Ex Parte Kramer

Patent Trial and Appeal Board

Mar 9, 2017

12473853 (P.T.A.B. Mar. 9, 2017)

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.
12/473,853 05/28/2009 Daniel R. Kramer SOAP0157PUS 1393
22045 7590 03/13/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER LEVIN, MIRIAM A
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/13/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. KRAMER1
Appeal 2015-007168
Application 12/473,853
Technology Center 1600
Before MELANIE L. McCOLLUM, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellant states the real party-in-interest is Avian Enterprises, LLC. App.
Br. 2.
Appeal 2015-007168
Application 12/473,853
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 4—7, 9, 10, 17, 21, and 24—27.2
Specifically, claims 17, 21, and 26 stand rejected as unpatentable under
U.S.C. § 102(b) as being anticipated by M.L. Avery et al., Mint Plant
Derivatives as Blackbird Feeding Deterrents, 15(5) Crop Protection 461—
64 (1996) (“Avery”).3
Claims 17, 21, and 26 also stand rejected as unpatentable under
U.S.C. § 102(b) as being anticipated by J.R. Mason et al., Evaluation of
Methyl Anthranilate and Starch-plated Dimethyl Anthranilate as Bird
Repellent Feed Additives, 55(1) J. Wildlife Manag. 182—87 (1991)
(“Mason”), as evidenced by Avery.
Claims 17, 21, and 26 also stand rejected as unpatentable under
U.S.C. § 103(a) as being obvious over the combination of Mason and Avery.
Claims 1, 4—7, 9, 10, 17, 21, and 24—27 stand rejected as unpatentable
under U.S.C. § 103(a) as being obvious over Rare (US 2,967,128, January 3,
1961) (“Rare”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
2 Claims 2, 3, 8, 11—16, 18—20, 22, and 23 are canceled. Final Act. 2,
3 Claims 1, 7, and 27 were also rejected by the Examiner as unpatentable
under U.S.C. § 102(b) as being anticipated by Rare. Final Act. 3. The
Examiner has withdrawn this rejection. Ans. 17.
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Application 12/473,853
NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a concentrated treatment
composition including a bird-repelling composition, a glycol, and a
fragrance-containing/odor control composition. The concentrated treatment
composition provides a stable product that is miscible with water. Methods
for applying the treatment compositions are also provided. Abstract.
REPRESENTATIVE CLAIM
Claim 17 is representative of the claims on appeal and recites:
17. A concentrated treatment composition for odor and bird
control consisting of:
a bird repelling composition present in an amount from
about 18 to about 22 weight percent of the total weight of the
concentrated treatment composition, wherein the bird repelling
composition is selected from the group consisting of methyl
anthranilate, dimethyl anthranilate, ethyl anthranilate, diethyl
anthranilate, and combinations thereof; and
a glycol present in an amount from about 78 to 82 weight
percent of the total weight of the concentrated treatment
composition.
Claim App’x 2.
ISSUES AND ANALYSES
Except where explicitly stated otherwise, we agree with, and adopt,
the Examiner findings and conclusions that the claims on appeal are either
anticipated or obvious over the cited prior art references. We address the
arguments raised on appeal by Appellant below.
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Application 12/473,853
A. Rejection of claims 17, 21, and 26 as anticipated by Avery
Issue
Appellant argues the Examiner erred in finding Avery discloses the
limitations of claim 17 reciting “a bird repelling composition present in an
amount from about 18 to about 22 weight percent... [and].. .a glycol present
in an amount from about 78 to 82 weight percent of the total weight of the
concentrated treatment composition.” App. Br. 6.
Analysis
Appellant alleges Avery does not disclose that a concentrate
composition is prepared. App. Br. 6. Appellant contends, rather, that Avery
discloses: “We applied a total of 15 ml of liquid to 700 g rice, so the actual
amount of propylene glycol used varied with the treatment rate.” Id. at 7
(quoting Avery 462). Appellant points out that Avery does not state that the
propylene glycol and the methyl anthranilate are combined together and then
added to the rice, but discloses only that a total of 15 mis of liquid are added
to the rice. Id. According to Appellant, Avery appears to disclose that the
propylene glycol and the methyl anthranilate are added separately to the rice.
Appellant alleges that the Examiner’s findings to the contrary are mere
speculation, which, they argue is not an appropriate basis for a rejection
under Section 102. Id.
Appellant argues further that Avery explicitly discloses a bird feed
composition which includes rice. App. Br. 7. Appellant contends that, since
claim 17 uses the language “consisting of,” the inclusion of rice is explicitly
excluded. Id.
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Application 12/473,853
With respect to claim 26, Appellant argues that claim 26 calls for the
bird-repelling composition as constituting about 18 weight percent of the
concentrated treatment composition. App. Br. 7. Appellant asserts this
value is significantly outside of the concentration of approximately 22%
weight percent calculated by the Examiner in the Final Office Action as
being disclosed by Avery. Id.
The Examiner finds that Avery discloses 15 mis of liquid applied to
700 grams of rice, and that the final concentration of methyl anthranilate was
0.5 % (g/g). Final Act 7 (citing Avery 462). The Examiner takes notice that
the density of propylene glycol is 1.036 g/ml and that the density of methyl
anthranilate (at 25°C) is 1.168 g/ml. Id. The Examiner calculates that, to
arrive at a final concentration of 0.5 wt. % on 700 grams of rice, one would
need to use 3.5g of methyl anthranilate. (700g x 0.005 = 3.5g) and 3.5g/
1.168g/ml = 2.9 ml, or about 3 ml of methyl anthranilate). Id. The
Examiner further finds that Avery discloses that the total volume used was
15 ml, and therefore the volume of propylene glycol was about 12 ml. Id. at
8 (citing Avery 462). The Examiner calculates that 12 ml volume x 1.036
g/ml equals 12.4 grams propylene glycol/12 mis of solution. Id. The
Examiner therefore finds 3.5g methyl anthranilate plus 12.4g propylene
glycol equals a total of 15.9g total. Id. The Examiner finds that 3.5g of
methyl anthranilate/15.9g total solute equals approximately 22 wt. % of
methyl anthranilate in propylene glycol, which is within the range recited in
claim 17 of “a bird repelling composition present in an amount from about
18 to about 22 weight percent of the total weight.” Id.
The Examiner further finds the rice disclosed by Avery serves as a
substrate to which the composition is applied to and is therefore not relevant
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Application 12/473,853
to the composition of the concentrate. Ans. 7. The Examiner analogizes the
rice disclosed by Avery to a container in which the composition is prepared,
held, or stored and therefore not part of the composition per se. Id.
With respect to claim 26, the Examiner finds that that the difference
between 22% calculated by the Examiner and 18% recited in the claim
amounts to a difference of 4% with respect to the overall weight of the
composition. App. Br. 7. The Examiner finds that the claim term “about” is
not defined in Appellant’s Specification and therefore gives the term its
broadest reasonable interpretation, and concludes that 22 wt% of methyl
anthranilate falls within the scope of claim 26’s required “amount of about
18 weight percent of the total weight.” Id.
We are not persuaded by Appellant’s arguments with respect to
claiml7. As an initial matter, Appellant argues Avery fails to disclose that a
concentrated composition is prepared. See App. Br. 6. However, Appellant
adduces no evidence in support of this contention other than to assert that it
is so. That is insufficient to overcome the Examiner’s findings. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011): (“[W]e hold that the Board
reasonably interpreted [37 C.F.R. § 41.37(c)(l)(vii)] to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Furthermore, Avery teaches that a small amount of
prepared solution (15 mis) is applied to a much larger volume of rice (500
mg). Appellant’s Specification does not explicitly define the term
“concentrated treatment composition” but provides several exemplary
embodiments:
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Application 12/473,853
In a variation of the present embodiment, the bird repelling
composition is present in an amount from about 0.5 to about 30
weight percent of the total weight of the concentrated treatment
composition. In another variation, the bird repelling composition
is present in an amount from about 5 to about 28 weight percent
of the total weight of the concentrated treatment composition. In
still another variation, the bird repelling composition is present
in an amount from about 10 to 20 about 25 weight percent of the
total weight of the concentrated treatment composition. In yet
another variation, the bird repelling composition is present in an
amount from about 18 to about 22 weight percent of the total
weight of the concentrated treatment composition.
Spec. 4. These concentrations are consistent with the Examiner’s
calculations described above. We therefore find that the teachings of Avery
are consistent with a broadly reasonable interpretation of the claim term
“concentrated treatment composition,” in view of the Specification.
We are not persuaded by Appellant’s argument that Avery does not
disclose propylene glycol and methyl anthranilate combined together and
then added to the rice. See App. Br. 7. Avery discloses: “Because [methyl
anthranilate is] . . . not water-soluble, we mixed [it] with propylene glycol
prior to treating the rice. We applied a total of 15 ml of liquid to 700 g of
rice, so the actual amount of polypropylene glycol used varied with the
treatment rate.” Avery 461—62. This variation is a result of Avery’s
disclosure that “we tested pulegone and pennyroyal oil at 0.1, 0.5, and 1.0%
(g chemical/g rice) and [methyl anthranilate] at 0.5% (g/g).” Id. A plain
reading of these passages indicates that the chemicals were mixed together,
such that the amount of polypropylene glycol necessarily varied with the
amount of repellent in the 15 mis of solution. Furthermore, as we have
related supra, the Examiner has calculated, supported by the disclosures of
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Application 12/473,853
Avery, that the methyl anthranilate and propylene glycol weight percent are
within the range recited by claim 17. Appellant does not explicitly contest
the accuracy of, or otherwise engage with, the Examiner’s calculations or
conclusions.
Nor are we persuaded by Appellant’s arguments with respect to the
rice disclosed by Avery. We agree with the Examiner that a plain reading of
Avery indicates that the rice acts as a substrate for the concentrated
composition, which is composed prior to application to the rice
carrier/substrate. We consequently affirm the Examiner’s rejection of
claims 17 and 21.
With respect to claim 26, we are not persuaded by the Examiner’s
findings and conclusions. The Examiner finds Avery teaches a weight
percentage of 22, whereas claim 26 requires a concentration of repellant of
“about 18.” Although our reviewing court has held that a prior art reference
anticipates when a claimed value or range falls within a range disclosed by
the prior art (see, e.g., In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003)), and although we give the broadest reasonable interpretation to the
claim term “about,” we disagree with the Examiner that the 4% by weight
difference between Avery and claim 26 permits anticipation of claim 26.
We consequently reverse the Examiner’s rejection of claim 26.
B. Rejection of claims 17, 21, and 26 as anticipated by Mason
Issue
Appellant argues the Examiner erred in finding that Mason, as
evidenced by Avery, discloses about 18 to about 22 weight percent of a bird-
repelling composition and 78 to 82 weight percent glycol. App. Br. 7.
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Application 12/473,853
Analysis
Appellant alleges that the Examiner, in the Final Office Action,
engaged in speculation to determine what composition Mason might have
used in preparing a bird feed composition. App. Br. 7. Specifically,
Appellant contends that Mason never states what amount of a concentrate
composition is used, and that the Examiner guesses at this amount as the
basis of the Examiner’s calculations. Id. at 8. According to Appellant,
Mason states only that 1 ml of pure propylene glycol is added to a bird feed
composition and never discusses the amount of methyl anthranilate that is
used to prepare a bird feed composition having one percent methyl
anthranilate. Id.
Appellant further argues that the Examiner relies on Avery to bolster
the rejection of the claims, which, as Appellant argues supra, is indistinct
about the manner in which the components of its disclosed bird feed
composition are combined. App. Br. 8.
The Examiner relies upon the same findings and conclusions in this
rejection that were relied on in the preceding section. Ans. 22. Specifically,
the Examiner relies upon the method of calculation explained supra in
determining that the concentrations of 0.5 and 0.4% of methyl anthranilate
presented to the test subjects in Mason correspond to concentrations of 22%
and 18% of methyl anthranilate and 78% and 82% of propylene glycol,
respectively. See Final Act. 9-10.
We are persuaded by the Examiner’s findings. We find that, in the
Final Office Action, the Examiner has presented calculations that a person of
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Application 12/473,853
ordinary skill in the art would reasonably understand as falling within the
range recited by the claims on appeal. Appellant does not argue with these
calculations, or contend that any such argument is unsubstantiated by the
evidence, but merely dismisses the Examiner’s findings as speculation and
guesswork. That is insufficient to overcome the Examiner’s prima facie
conclusion that Mason anticipates the claims on appeal. See In re
DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions
unsupported by factual evidence carry no evidentiary weight). Moreover,
unlike our findings in the previous section, we agree with the Examiner that
Mason discloses a concentration of 18%. See Final Act. 9—10. We
consequently affirm the Examiner’s rejection of the claims.
C. Rejection of claims 17, 21, and 26 as obvious over Mason and Avery
Issue
Appellant repeats the arguments presented supra with respect to the
Examiner’s rejection of claims 17, 21, and 26 under 35 U.S.C. § 102(b).
Because we affirm the claims as being anticipated by Mason and/or Avery,
we, for the same reasons, affirm the rejections under 35 U.S.C. § 103(a).
See In re Kalm, 378 F.2d 959, 962 (C.C.P.A. 1967) (Anticipation is the
epitome of obviousness).
D. Rejection of claims E 4—7, 9, 10, 17, 21, and 24—27 as obvious over Kare
Issues
Appellant argues that: (1) Each of the Kare compositions cited by the
Examiner include components other than a bird-repelling compound, a
fragrance-containing/odor control, and a glycol, or call for ranges outside of
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Application 12/473,853
the claimed range; and (2) Kare does not disclose a fragrance containing or
odor control composition as required by independent claims 1 and 27. App.
Br. 9.
Analysis
We are not persuaded by the Examiner’s reasoning. With respect to
claims 1 and 27, Appellant argues:
Kare does not disclose a fragrance-containing/odor control
composition as called for by independent claim 1 and 27. The
Specification provides the following definition for a fragrance-
containing/odor control composition:
In this context, a fragrance-containing/odor control
composition is any composition that neutralizes mal
odors associated with decay and nitrogen-
containing compounds.
Specification, p. 7, 11. 12—14.
Appellant asserts that none of the compounds
disclosed in Kare are a fragrance-containing/odor
control compositions as defined in the
Specification.
App. Br. 9.
The Examiner responds that, employing the broadest reasonable
interpretation of the claim term fragrance-containing/odor control
composition, any fragrance or odor-controlling material is interpreted as
reading on this limitation. Ans. 23. The Examiner therefore finds dimethyl
anthranilate is a fragrance-containing and/or odor-control composition
because, as demonstrated by PubChem to be well-known in the art, it has an
“orange and mandarin-peel-like odor.” Id. (citing PubChem, Methyl 2-
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Application 12/473,853
(methylamino)benzoate 7, § 4.2.2, available at:
http://pubchem.ncbi.nlm.nih.gov/compound/Metliyl 2-methylamino
benzoate). The Examiner finds that other fragrances and/or odor
neutralizing materials Kare teaches are, for example, vanillin, oil of orange
and oil of lemon. Id. (citing Kare col. 7,11. 65—68).
We do not find the Examiner’s reasoning persuasive. With respect to
claim 1 and its dependent claims, and claim 27, Appellant’s Specification
provides an explicit definition of the claim term “fragrance-containing/odor
control composition,” viz., “any composition that neutralizes mal odors
associated with decay and nitrogen-containing compounds.” Spec. 7. We
interpret claim terms in view of the definitions set forth in Appellant’s
Specification. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996) (The Specification “is ... [usually] dispositive; it is the
single best guide to the meaning of a disputed term”). The Examiner has not
adequately shown that dimethyl anthranilate or the other fragrances taught in
Kare have the property of neutralizing odors associated with decay and
nitrogen-containing compounds. Therefore, we conclude that the Examiner
has not set forth a prima facie case that Kare discloses or suggests the term
as defined by Appellant’s Specification.
With respect to claims 17, 21, 25, and 26, the Examiner finds Kare
teaches a concentrate comprising about 5 wt % dimethyl anthranilate and
about 95 wt % propylene glycol. Final Act. 15. This is well outside of the
range “from about 18 to about 22 weight percent of the total weight of the
concentrated treatment composition ... [and] a glycol present in an amount
from about 78 to 82 weight percent of the total weight of the concentrated
treatment composition” recited in claim 17. The Examiner adduces no
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evidence to show Kare teaches or suggests the limitations of these claims.
We consequently reverse the Examiner’s rejection of the claims.
DECISION
The Examiner’s rejection of claims 17, 21, and 26 as unpatentable
under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 17, 21, and 26 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 1, 4—7, 9, 10, 25, and 27 as
unpatentable under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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