Ex Parte Theis et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11939689 (B.P.A.I. Mar. 20, 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.
11/939,689 11/14/2007 Dale R. Theis TAS-17402/06 6452
13173 7590 03/21/2012
Patent Procurement Services
450 North Old Woodward
First Floor
Birmingham, MI 48009
EXAMINER
CLERKLEY, DANIELLE A
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/21/2012 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 DALE R. THEIS and TED A. WEAVER
____________

Appeal 2010-010042
Application 11/939,689
Technology Center 3600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERICA A.
FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 1-10 and 17. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an animal litter. Claim 1 is representative
and reproduced in “APPENDIX A” of Appellants’ Brief (App. Br. 16-18).
Claims 1, 4, 5, and 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mochizucki
2
and Carlberg.
3

1
Oral Hearing held March 14, 2012.
Appeal 2010-010042
Application 11/939,689

2
Claims 2, 3, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mochizucki, Carlberg, and Gruss.
4

Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mochizucki, Carlberg, and Markham.
5

We reverse.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s conclusion that the combination of Mochizucki and Carlberg
suggest an animal litter that induces extended play time in a laboratory
animal relative to either said litter particulate component or said polymeric
cylinder component alone?
FACTUAL FINDINGS (FF)
FF 1. Mochizuki suggests “an animal litter comprising: a plurality of
unfoldable polymeric cylinders” (Ans. 3; Spec. 5: ¶ [0019])
FF 2. Examiner finds that Mochizuki
[D]oes not disclose the animal litter comprises a plurality of
urine absorbent particles intermixed with the plurality of
unfoldable polymeric cylinders to form the animal litter that
induces extended play time in a laboratory animal relative to
either said litter particulate component or said polymeric
cylinder component alone.

(Ans. 4.)

2
Mochizuki, US 6,405,676 B1, issued June 18, 2002.
3
Carlberg, US 4,157,696, issued June 12, 1979.
4
Gruss, US 4,326,481, issued April 27, 1982.
5
Markham et al., US 2004/0224053 A1, published November 11, 2004.
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Application 11/939,689

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FF 3. Carlberg suggests “an animal litter comprising a plurality of urine
absorbent particles” (id.).
FF 4. Example 1 of Appellants’ Specification supports Appellants’ claim
limitation regarding a combination “litter that induces extended play time in
a laboratory animal relative to either” a particulate or polymeric cylinder
component alone (Claim 1; Spec 10-11: ¶ [0029]).
FF 5. Examiner relies on Gruss to suggest an “animal litter comprising
cylindrically shaped plastic and rubber granules . . . having a diameter
between 1 and 5 millimeters and a height between 1 and 5 millimeters,”
which Examiner finds is not suggested by the combination of Mochizucki
and Carlberg (Ans. 5).
FF 6. Examiner finds that the combination of Mochizucki and Carlberg
fails to suggest a litter for use “with rodents” and relies on Markham to
make up for this deficiency (Ans. 6).
FF 7. Markham suggests that
One undesirable behavior that is exhibited by many laboratory
animals is the “Hotel Syndrome,” a term given to describe
behavior characterized by pacing from one end of the cage to
another, or otherwise engaging in repetitive physical acts. This
type of behavior is indicative of an animal that is unduly
stressed, and therefore unsuitable for study.

(Markham 1: ¶ [0005]).
FF 8. Markham suggests “a method . . . for enriching the environment of a
caged animal by providing an extruded product of a desired shape, size, and
density, and then introducing those selected products to the environment in
which the caged animal resides” (Markham 2: ¶ [0020]).
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Application 11/939,689

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FF 9. Markham suggests a “habitat” material “manufactured from milo
seeds that have been decorticated resulting in berry and berry particulates
that may be . . . extruded to form the habitat in a desired shape, size, and
density” (Markham 1-2: ¶ [0015]; see generally Ans. 6).
FF 10. Markham suggests an animal cage that contains a habitat material
with or without litter (Markham 2: ¶ [0028]; see generally Ans. 6).
ANALYSIS
Based on the combination of Mochizucki and Carlberg, Examiner
concludes that, at the time of Appellants’ claimed invention, it would have
been prima facie obvious to modify Mochizuki’s litter to include Carlberg’s
urine absorbent particles to provide Mochizuki’s litter with “liquid swellable
hydrophilic materials to more efficiently absorb the animal waste” (Ans. 4).
In addition, Examiner concludes that the combination of Mochizucki and
Carlberg will result in a litter that “induce[s] play time in a laboratory
animal” (id.). Examiner fails, however, to identify an evidentiary basis on
this record that supports Examiner’s conclusion regarding the play time
limitation of Appellants’ claimed invention (see App. Br. 9; Reply Br. 2).
Therefore, we are not persuaded by Examiner’s unsupported conclusion that
the “property of extended play time[ ] is dependent upon the amount of time
the animal is in contact with the litter, the size of the urine-absorbent
particles, the size of the polymeric cylinders, and what types of particles
most appeal to the type of animal present in a contained space” (Ans. 7; Cf.
FF 4).
Further, since Appellants’ evidence of unexpected results make use of
Mochizucki’s polymeric cylinder litter, i.e., the closest prior art, we are not
persuaded by Examiner’s intimation that Appellants’ evidence is not
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Application 11/939,689

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persuasive because Mochizucki’s “twisted paper rods having mean length of
10 mm[ and] mean diameter of 5 mm[ ] has not been claimed” (id.).
“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art.”
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.Cir.1991) (citing In re
De Blauwe, 736 F.2d 699, 705 (Fed.Cir.1984)).
With regard to dependent claims 2, 3, 6, and 10, Examiner finds that
Gruss makes up for the failure of the combination of Mochizucki and
Carlberg to suggest an “animal litter comprising cylindrically shaped plastic
and rubber granules . . . having a diameter between 1 and 5 millimeters and a
height between 1 and 5 millimeters” (FF 5). Examiner, has not, however,
established that Gruss makes up for the underlying deficiency in the
combination of Mochizucki and Carlberg discussed above.
With regard to dependent claim 17, Examiner concludes that, at the
time of Appellants’ claimed invention and based on the combination of
Mochizucki, Carlberg, and Gruss, it would have been prima facie obvious to
a person of ordinary skill in this art “to use the animal litter of Mochizuki as
modified by Carlberg with a rodent for the advantage of providing sustained
activity and preventing stress and undesirable behavior, as taught by
Markham” (Ans. 6; FF 6-8). We are not persuaded.
While Markham suggests the use of a habitat material to alleviate
Hotel Syndrome, Markham suggests introducing the habitat material to the
animal in the presence or absence of litter (FF 7-10). Examiner proffers no
fact based rationale as to why a reference that suggests the use of a material
in the presence or absence of litter would make obvious an animal litter that
induces extended play time in a laboratory animal relative to either said litter
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Application 11/939,689

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particulate component or said polymeric cylinder component alone as is
required by Appellants’ claimed invention.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s conclusion that the combination of Mochizucki and Carlberg
suggest an animal litter that induces extended play time in a laboratory
animal relative to either said litter particulate component or said polymeric
cylinder component alone. The rejection of claims 1, 4, 5, and 7-9 under 35
U.S.C. § 103(a) as unpatentable over the combination of Mochizucki and
Carlberg is reversed.
Examiner also failed to establish through a preponderance of evidence
on this record that Gruss or Markham make up for the deficiency in the
combination of Mochizucki and Carlberg. Therefore:
The rejection of claims 2, 3, 6, and 10 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mochizucki, Carlberg, and Gruss is
reversed; and
The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mochizucki, Carlberg, and Markham is reversed.

REVERSED

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