Appeal No. 94-0291
Application 07/490,760
785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967).
Accordingly, the rejections over the applied prior art are reversed.
REMAND
Upon return of this application the examiner is instructed to reconsider the scope of the
claimed invention. That is, the claimed method requires the application of pulegone and/or
piperitone to a locus. In some instances, the locus is defined as being a trash receptacle (claims
19 and 22) or a poison (claims 20 and 21), however, it does not appear that one of the claims is
limited to a locus which requires the presence of any particular animal type. Thus, the examiner
should consider whether (i) the claims are actually limited to a method of repelling “carnivorous
or omnivorous animals selected from the group consisting of domestic cats, rodents, raccoons and
canids,” or (ii) the claims encompass the application of pulegone and/or piperitone to a locus for
the purpose of repelling any animal or insect, such as cockroaches, wherein such application
would inherently result in the repulsion of any cats, rodents, raccoons, and canids which happen
to pass in the vicinity of said locus. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable”) .
In the event the examiner determines that the latter of the two aforementioned
interpretations of the claims is reasonable, then the examiner should consider whether the
teachings of the Inazuka abstract, or other prior art teachings as to the use of the claimed
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