Ex Parte Bescherer

Patent Trial and Appeal BoardMay 30, 2013

11761429 (P.T.A.B. May. 30, 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. 11/761,429 06/12/2007 Robert E. Bescherer A16P1352US1 9991 3017 7590 05/30/2013 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5TH FLOOR PROVIDENCE, RI 02903 EXAMINER O'HARA, BRIAN M ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 05/30/2013 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 ROBERT E. BESCHERER ____________ Appeal 2011-002506 Application 11/761,429 Technology Center 3600 ____________ Before EDWARD A. BROWN, LYNNE H. BROWNE and MITCHELL G. WEATHERLY, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-002506 Application 11/761,429 2 STATEMENT OF THE CASE Robert E. Bescherer (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A bird feeder base, comprising: a main body having a top surface and a bottom surface, the bottom surface defining a bore therein having an inner surface; the inner surface of the bore having a female threaded portion and a non-threaded portion where the non-threaded portion is substantially larger in area than the female threaded portion; the female threaded portion having one female thread member residing on the female threaded portion of the inner surface of the bore and extending less than 360 degrees about such inner surface; whereby a male threaded accessory is threadably engageable through the bottom surface of the main body and through the bore; the male threaded accessory being laterally stabilized by communication with the non-threaded portion of the bore. PRIOR ART Hefner US 4,691,665 Sep. 8, 1987 Bescherer US 6,539,892 B1 Apr. 1, 2003 Puckett US 7,516,716 B1 Apr. 14, 2009 Appeal 2011-002506 Application 11/761,429 3 GROUNDS OF REJECTION 1. Claims 1-3 and 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Puckett and Hefner. 2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Puckett, Hefner and Bescherer. 1 3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Puckett, Hefner and “Applicant’s acknowledged prior art (Figure 4).” OPINION Obviousness based on Puckett and Hefner Claims 1-3 and 8-10: Appellant argues claims 1-3 and 8-10 as a group. We select independent claim 1 as the illustrative claim and claims 2, 3 and 8-10 stand or fall with claim 1. See App. Br. 6-10; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Puckett discloses all of the limitations of independent claim 1 except for “the non-threaded portion being substantially larger than the threaded portion, [and] the female thread extending less than 360 degrees.” Ans. 5. The Examiner finds that “Hefner teaches connecting a bird feeder base with a female threaded portion (44) extending less than 360 degrees.” Id. The Examiner concludes that “[a]t the time of invention, it would have been obvious to replace the threaded portion of Puckett et al[.], with the less than 360 degree thread of Hefner et al.” because such a 1 The Examiner withdraws the rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Puckett, Hefner and Weldin (US 5,285,748, iss. Feb. 15, 1994) and enters this new ground of rejection. Ans. 3. Appeal 2011-002506 Application 11/761,429 4 modification would “make the supporting pole easier to attach to the base portion.” Id. The Examiner further reasons that “[t]he resulting structure would have the non-threaded portion being substantially larger in area than the female threaded portion [and] the female threaded portion [would have] one female thread member residing on the female threaded portion of the inner surface of the bore.” Id. Appellant argues that “Puckett does not illustrate or teach laterally stabilizing a male threaded accessory using the non-threaded portion of the inner surface 140 of the bore 130.” App. Br. 6; Reply Br. 6. The Examiner finds that Puckett describes that the male threaded accessory [is] laterally stabilized by the non-threaded portion (portion under element 82 in Figs. 5 and 14) of the inner surface of the bore; whereby the male threaded accessory is laterally stabilized by the communication with the non-threaded portion of the bore while being secured by the female thread (the non-threaded portion would inherently provide lateral stability). Ans. 5; see also Ans. 7. We agree. While Puckett’s threads contribute to the lateral stabilization of the male threaded accessory, the non-threaded portion of the bore also contributes to such stabilization, which is all that is required by the claim language. Accordingly, Appellant’s argument is unpersuasive. Appellant argues that because Hefner’s threads attach the bottle of a hummingbird feeder to its base, rather than the base of the hummingbird feeder to an accessory, Hefner teaches away from the combination proposed by the Examiner’s rejection. See App. Br. 6-7; See also Reply Br. 7-10. We disagree. A reference does not teach away from a proposed combination with another reference simply because there are differences between the two Appeal 2011-002506 Application 11/761,429 5 references. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Appellant has not identified and we do not discern where Hefner criticizes, discredits or otherwise discourages use of its threads to attach the base of the hummingbird feeder to an accessory. We will not read into a reference a teaching away from a proposed combination when no such language exists. See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellant further argues “Puckett does not illustrate lateral stabilization by the non-threaded portion of the bore and Hefner's thread is on the top of the base,” concluding “[i]t would still not be obvious to have a helical thread on the bottom of the base for an accessory.” App. Br. 9; Reply Br. 10-11. Appellant is arguing the individual features of the references rather than addressing their combined teachings. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir. 1986). As discussed supra, we agree with the Examiner’s finding that Puckett inherently discloses lateral stabilization by the non-threaded portion of the bore. Furthermore, Hefner is not relied upon to teach the bottom surface of the main body having a bore as Puckett discloses this feature. Accordingly, Appellant’s arguments do not address the Examiner’s combination and are thus unconvincing. For these reasons, we sustain the Examiner’s rejection of independent claim 1, and of claims 2, 3 and 8-10 which were not argued separately and fall therewith. Obviousness based on Puckett, Hefner and Bescherer Appeal 2011-002506 Application 11/761,429 6 The Examiner finds that “Bes[c]herer teaches mounting a squirrel guard (10) to a male threaded member (40) and then mounting the male threaded member and squirrel guard to a bird feeder base (36).” Ans. 6. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to provide the male threaded accessory of Puckett et al. and Hefner wherein the male threaded accessory is a squirrel guard (40+10 of Bes[c]herer assembled together) and wherein the male threaded accessory is a mounting post with a squirrel guard (40+10 taken as separate elements) in view of the teaching of Bes[c]herer. in order “to provide the predictable result of preventing unwanted animals from taking bird food.” Ans. 6. Appellant argues that Bescherer teaches away from the present invention because “Bescherer teaches . . . a bird feeder base (36) which includes a female threaded bore 44 (as shown in Figs. 5 and 7) with the inner surface of the female threaded bore having multiple thread members extending more than 360 degrees about the inner surface.” Appellant also argues that “Bescherer does not disclose a non-threaded portion of the inner bore 44 which laterally stabilizes the male threaded post (40)” and Bescherer “require[es] multiple threads on both the inner bore 44 to be in communication with multiple threads on the male threaded post (40) to provide lateral stabilization.” Reply Br. 13. Appellant’s argument is unconvincing as it apprises us of no error in the Examiner’s finding that Bescherer teaches a squirrel guard as claimed. We note that Bescherer is not relied upon to teach the claimed bore and its female threaded member. In addition, Appellant has not identified where Bescherer criticizes, discredits Appeal 2011-002506 Application 11/761,429 7 or discourages use of its squirrel guard with other bird feeders. As discussed supra, we will not read into a reference a teaching away from a proposed combination when no such language exists. Accordingly, Appellant has not apprised us of error in the Examiner’s rejection. For these reasons, we sustain the Examiner’s rejection of claims 4 and 5. Obviousness based on Puckett, Hefner and Applicant’s Acknowledged Prior Art Appellant has provided no separate arguments for claims 6 and 7. See App. Br. 11. Accordingly, as we have sustained the Examiner’s rejection of claim 1 from which claims 6 and 7 depend, either directly or indirectly, we likewise sustain the Examiner’s rejection of claims 6 and 7. DECISION The Examiner’s rejections of claims 1-10 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc