Ex Parte AikenDownload PDFPatent Trial and Appeal BoardSep 23, 201512500636 (P.T.A.B. Sep. 23, 2015) Copy Citation 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. 12/500,636 07/10/2009 JOHN E. AIKEN JEA 09101 2735 7590 09/24/2015 John E. Aiken 207 Greenvale Dr Monroeville, PA 15146 EXAMINER BANIANI, SHADI SHUNTI ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 09/24/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN E. AIKEN ____________ Appeal 2013-009765 Application 12/500,636 Technology Center 3600 ____________ Before EDWARD A. BROWN, JILL D. HILL, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John E. Aiken (“Appellant”)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 7–13, with the remaining pending claims 1–6 and 14 having been withdrawn from consideration. Br. 2. The Board has jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief identifies Appellant as the real party in interest. Br. 2. Appeal 2013-009765 Application 12/500,636 2 CLAIMED SUBJECT MATTER ON APPEAL Claim 7 is the sole independent claim on appeal:2 7. A plant support apparatus comprising: a) a first elongated substantially hollow and substantially rigid tube having a first predetermined length; b) a plurality of apertures of a predetermined size through a wall of said first elongated rigid tube and spread axially along at least half of said first predetermined length; c) at least two flexible cords of a second predetermined length threaded through at least three of said apertures in said wall of said first elongated tube; d) a tapered end of said first elongated tube shaped substantially to a point; and e) an extension member including: (i) a second elongated substantially hollow and substantially rigid tube having a third predetermined length; (ii) a plurality of apertures of a predetermined size through a wall of said second elongated rigid tube and spread axially along at least half of said third predetermined length of said second elongated tube; (iii) at least one flexible cord of a fourth predetermined length laced through at least two of said apertures in said wall of said second elongated tube; and (iv) a preselected tube coupling means disposed at an end of one of said elongated tubes for removably connecting said first and said second substantially hollow and rigid elongated tubes along a same axis. Br. 19–20. 2 Claims 8, 9, 11, and 12, as set forth in the Claims Appendix of the Appeal Brief, do not specify a parent claim. See Br. 20–21. We understand that omission to be a typographical error, and treat each of these claims as depending directly from claim 7. See Amendment dated Feb. 1, 2012. Appeal 2013-009765 Application 12/500,636 3 REJECTIONS ON APPEAL Claims 7–10 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balousek (US 2,000,911, iss. May 14, 1935) and Delbuguet (US 3,345,774, iss. Oct. 10, 1967). Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balousek, Delbuguet, and Beasley (US 7,627,982 B2, iss. Dec. 8, 2009). ANALYSIS A. Obviousness Rejection based on Balousek and Delbuguet Claims 7, 8, 10, and 13 Appellant argues the Examiner errs in finding Balousek discloses, as recited in claim 7, “at least two flexible cords . . . threaded through at least three of said apertures in said wall of said first elongated tube.” Br. 11 (emphases added). Appellant asserts that claim limitation, when read in light of Appellant’s Specification and drawings, requires “that at least two cords must each be passing through three apertures.” Id. Appellant contends Balousek’s convolution 113 is threaded through only two apertures 6 in stake 1. Id. We are not persuaded of Examiner error in finding Balousek’s Figure 1 shows one cord at 7, 8 connected to another cord at 9 by portion 10. Final Act. 2; Ans. 3–4, 8–9. In support of that finding, the Examiner cites the Balousek written description at page 1, column 2, line 54 through page 2, column 1, line 10. Final Act. 2; Ans. 3–4, 8–9. That description indicates 3 Appellant actually refers to Balousek’s “strip 12,” but clearly intended to refer to Balousek’s convolution 11 which has two ends 12. See Balousek, pg. 2, col. 1, lines 1–6. Appeal 2013-009765 Application 12/500,636 4 Figure 1 shows “a number of convolutions such as at 8 and 9, which are joined together by means of a portion 10.” Balousek, pg. 1, col. 2, line 54 to pg. 2, col. 1, line 1 (emphases added). Appellant’s argument discusses a different convolution 11, disposed above the convolutions 8 and 9 cited in the Examiner’s rejection, and therefore fails to apprise us of error in the Examiner’s finding that convolutions 8 and 9 are two cords. Appellant entirely fails to address convolutions 8 and 9 in the Appeal Brief. Moreover, we are not persuaded by Appellant’s claim construction that claim 7 requires “that at least two cords must each be passing through three apertures.” Br. 11 (emphasis added). The term “each” does not appear in claim 7. Under a broadest reasonable construction, it is sufficient that the two cords in combination pass through at least three apertures. As the Examiner finds, cords 8 and 9 satisfy that claim requirement. Ans. 8–9. Appellant also argues the Examiner errs in finding that Balousek discloses a “cord” as recited in claim 7. Br. 11–12. Appellant submits a dictionary definition of “cord” as meaning “long thin flexible string or rope made from several twisted strands,” “a length of string or rope used to fasten or move a specified object,” or “a flexible insulated cable . . . .” Id. at 22, Evidence App. Appellant contends that common meaning conflicts with Balousek describing its strips of material being “resilient” and “maintained by [their] resiliency in spaced apart relation to” stake 1. Id. at 11 (citing Balousek, claim 2). According to Appellant, if Balousek’s strips were cords, “they would be limp and not stand away” from stake 1. Id. We are not persuaded of Examiner error in finding Balousek’s convolutions 8 and 9 are “cords” as recited in claim 1. Ans. 9–11. In Appeal 2013-009765 Application 12/500,636 5 particular, we are not persuaded that the claim term “cord” connotes to a person of ordinary skill in the art any particular degree of resiliency (or lack thereof), as Appellant urges. Appellant does not cite to any portion of the Specification in support of his construction. Indeed, the Specification indicates a “cord” is preferably a 5/32-inch extruded PVC clothesline, which a person of ordinary skill in the art would understand has some degree of resiliency. Spec. 11:8–9, 14:13–16. The cited dictionary definition establishes, at most, that the ordinary meaning of cord includes some amount of flexibility, but Balousek’s convolutions 8 and 9 are flexible. Balousek, pg. 1, col. 1, lines 23–25. Further, Appellant does not challenge the Examiner’s finding that Balousek indicates its strip of material may be a “reed,” satisfying even the proposed meaning of “cord” as set forth by Appellant. Ans. 11–12 (citing Balousek, pg. 1, col. 2, lines 39–47). Appellant further argues the Examiner errs in determining it would have been obvious to modify Balousek’s stake 1 to include “a tapered end . . . shaped substantially to a point,” as recited in claim 7, in light of Delbuguet. Br. 12–13. According to Appellant, Delbuguet’s tapered tip 22 “is not on an elongated member” such as member 10. Id. at 12. Further according to Appellant, Balousek discloses stake 1 has a slender oval profile so that either end of stake 1 can be driven into the ground, and there is “no motivation to apply the screw-on tip of Delbuguet” to Balousek, which would “in fact impede the insertion of the Balousek stake, not help it.” Id. at 12–13. We are not persuaded of Examiner error in determining it would have been obvious to modify Balousek’s stake 1 to include a tapered end shaped substantially to a point, in light of Delbuguet. As the Examiner points out, Appeal 2013-009765 Application 12/500,636 6 in operation Delbuguet’s tube 10 and tip 22 are attached together and operate as a single member. Ans. 11–12. We also agree with the Examiner that modifying Balousek’s stake 1 to have a tapered end such as shown by Delbuguet’s tip 22 would “provide easier insertion of the stake into the ground” (Final Act. 3), and would improve rather than impede the insertion performance of the stake (Ans. 12). Appellant moreover argues the Examiner errs in determining it would have been obvious to modify Balousek to include an extension member coupled to Balousek’s stake 1 with a threaded connection, thereby satisfying the tube coupling means recited in claim 7, in light of Delbuguet. Br. 13. Appellant contends the coupled tubes 10 and 52 in Delbuguet “are intended to hold a significant amount of water,” whereas Balousek teaches a slender stake 1 with an oval cross section, so applying Delbuguet’s threaded connection to Balousek would render Balousek inoperative for its intended use. Id. Appellant concludes “[i]t is not reasonable or practical to internally thread a non-circular tube like Balousek,” or to expand the upper dimensions of Balousek to hold liquid. Id. We are not persuaded of Examiner error in relation to the claimed coupling means. The Examiner does not propose modifying Balousek to deliver water, so whether it would have been obvious to increase the diameter of Balousek’s stake 1 to hold liquid is not at issue in this appeal. Final Act. 3–4; Ans. 12–13. Further, while the stake illustrated in Balousek’s Figure 1 forms an internal channel that is oval in cross section, Balousek indicates the stake “may be constructed of any size or shape.” Balousek, Fig. 1, pg. 1, col. 2, lines 12–15 (emphasis added). Thus, if necessary, one of ordinary skill in the art would know to modify Balousek’s Appeal 2013-009765 Application 12/500,636 7 stake 1 to have a circular internal channel, in order to achieve the benefits of “allow[ing] a user with the option to extend the apparatus to a desired height so as to accommodate the growing plant being supported by the apparatus.” Final Act. 3–4; Ans. 13. For the foregoing reasons, we are not persuaded of Examiner error in rejecting claim 7 as unpatentable over Balousek and Delbuguet. Claims 8, 10, and 13 fall with claim 7. See Br. 14, 15. We therefore sustain the Examiner’s rejection as to claims 7, 8, 10, and 13. Claim 9 Appellant argues for the patentability of claim 9 separately from its parent claim 7. Br. 14–15. Claim 9 requires that “the fourth predetermined length,” the length of the cord laced through the extension member tube, “is between about 18 and 60 inches.” Br. 19–20. Appellant asserts that, in Delbuguet’s extension member tube 52, “each cord passes through just one aperture 62 and wraps around the tube to support a plant at just one elevation and one contact point.” Id. at 14 (citing Delbuguet, Fig. 1). According to Appellant, “[t]he claimed range would not be practical for Delbuguet,” because as shown in Figure 5 of Appellant’s disclosure, the claimed invention achieves “the desired effect at the extension member 36 of a single cord 18 being able to support two separate branches of a plant at two considerably different elevations.” Id. at 14–15. We are not persuaded of Examiner error. First, as the Examiner notes, claim 9 merely recites a length of the extension member cord, and does not recite that the cord must support two separate branches of a plant at two different elevations. Ans. 14. Further, Balousek discloses a single cord being supported by apertures at multiple elevations on a supporting tube Appeal 2013-009765 Application 12/500,636 8 (Balousek Fig. 1), and Appellant’s arguments do not apprise us of error in the Examiner’s determination that the combination of Balousek and Delbuguet renders the subject matter of claim 9 obvious. Final Act. 4; Ans. 14–15. “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. at 1333; see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (each prior art reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole”). We therefore sustain the rejection of claim 9. B. Obviousness Rejection based on Balousek, Delbuguet, and Beasley Appellant argues for the patentability of claim 12, but not claim 11, separately from their common parent claim 7. Br. 16–17. Claim 12 requires that the “tube coupling means is a slip-fit coupling.” Id. at 21. Appellant asserts a person of ordinary skill in the art “will know that a slip-fit coupling is an unthreaded fitting with internal diameters at each end essentially the same as the outside diameter of the tubes being joined.” Id. at 16–17. Appellant also asserts “Beasley [Figures 3A and 3B] teaches only an integral flared end [14] on the top end of the lower tube [12] to receive an upper extension piece [32].” Id. at 17. According to Appellant, replacing the threaded tube connection of Delbuguet with the tube connection of Beasley is “[n]ot a simple matter of replacing one removable fitting with another.” Id. Appeal 2013-009765 Application 12/500,636 9 We are not persuaded of Examiner error. In particular, we are not persuaded by Appellant’s contention that Beasley discloses “only” the insertion of tube 32 into flared end 14 of tube 12, because Beasley further discloses the insertion provides a “frictional connection.” Beasley, 4:3–12. Such a frictional connection satisfies the “slip-fit” requirement of claim 12. Appellant’s suggestion that the claimed “slip-fit coupling” in claim 12 requires a separate piece from the two tubes being connected is not persuasive; accepting this construction of the claim would improperly read a limitation into the claim from the Specification. Moreover, we agree with the Examiner that replacing the threaded tube connection of Delbuguet with the slip-fit tube connection of Beasley would have been a simple and obvious substitution of known functional equivalents with predictable results. Final Act. 5–6; Ans. 16. For the foregoing reasons, we sustain the rejection of claims 11 and 12 as unpatentable over Balousek, Delbuguet, and Beasley. DECISION The Examiner’s decision rejecting claims 7–13 is affirmed. 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)(iv). AFFIRMED pgc Copy with citationCopy as parenthetical citation