to the teachings of Freeman, is the appellants’ disclosure. Thus, in our opinion, the
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examiner has relied on “hindsight” to arrive at the conclusion the claimed method would have
been obvious over the applied prior art. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992); Interconnect Planning Corp v. Feil, 774 F.2d 1132, 1138, 227 USPQ
543, 547 (Fed. Cir. 1985).
The examiner also urges that the claimed method would have been obvious to one of
ordinary skill in the art over the combined teachings of Freeman and Inazuka. Inazuka is an
abstract which discloses that pulegone was found to be useful in repelling German cockroaches by
test tube and beaker methods. According to the examiner
[t]he compounds of Freeman and Inazuka are both alicyclic ketones and would have been
expected to possess similar repellent characteristics relative to mammals. Similarly, the
formulation of compositions for this purpose would have been obvious from the disclosure
of the Freeman reference [Answer, p. 3].
Here, we acknowledge that Inazuka discloses the repellent properties of pulegone with
respect to German cockroaches, however, we disagree with the examiner’s reasoning in reaching
her conclusion of obviousness. We find no teaching or suggestion in the combined teachings of
the applied prior art, and none has been pointed out by the examiner, which supports her
conclusion that the use of pulegone as a repellent for mammals “would have been obvious from
the disclosure of the Freeman reference.” Answer, p. 3. Accordingly, we find that the examiner
has not provided a sufficient basis for concluding that the claimed method would have been prima
facie obvious to one of ordinary skill in the art at the time the application was filed. A conclusion
of obviousness must be based on fact(s) and not unsupported generalities. In re Freed, 425 F.2d
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785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967).
Accordingly, the rejections over the applied prior art are reversed.
REMAND
Upon return of this application the examiner is instructed to reconsider the scope of the
claimed invention. That is, the claimed method requires the application of pulegone and/or
piperitone to a locus. In some instances, the locus is defined as being a trash receptacle (claims
19 and 22) or a poison (claims 20 and 21), however, it does not appear that one of the claims is
limited to a locus which requires the presence of any particular animal type. Thus, the examiner
should consider whether (i) the claims are actually limited to a method of repelling “carnivorous
or omnivorous animals selected from the group consisting of domestic cats, rodents, raccoons and
canids,” or (ii) the claims encompass the application of pulegone and/or piperitone to a locus for
the purpose of repelling any animal or insect, such as cockroaches, wherein such application
would inherently result in the repulsion of any cats, rodents, raccoons, and canids which happen
to pass in the vicinity of said locus. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable”) .
In the event the examiner determines that the latter of the two aforementioned
interpretations of the claims is reasonable, then the examiner should consider whether the
teachings of the Inazuka abstract, or other prior art teachings as to the use of the claimed
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compounds as animal or insect repellents, anticipates or would have rendered the claimed method
obvious to one of ordinary skill in the art. That is, would teachings of the use of pulegone to
repell German cockroaches by the test tube and beaker methods as described by Inazuka have
suggested the claimed method of applying pulegone and/or piperitone to any locus, or to a trash
receptacle or a poison such as antifreeze, or placed said method in the possession of the public.
REVERSED AND REMANDED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOAN ELLIS )
Administrative Patent Judge )
Appeal No. 94-0291
Application 07/490,760
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DIANNE B. ELDERKIN
WOODCOCK, WASHBURN, KURTZ,
MACKIEWICZ & NORRIS
ONE LIBERTY PLACE
46th FLR.
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