Appeal 2006-3332
Application 10/161,519
inherency, each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). In other words, there must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010
(Fed. Cir. 1991). In light of the Examiner’s error in determining that
Takenaka’s mixture satisfies the “toxicant-free monitoring device” limitation
of claims 1 and 12, the rejection of independent claims 1 and 12, and
dependent claims 2, 4-7, 13, 16, 17, 20, and 21, as anticipated by Takenaka
cannot be sustained.
The next issue before us is whether the subject matter of claims 15
and 22, which depend from claim 12, is unpatentable over Takenaka. In
rejecting claims 15 and 22 as unpatentable over Takenaka, the Examiner
concedes that Takenaka’s monitoring device is not toxicant free, but
contends “it would have been obvious to employ a toxicant free monitoring
device since there is no reason to employ a toxicant unless termites are
present and then add a toxicant containing matrix after termites are detected”
(Final Rejection 3). What is lacking in Takenaka, the only evidence relied
upon by the Examiner in making this rejection, is disclosure of the use of
bait alone to monitor termite activity. While Takenaka discloses
periodically digging the device out of the ground and examining it to
monitor whether termites are still surviving in the neighborhood of the
device (Takenaka Translation 1), Takenaka lacks any teaching of conducting
such monitoring with an insecticide-free device. Takenaka’s method
employs a device containing insecticide from the moment of its positioning
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