Ex parte Wigton et al.

Board of Patent Appeals and Interferences

Apr 9, 1998

08381545 (B.P.A.I. Apr. 9, 1998)

Application for patent filed January 31, 1995.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRUCE E. WIGTON and MARK H. MILLER
__________
Appeal No. 97-2548
Application No. 08/381,5451
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 5, which constitute all of the claims
of record in the application.
The appellants’ invention is directed to a trap system for
reducing the entry of flying insects into a predetermined area,
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Application No. 08/381,545
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and to a method of doing so. The subject matter before us on
appeal is illustrated by reference to claim 1, a copy of which
can be found in an appendix to the Appeal Brief.
THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Dieguez et al. (Dieguez) 5,382,422 Jan. 17, 1995
THE REJECTIONS
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Dieguez.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dieguez.
The rejections are explained in Paper No. 4.
The opposing viewpoints of the appellants are set forth in
the Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellants as set forth in the Answer and the
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Brief. As a result of our review, we have determined that none
of the rejections should be sustained. Our reasoning in support
of this conclusion follows.
The Rejection Under Section 102
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984).
Claim 1 is directed to a trap system for reducing the entry
of flying insects into a predetermined area which is defined by a
continuous perimeter. The system comprises
a plurality of insect traps . . . positioned at
predetermined spacings around said continuous perimeter
. . . such that said plurality of spaced traps
cooperate to form a barrier for preventing flying
insects from crossing over said perimeter into said
predetermined area.
Claim 1 stands rejected as being anticipated by Dieguez, the
subjects of which are a method and apparatus for formation and
delivery of insect attractant. Dieguez discloses an insect trap,
and teaches that “a series” of them can be “arranged in grid
configuration” (column 5, lines 6 and 7). It is the examiner’s
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Application No. 08/381,545
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position that “[t]he specifics of where the plurality of traps
are located with respect to each other is found to be intended
use” which “fails to impart patentability in an apparatus claim”
(Final Rejection, page 2). We do not agree.
Claim 1 is directed “[a] trap system” (emphasis added).
According to the specifics of the claim, this system comprises a
plurality of traps, which are positioned in a particular
relationship to the area which they are guarding and to each
other. These requirements do not constitute an intended use, but
are the limitations which define the inventive system. As such,
they cannot be ignored. While the reference discloses an insect
trap, and teaches that a plurality of them can be arranged in a
grid configuration, it does not suggest that the grid
configuration be in accordance with the last four lines of the
claim. Therefore, each and every limitation in the claim is not
found in Dieguez, and the reference cannot be considered as
anticipatory of the claimed subject matter.
The rejection of independent claim 1 is not sustained nor,
it follows, is the rejection of dependent claims 2 and 3 on the
same grounds.
Claim 4 is drawn to a method of reducing the entry of flying
insects into an area, and it sets forth the steps of defining the
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area by determining a perimeter around it, and positioning a
plurality of insect traps at predetermined spacings along the
perimeter, so that the traps cooperate to keep flying insects
from crossing over the perimeter. This claim is rejected as
being unpatentable over Dieguez, which means that the teachings
of the reference would have suggested the claimed invention to
one of ordinary skill in the art. See, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
As we have pointed out above with regard to the rejection
under Section 102, the extent of the teachings set out by Dieguez
is merely that a series of traps be arranged in a “grid
configuration.” It is the examiner’s view, however, that one of
ordinary skill in the art would have found it obvious to locate
the traps along a continuous perimeter surrounding the area to be
protected, spaced at such intervals as not to allow insects to
have ingress (Answer, pages 3 and 4). The examiner has not
explained where the suggestion to do so is found, nor has
evidence been presented in support of this position. From our
perspective, therefore, absent the hindsight accorded one who
first viewed the appellants’ disclosure, it would not have been
obvious to one of ordinary skill in the art to perform the steps
set forth in claim 4.
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The teachings of Dieguez therefore fail to establish a prima
facie case of obviousness with respect to the subject matter of
claim 4, and we therefore will not sustain the rejection of claim
4 or its dependent claim 5.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 97-2548
Application No. 08/381,545
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Stephen J. Holmes
Salter & Michaelson
321 South Main Street
Providence, RI 02903