Appeal from the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (Board), Appeal No. 92-1011.
Before Nies, Chief Judge, Archer and Clevenger, Circuit Judges.
CLEVENGER, Circuit Judge.
Derwood L. Runion appeals from the April 1, 1992 decision of the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (Board), Appeal No. 92-1011, affirming the examiner's rejection of claims 1, 2, 5, 12, 13, 16 & 21 (the claims) of Runion's patent application No. 07/569,430 as unpatentable under 35 U.S.C. § 102(b) (1988). Because the Board erred in applying the principles of inherency to the allegedly anticipatory reference, we reverse.
This case presents an opportunity to explore certain mysteries of avian oral hygiene. Birds of many species often find it necessary to rub their beaks against abrasive surfaces to control the growth thereof and keep them in trim. Because poultry instinctively peck at each other with their beaks, well-trimmed beaks reduce the likelihood of injury during this pecking process. Poultry, at least, incidentally peck on birds of inferior status, size or age: wherefrom the phrase "pecking order" to describe a hierarchy of social dominance. McGraw-Hill Dictionary of Scientific & Technical Terms 1384 (4th ed. 1989).
To address this problem in the poultry industry, Runion filed a patent application on August 15, 1990 relating to a bird feeder with an abrasive surface for controlling bird beak growth during feeding. Representative of the claimed invention, claim 1 reads:
A bird feeder comprising:
a pan for retaining and presenting feed;
said pan having a feeding surface to be covered by said feed;
said pan having at least one upstanding surface;
and abrasive means secured to said at least one upstanding surface for abrading beaks of birds as they feed.
Appropriate materials disclosed in the specification for use as the "abrasive means" include sand, corundum (emery board abrasive), or any other non-toxic abrasive. The material is bonded either directly to the surface with an adhesive, or to an intermediary "carrier" layer (e.g., sandpaper), which is then bonded to the feeding surface.
During prosecution, the examiner rejected the claims as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 1,162,427 entitled "Dough-Loaf Support or Receptacle," and issued to F.J. Wolff on November 30, 1915 (Wolff). Wolff discloses a pan having a horizontal surface and an upstanding peripheral surface. Particles of "vegetable grit" are adhered with shellac to both the horizontal and upstanding surfaces, thereby forming a coating "of a rough or pebbled character." The vegetable grit is described as consisting of "corn flour, meal or grits, or in fact, any cereal containing practically no gluten." Wolff's purpose was to create a ...