Ex parte Beeson Jr. et al.

Board of Patent Appeals and Interferences

Oct 25, 2001

08614358 (B.P.A.I. Oct. 25, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD C. BEESON JR. et al.
____________
Appeal No. 2001-0386
Application No. 08/614,358
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 3, 4, 6 to 9, 11, 12, 14 to 20, 23, 24 and
26 to 34. Claims 5, 13 and 25 have been objected to as
depending from a non-allowed claim. Claims 1, 2, 10, 21 and
22 have been canceled.
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
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Application No. 08/614,358
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Application No. 08/614,358
In determining the teachings of Schneider, we will rely1
on the translation provided by the USPTO. A copy of the
translation is attached for the appellants' convenience.
BACKGROUND
The appellants' invention relates to a system for
reducing water losses from overhead irrigation of multiple
plant containers by capturing overhead water falling between
adjacent plant containers and directing the water into the
plant containers. A copy of the claims under appeal is set
forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Delany 205,252 June 25,
1878
Coleman, Jr. 2,785,508 Mar. 19,
1957
Weigert 5,142,818 Sep. 1,
1992
Meharg 5,184,421 Feb. 9,
1993
Schneider DE 41 07 233 A1 Sep. 10,1
1992
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Application No. 08/614,358
Claims 3, 4, 6, 9, 11, 12, 14 to 16, 18, 20, 23, 24, 26
to 28, 30 and 32 to 34 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Delany in view of Coleman, Jr.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Delany in view of Coleman, Jr. as
applied above, and further in view of Meharg.
Claims 19 and 31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Delany in view of Coleman, Jr. as
applied above, and further in view of Schneider.
Claims 17 and 29 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Delany in view of Coleman, Jr. as
applied above, and further in view of Weigert.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 15, mailed March 30, 2000) and the answer (Paper No. 18,
mailed September 15, 2000) for the examiner's complete
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Application No. 08/614,358
reasoning in support of the rejections, and to the brief
(Paper No. 17, filed July 28, 2000) and reply brief (Paper No.
19, filed November 6, 2000) for the appellants' arguments
thereagainst.
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Application No. 08/614,358
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 3, 4, 6 to 9,
11, 12, 14 to 20, 23, 24 and 26 to 34. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
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Application No. 08/614,358
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
All the claims under appeal define a system that includes
a plurality of water collection means to capture overhead
water and direct the overhead water to plant containers
wherein the water collection means has an outer mating
perimeter having mating edges configured to abut in a
continuous, contiguous manner with corresponding mating edges
of other water collection means, and where the mating edges of
each water collection means are abutted with mating edges of
adjacent other water collection means to form a continuous
water capture surface such that all overhead water is captured
and directed into the plant containers such that no water
falls between adjacent plant containers. However, these
limitations are not suggested by the applied prior art. In
fact, in the rejections before us in this appeal (final
rejection, p. 3), the examiner did not even find these
limitations to have been obvious at the time the invention was
made to a person of ordinary skill in the art. Instead, the
examiner found, at best, that it would have been obvious at
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Application No. 08/614,358
the time the invention was made to a person of ordinary skill
in the art to shape the outer perimeter of Delany's saucer as
a square or polygonal, and that such a modification would
result in a device capable of abutting against other like
devices in a continuous or contiguous manner. However, the
claims under appeal require more than such capability. As set
forth above, the claims under appeal require a system wherein
the devices (i.e., the water collection means of each
container) abut to form a continuous water capture surface
such that all overhead water is captured and directed into the
plant containers such that no water falls between adjacent
plant containers. However, none of the applied prior art
teaches or suggests these limitations. Thus, the examiner's
rejections have not been supported by evidence that would have
led an artisan to arrive at the claimed invention.
In our view, the only suggestion for modifying Delany to
arrive at the claimed invention stems from hindsight knowledge
derived from the appellants' own disclosure and not the
applied prior art. The use of such hindsight knowledge to
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Application No. 08/614,358
support an obviousness rejection under 35 U.S.C. § 103 is, of
course, impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
For the reasons set forth above, the decision of the
examiner to reject claims 3, 4, 6 to 9, 11, 12, 14 to 20, 23,
24 and 26 to 34 under 35 U.S.C. § 103 is reversed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 8, 23 to 32 and 34 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
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metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Dependent claim 8 is indefinite since it depends from
independent claim 33 and recites that "each said sloping
surface further comprises water relief apertures positioned
near said outer mating perimeter." Claim 8 is indefinite
since it conflicts with claim 33. In that regard, claim 8
recitation of "water relief apertures" which would permit
overhead water to fall between adjacent containers conflicts
with claim 33 recitation that "all overhead water is captured
and directed into said main bodies of said containers such
that no water falls between adjacent said containers."
Claims 23 to 32 and 34 are indefinite since claim 34
lacks proper antecedent basis for "said main bodies." Thus,
the meaning of the phrase "all overhead water is captured and
directed into said main bodies of said containers such that no
water falls between adjacent said containers" is not clear.
This rejection would be overcome if the above-noted phrase
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Application No. 08/614,358
were amended to read -- all overhead water is captured and
directed into said containers such that no water falls between
adjacent said containers --.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 3, 4, 6 to 9, 11, 12, 14 to 20, 23, 24 and 26 to 34
under
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Application No. 08/614,358
35 U.S.C. § 103 is reversed; and a new rejection of claims 8,
23 to 32 and 34 under 35 U.S.C. § 112, second paragraph, has
been added pursuant to provisions of 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, "[a]
new ground of rejection shall not be considered final for
purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/614,358
BRIAN D. OGONOWSKY
SKJERVEN MORRILL MACPHERSON LLP
25 METRO DRIVE
SUITE 700
SAN JOSE, CA 95110
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