Ex Parte Put et alDownload PDFPatent Trial and Appeal BoardSep 24, 201813321348 (P.T.A.B. Sep. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/321,348 11/18/2011 Kurt Hans Put 23368 7590 09/26/2018 DINSMORE & SHOHL LLP FIFTH THIRD CENTER, ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402-2023 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. BBTOOOl PA/73012.1 5905 EXAMINER TSANG, LISA L ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): daytonipdocket@dinsmore.com denise.suter@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT HANS PUT, KRIS CYRIEL JOHAN JANS, GUIDO MARIO KAREL MICHEL STERK, GUY SMAGGHE, VEERLE MOMMAERTS, FELIX LEOPOLD WACKERS, and YANN BRUNO LOIC JACQUES Appeal2018-000906 Application 13/3 21,348 Technology Center 3600 Before JENNIFER D. BAHR, LISA M. GUIJT, and BRENT M. DOUGAL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kurt Hans Put et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 30-33, 35-39, and 41-52. 2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Biobest Belgium NV and Vrije Universiteit Brussel as the real parties in interest. Appeal Br. 1. 2 Claims 34 and 40, which are the only other pending claims, have been withdrawn from consideration "due to a prior restriction/election requirement." Appeal Br. 1. Appeal2018-000906 Application 13/3 21,348 THE CLAIMED SUBJECT MATTER Claim 30, reproduced below, is the only independent claim and is illustrative of the claimed subject matter. 30. A hive disseminator device comprising a first chamber comprising side members and a floor member, said first chamber further comprising: - an entrance that allows bees to enter the first chamber; a unidirectional exit that allows bees to exit from the first chamber toward the outside of the hive and prevents bees from entering the first chamber through said exit; and - means to immobilize a substance on the floor member of said first chamber; wherein bees are able to walk on the means to immobilize a substance. REJECTIONS I. Claims 30, 31, 33, 35, 37-39, and 41-52 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gross et al. (US 5,348,511, iss. Sept. 20, 1994, hereinafter "Gross") and Legge (GB 1 470 385, pub. Apr. 14, 1977). II. Claims 32 and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gross, Legge, and Root (US 3,200,419, iss. Aug. 17, 1965). DISCUSSION In rejecting independent claim 30, the Examiner found that Gross discloses a hive disseminator device substantially as claimed, including, in pertinent part, "a first chamber (portion of 10 above 36; see figure 2a)" comprising "an entrance (at 68) that allows bees to enter the first chamber," "an exit ( 45) that allows bees to exit from the first chamber toward the 2 Appeal2018-000906 Application 13/3 21,348 outside of the hive," and "means (galvanized 28 gauge metal; see figure 1 and column 4, lines 42-47) to immobilize a substance on the floor member of the first chamber." Final Act. 3. The Examiner found that "Gross discloses that bees are discouraged from entering the first chamber through the exit (see column 4, lines 34-41 ), but does not expressly disclose that bees are prevented from doing so." Id. The Examiner found that Legge teaches that it is well-known, in a hive disseminator device, "to have an entrance (14) that allows bees to enter the hive and a unidirectional exit (15) that allows bees to exit from the hive toward the outside of the hive and prevents bees from entering the hive through the exit." Id. (citing Legge 2:40-50; Fig. 3). The Examiner determined that it would have been obvious "to modify the exit of Gross to have the unidirectional gating of Legge, in order to prevent contamination of the biocontrol agent of Gross or improve the efficiency of the hive." Id. at 3--4. A dispositive issue raised in this appeal is whether the Examiner erred in determining that it would have been obvious to modify the device of Gross by providing unidirectional gating as taught by Legge at exit 45. See Appeal Br. 6-13. The Examiner articulated two rationales for the proposed modification-namely, "to prevent contamination of the biocontrol agent" and to "improve the efficiency of the hive." Final Act. 3--4. Appellants argue that the Examiner's rationale that the proposed modification would have been obvious to prevent contamination of the biocontrol agent of Gross "is not supported by any evidence of record," but, rather, "appears to be a prohibited hindsight attempt to reconstruct the art to 3 Appeal2018-000906 Application 13/3 21,348 meet [Appellants'] claims." 3 Appeal Br. 9. Appellants note that "[n]either Gross nor Legge teach or suggest that bees entering through an exit would cause adverse 'contamination' of the biocontrol agent or that such should be prevented." Id. According to Appellants, "preventing contamination of the biocontrol agent appears to be a motivation artificially created by the Examiner." Id. The Examiner responds by pointing out that "there is no requirement that the prior art itself expressly teach the motivation." Ans. 6. The Examiner finds that "it is a well-known, established fact that particulates ( e.g., pollen, dust particles, and other particulates in the air) that have accumulated on bees' bodies will fall off as the bees travel; a bee that travels further will retain fewer of those particulates on its body, than a bee that travels a lesser distance." Ans. 7. The Examiner reasons that a bee that enters via arrival pathway 12, then ascends inclined walkway 75 and passes through opening 68 toward the hive body before passing through galvanized tray 48 containing the biocontrol agent and powdered carrier (see Gross 4:24--47; Fig. 2a), would have fewer particulates on its body by the time it reaches tray 48 than a bee that would otherwise enter the hive through exit 45. See Ans. 7. According to the Examiner, "[t]hese particulates would be 'cleaned off,' as noted by Appellants, at least by virtue of the bee traveling a longer distance to reach the biocontrol agent." Id. The Examiner is correct that a determination of obviousness does not require that the prior art itself expressly teach the motivation to combine 3 See Spec. 4:8-11 (disclosing that Appellants' invention "assures a unidirectional exit passage of the bees through the dispenser, thereby preventing bees from entering through the exit (i.e., from entering through the dispenser)"). 4 Appeal2018-000906 Application 13/3 21,348 teachings of references. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (stating that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents"); see id. at 418 (stating, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [the PTO] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). However, a conclusion of obviousness must be supported by explicit findings and analysis establishing an apparent reason to combine the known elements in the manner required in the claim at issue. Id. Appellants do not specifically dispute either the Examiner's finding that it is well-known that particulates, such as pollen, dust, and other particulates, that accumulate on the bodies of bees will fall off as a bee travels or that a bee that enters the hive via arrival pathway 12, inclined walkway 75, and opening 68 would have fewer particulates on its body by the time it reaches tray 48 than a bee that would otherwise enter the hive through exit 45. See Reply Br. 5. However, Appellants "submit that this record contains no factual evidence as to why contamination with these types of particulates should be prevented and why the skilled person would be motivated to provide for this." Id. Appellants further contend that "[t]here would seem to be no negative effects if some pollen or dust ... contacted the biocontrol agent as biocontrol agents would not be normally inactivated when contacted with pollen or dust." Id. We agree with Appellants that the Examiner's articulated rationale that it would have been obvious to add unidirectional gating as taught by 5 Appeal2018-000906 Application 13/3 21,348 Legge to exit 45 of Gross is not supported by the requisite factual findings. Rather, the Examiner's rationale appears to be derived from impermissible hindsight. Even assuming the Examiner is correct that a bee that enters the hive via arrival pathway 12 would have fewer particulates on its body by the time it reaches tray 48 than a bee that enters the hive through exit 45, the Examiner does not direct our attention to any evidence in the record indicating that persons of ordinary skill in the art would have recognized such particulates to be problematic if they contacted the biocontrol agent in tray 48. Further, the Examiner provides no evidence that persons of ordinary skill in the art would have been prompted to take measures to prevent such contact. Appellants argue that the Examiner's second articulated rationale (improving the efficiency of the hive) "also appears to be an artificially created motivation." Appeal Br. 10. According to Appellants, Gross does not discuss hive efficiency, and Legge discusses increasing efficiency of the hive only in the context of "increasing efficiency of hive bees by coating the bees with pollen, i.e., increasing pollinating efficiency." Id. (citing Legge 2: 11-17; 4:94--97). Moreover, Appellants argue that "Legge teaches away from using its unidirectional exit for improving the efficiency of the hive." Id. Appellants add that Gross teaches away from the proposed modification by describing Legge's device as having "the disadvantage of possible loss of pollen prior to the bees exiting the hive." Id. In particular, Appellants submit that Legge' s unidirectional exit gating devices would brush off the biocontrol agent from the bodies of the bees, and that contrary to the Examiner's position, Legge teaches that its exit gating devices should not be 6 Appeal2018-000906 Application 13/3 21,348 used when using a dispenser, in order "to avoid pollen being removed [ from the legs] by the springs" of the gates. Id. at 11-12 (brackets in original). In response, the Examiner finds that it is well-known that "creating a one-way pathway decreases the amount of time required to traverse that pathway, at least because occupants are not running into each other or dodging other oncoming occupants," thereby improving the efficiency of the hive. Ans. 7. The Examiner also finds that it is "well-known in the art of beekeeping that bees tend to try to cluster if not prevented from doing so, and that one-way paths are desirable to improve efficiency of a hive by creating an efficient flow of bees into, and out of, the hive." Id. (citing Gross 4:34--41 as "disclosing a desire to prevent two-way traveling of the bees"). The passage of Gross cited by the Examiner as disclosing a desire to prevent two-way travel is directed, in particular, to discouraging bees from exiting through opening 68 and arrival pathway 12, thus bypassing tray 48, which contains the biocontrol agent. See Gross 4:34--45. This passage does not specifically address discouraging two-way travel of bees through opening 45. We do note, however, that Legge evidences a recognition in the art of the desirability of having bees travel one-way through hives via dedicated entrances and exits, in order to avoid incoming bees interfering with outgoing bees. See Legge 2:66-78. Thus, although not relied on by the Examiner, this portion of Legge' s disclosure does generally support the Examiner's finding that it was well known that one-way travel through dedicated entrances and exits into and out of hives is desirable to create an 7 Appeal2018-000906 Application 13/3 21,348 efficient flow of bees into and out of the hive. 4 Moreover, Gross identifies as an object of the invention disclosed therein "to provide a simple structure which is adapted to a conventional commercial hive, providing separate ingress and egress pathways for honeybees wherein the biocontrol agent to be disseminated is located in the egress pathway just behind the exit opening of the beehive." Gross 2: 10-15 ( emphasis added). Further, Legge discloses first gating means 14, which permit bees to enter the hive and impede travel out of the hive, and second gating means 15, which permit bees to exit the hive and impede travel into the hive. Id. at 2:40-50; Figs. 3, 4. Each of these gating means comprises a set of gates 16 that permit the bee to pass between two light springs 18 and 19 of each gate, but passage of a bee in the reverse direction is impeded by these springs. Id. at 2:40-46. Legge discloses a modified gate arrangement in which springs 18 and 19 are replaced with a single spring 38. See id. at 3:122-126; Figs. 12, 13. However, Legge also teaches that it is not desirable, and not necessary, to provide such gates at the exit of a pollen dispenser positioned at the exit of a hive because of the possible removal of pollen by the springs of such gates. Id. at 2:80-89. In fact, when such gates are provided on a hive to which a pollen dispenser will at some point be positioned, Legge teaches completely blocking all exit gates other than those opening into the pollen dispenser, and fully opening the exit gates opening into the pollen dispenser so that they do not impede passage in either direction. See id. at 4 Equally notable, however, is Legg's disclosure that this desired one-way travel can be achieved by training bees to respond to different colored and shaped markings over the exit and entrance regions, thereby obviating the need for one-way gates. See Legge 2:66-89. 8 Appeal2018-000906 Application 13/3 21,348 4:31-78; Figs. 14--16. More specifically, Legge teaches welding side plate 48 to each side of casing 29 of dispenser 46 "to blank off all the exit gates other than those opening into the pollen dispenser 46." Id. at 4:41--45; Fig. 14. Legge also teaches slidably mounting a device comprising metal plate 49 on top of exit gating means 15, and sliding metal plate 49 to the right (as shown in Figures 15 and 16) when pollen dispenser 46 is attached, to move and hold springs 38 of gates 16 to the right to leave gates 16 entirely open "to ensure that there is no impedance to the exit of bees through the pollen dispenser 46 when this is in place." See id. at 4:56-78. Legge teaches that "[t]he fact that all the outgoing bees are channelled through the lesser opening of the dispenser ... makes it unlikely that any bee attempting to enter the hive by way of the dispenser 46 will succeed." Id. at 4:78-84. The Examiner insists that "[ t ]he Office is only relying on Legge for the teachings of a unidirectional exit structure and to show that the unidirectional exit claimed by Appellants is well-known in the art" and that "[t]he Office does not purport to modify Gross with the teaching of anything beyond a unidirectional exit." Ans. 9. However, "[i]t is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art." In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (cited with approval in Bausch & Lomb, Inc. v. Barnes Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). Similar to the operation of the pollen dispenser of Legge, "[a]s bees move through the biocontrol agent applicator tray [ of Gross], their legs, underbodies, and in some instances their entire bodies, become surface- 9 Appeal2018-000906 Application 13/3 21,348 contaminated with the biocontrol agent formulation." Gross 4:60-64. "As bees forage for nectar or pollen, some of the biocontrol agent is dislodged and is deposited on flowers and foliar surfaces." Id. 4:64--66. Thus, a person of ordinary skill in the art would evaluate the efficiency of the hive in the context of the invention of Gross by how much biocontrol agent bees exiting the hive can deposit on flowers and foliar surfaces. A person having ordinary skill in the art would readily appreciate from the teachings of Legge that placing unidirectional exit gates, as disclosed by Legge, at exit 45 of the Gross device would impede the egress of bees from the device and could remove some of the biocontrol agent from bees' bodies, both of which would have a negative effect on the efficiency of the hive. Moreover, Gross explicitly expresses concern about the "possible loss of [agent] prior to the bees exiting the hive." Gross 2: 1. Gross seeks to address this concern by locating "the biocontrol agent to be disseminated ... in the egress pathway just behind the exit opening of the beehive." Id. 2: 13- 15 ( emphasis added). Placing any additional impediments to the passage of bees out of the hive after they have picked up the biocontrol agent on their bodies, especially impediments that could result in loss of agent prior to the bees exiting the hive, would undermine those efforts. Further, based on the evidence before us in this appeal, it is not clear that providing unidirectional exit gating at exit 45 of Gross would provide any benefit with respect to creating efficient flow of bees into and out of the hive, as the Examiner posits (Final Act. 3--4; Ans. 7-8). The Examiner finds that the transparent plexiglass panels ( cover member 41 and baffle 54) along the departure pathway adjacent the exit from the first chamber of Gross will allow light into the chamber near the exit, thereby discouraging bees from 10 Appeal2018-000906 Application 13/3 21,348 trying to enter the hive at exit 45. Ans. 4--5. By contrast, according to the Examiner, the chamber below dividing member 36 will be shielded from sunlight by dividing member 3 6 and will appear darker to bees, who will be encouraged by the darker color of the lower chamber to enter the hive via arrival pathway 12 instead. Id. at 4--6; see also Spec. 14:16-20 (disclosing use of a light transparent door for the exit pathway and an opaque ( dark) material for the entrance door); id. at 18:4--5 (disclosing that "bees looking to exit are responsive to light entering the hive"). Moreover, baffle 54 of Gross, which forces bees exiting the hive via departure pathway 14 to pass through tray 48, which contains the biocontrol agent, will channel all outgoing bees through a relatively narrow opening, and, thus, like the "lesser opening" of Legge's pollen dispenser, should make it unlikely that any bee attempting to enter the hive by way of exit 45 of Gross will be successful. See Gross 4:42--45; Legge 4:78-84. Thus, considering the teachings of Gross and Legge in their entirety, on the basis of the record before us, we agree with Appellants that a person having ordinary skill in the art would not have been prompted to provide a unidirectional gating means as taught by Legge at exit 45 of Gross, either to avoid contamination or to improve the efficiency of the hive. Accordingly, we do not sustain the rejection of independent claim 30, or claims 31, 33, 35, 37-39, and 41-52, which depend from claim 30, as unpatentable over Gross and Legge. Rejection II Root teaches a pivoted awning structure comprising panels 68 pivotally secured in apertures 72 of inclined support standards 7 4 and 11 Appeal2018-000906 Application 13/3 21,348 selectively positionable over the exit opening to the hive to deflect incoming bees from the opening of the hive toward landing platform 30 or to deflect the outgoing bees to move upwardly. Root 7:35-55. Notably, Root's pivoted awning structure is not configured to prevent bees from entering the hive through the exit opening and, further, is not disposed on a beehive- mounted disseminator device. Thus, the Examiner's reliance on this teaching in rejecting claim 32 (see Final Act. 8) does not make up for the deficiency in the combination of Gross and Legge discussed above. Thus, we also do not sustain the rejection of claim 32 as unpatentable over Gross, Legge, and Root. In rejecting claim 36, the Examiner determined it would have been obvious "to modify Gross as modified by Legge to have means to close the entrance of the first chamber, as taught by Root, in order to minimize the size of the entrance during wintertime to maintain heat within the hive." Final Act. 8-9 (citing Root 9:36-41; Fig. 5 (control elements 104, 110)). This modification would not cure the aforementioned deficiency in the combination of Gross and Legge. Accordingly, we do not sustain the rejection of claim 36 as unpatentable over Gross, Legge, and Root. DECISION The Examiner's decision rejecting claims 30-33, 35-39, and 41-52 is reversed. REVERSED 12 Copy with citationCopy as parenthetical citation