         NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
                __________________________

                  (Serial No. 10/643,288)
               IN RE FRANCIS L. CONTE
                __________________________

                        2011-1331
                __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
               __________________________

                Decided: November 15, 2011
                __________________________

      FRANCIS L. CONTE, of Swampscott, Massachusetts, pro
se.

    RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia. With him on the brief were WILLIAM
LAMARCA and SYDNEY O. JOHNSON, JR., Associate Solici-
tors.
               __________________________
IN RE CONTE                                               2


   Before PROST, SCHALL, and MOORE, Circuit Judges.
PER CURIAM.

    Francis L. Conte appeals the decision of the United
States Patent and Trademark Office, Board of Patent
Appeals and Interferences (“Board”) affirming the rejec-
tion of all of the claims of the U.S. Patent Application No.
10/643,288 (“’288 application”), as obvious under 35
U.S.C. § 103. 1 Because the Board correctly determined
that the claims would have been obvious to one of ordi-
nary skill in the art, we affirm.

                       DISCUSSION

    The invention claimed in the ’288 application is a
rubber band gun for swatting and killing insects. As
depicted below, the gun includes an elongated rod (12)
and a handgrip (14). A rubber band (18) is affixed to the
front of the gun using a keyhole slot (30) and to the back
of the gun using a hook (20). When the user pulls the
trigger (24), the hook (20) releases the rubber band (18)
from the back, causing a whip lash that can strike an
insect.




    1   The Board affirmed the Examiner’s rejection of
claims 1, 3, 5, 9-12 and 14-22, reversed the Examiner’s
rejection of claims 6, 8, 13 and 23, and entered new
grounds of rejection for claims 1, 3, 5, 6 and 8-23. The
remaining claims (2, 4 and 7) have been canceled.
3                                               IN RE CONTE




    As demonstrated below, more than one rubber band
may be used in the claimed invention. To achieve that
end, two rubber bands (36 and 38) are knotted together
(34) to form a longer whip. The rubber bands in the
preferred embodiment are standard rubber bands com-
mercially available at common stationary stores.




    Although the Board rejected all of the claims in the
’288 application, Conte’s appeal focuses on the rejection of
claim 1. 2 We thus treat claim 1 as representative. See In



    2    The ’288 application contains apparatus and
method claims. Conte does not make any arguments
specific to the rejected method claims on this appeal.
IN RE CONTE                                               4


re Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir. 1998). Claim
1 recites:

   1. An insect swatter comprising:

    an elongate rod having a proximal end for being
           hand-held, and an opposite distal end for
           being aimed at an insect; and

    an elastic lash including only a pair of identical
           annular rubber bands joined together at a
           knot therebetween, and having a proximal
           end fixedly joined and retained to said rod
           distal end, and an opposite and loose dis-
           tal end sized for being elastically
           stretched from said rod distal end to adja-
           cent said rod proximal end so that release
           of said lash distal end spontaneously con-
           tracts said lash for whipping said lash dis-
           tal end in extended striking range against
           said insect while said lash is retained at
           said rod distal end without disconnection
           therefrom.

    Conte takes issue with the Board’s determination that
claim 1 would have been obvious in light of U.S. Patent
No. 1,779,507 (“White”) and U.S. Patent No. 2,642,057
(“Watkins”). We exercise jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A). We review de novo the Board’s
legal determinations but do not disturb its underlying
fact-findings as long as they are supported by substantial
evidence. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009).

    Under 35 U.S.C. § 103(a), a patent may not issue “if
the differences between the subject matter sought to be
5                                                 IN RE CONTE



patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.” 35
U.S.C. § 103(a). Obviousness is ultimately a question of
law based on several underlying factual inquires, includ-
ing the scope of the prior art, the level of ordinary skill in
the art, the differences between the claimed invention and
the prior art, and certain secondary considerations. In re
Klein, 647 F.3d 1343, 1347 (Fed. Cir. 2011); see also
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

    Here, we agree with the Board’s determination that
the invention claimed in the ’288 application would have
been obvious in light of White and Watkins. Similar to
the claimed invention, White discloses a rubber band gun
that has an elongated body (1), a grip (2), and a trigger
(13). White also discloses that two or three rubber bands
may be “inter-connected” (or knotted together) (19),
stretched along the body of the gun, and secured at its
opposite ends. When the user pulls the trigger, the rub-
ber bands are released from both ends and projected
forward.

    As the Board acknowledged, White does not expressly
teach that its rubber bands are identical. Nonetheless,
the rubber bands in the pertinent drawings in White
(reproduced below) appear to be identical, and nothing in
White suggests that they are not. Moreover, where “a
patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for
another known in the field, the combination must do more
than yield a predictable result.” See KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 421 (2007). Here, Conte does not point
to anything in the record that shows that the use of
identical bands in the claimed invention yields unpredict-
IN RE CONTE                                               6


able results. Therefore, the “identical” limitation in claim
1 does not sufficiently distinguish the claimed invention
from White.




                    White (Side View)




                     White (Top View)


    There is indeed one difference between the claimed
invention and White. Unlike the claimed invention—in
which the rubber band always stays attached at the
front—the rubber band in White is completely released
from the gun when the user pulls the trigger. The prob-
lem for Conte is, however, that Watkins, which discloses
another rubber band gun, provides the missing link.
Similar to the claimed invention, the rubber band in
Watkins is affixed to the front of the gun using a small
slot and hooked in the back using a pin. Watkins teaches
that by selecting a rubber band that is thicker than the
width of the slot, one can ensure that “the rubber band
will not easily become detached from the barrel under
even the most violent manipulation of the gun.”
7                                                IN RE CONTE



     Conte nonetheless points out that the claimed inven-
tion and Watkins teach different types of rubber band
guns. As Conte correctly observes, the claimed invention
uses the rubber band itself to whiplash an insect, whereas
the rubber band in Watkins is attached to a “pusher
element” (or pouch) that catapults a projectile (a pea or a
pellet, for example) toward the target. Conte thus argues
that the Board erred in relying on Watkins to reject the
claimed invention as obvious. We disagree. Watkins
expressly teaches that its “pusher element-equipped
rubber band” may be replaced with a conventional rubber
band. And in any event, “it is not necessary that the
inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983). What matters for
the purpose of our analysis is that Watkins teaches that
the rubber band be affixed to the front of the gun, and in
so doing it teaches the only aspect of the claimed inven-
tion that does not appear in White. In our view, it would
have been obvious to one of ordinary skill in the art to
combine the features of White and Watkins and arrive at
the invention claimed in the ’288 application. Therefore,
the Board’s obviousness rejection is supported by substan-
tial evidence.

                       CONCLUSION

     For the reasons set forth above, the Board’s decision is
affirmed.

                           COSTS

    Each party shall bear its own costs.

                       AFFIRMED
