Ex Parte Behrens

Board of Patent Appeals and Interferences

Jul 30, 2003

08967043 (B.P.A.I. Jul. 30, 2003)

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for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WOLFGANG BEHRENS
____________
Appeal No. 2003-0306
Application No. 08/967,043
____________
ON BRIEF
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Before STAAB, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 23, 25-
27, 29-33 and 37-40, which are all of the claims pending in this application.
We REVERSE.
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Application No. 08/967,043
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BACKGROUND
The appellant’s invention relates to a vegetation element for use in precultivation
or direct on-site sodding. Further understanding of the invention can be obtained from
a reading of claim 23, which is reproduced, infra, in the opinion section of this decision.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Nestor 2,648,165 Aug. 11, 1953
Allen 2,923,093 Feb. 2, 1960
Lippoldt et al. (Lippoldt) 3,516,196 Jun. 23, 1970
Angruner 3,890,910 Jun. 24, 1975
Schmidt 4,272,919 Jun. 16, 1981
Muldner 4,318,248 Mar. 9, 1982
Claims 23, 29, 30 and 37-40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen in view of Muldner.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Allen in view of Muldner and Schmidt.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Allen in view of Muldner, Schmidt and Nestor.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Allen in view of Muldner, Schmidt and Lippoldt.
Claims 31-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Allen in view of Muldner and Angruner.
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Application No. 08/967,043
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and answer (Paper Nos. 23 and 27) for the examiner's complete reasoning in
support of the rejections and to the brief (Paper No. 26) for the appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, for the reasons which follow, we cannot sustain any of the examiner’s
rejections.
Claim 23, the sole independent claim before us in this appeal, reads as follows:
An improved vegetation element having an upper
surface and a lower surface for use when providing uniform
sodding on a surface that is to receive plant growth, said
vegetation element comprising a vegetation carrier layer (a)
of flexible hygroscopic rock wool, and attached thereto a
seed mat (b) of flexible biodegradable material which
contains seeds therein that are secured and held in place at
uniformly spaced locations within said seed mat, wherein
said vegetation carrier layer (a) is positioned below said
seed mat (b).
Each of the examiner’s rejections relies, at least in part, on the basic
determination that it would have been obvious, in view of the teachings of Muldner, to
move the cover layer 9 of Allen’s seed planting mat from above the seed layer (layer 6
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Application No. 08/967,043
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of growing media in which seeds 8 are evenly distributed) to below the seed layer, as
called for in claim 23. The examiner points out that Muldner teaches a vegetation
element comprising a carrier layer 13 positioned below a seed mat 15 to provide
structural integrity to the mat and determines from this disclosure that “[i]t would have
been obvious to one having ordinary skill in the art at the time the invention was made
to position the vegetation carrier layer of Allen below the seed mat of Muldner in order
to provide structural integrity to the vegetation element of Allen” (final rejection, pages
2-3).
The “carrier layer” (base sheet 13) of Muldner comprises a biodegradable
material which is preferably a light tissue paper which “deteriorates rapidly, losing a
substantial portion of its strength upon initial wetting” (column 3, lines 7-9). The cover
layer 9 of Allen, on the other hand, comprises loose fibres, such as natural fibres,
synthetic plastic, glass wool or the like, “capable of felting and subsequently suffering
gradual disintegration on exposure” (column 2, lines 15-17; emphasis ours) and serves
to protect the seed from wind, rain and birds and other garden pests (column 2, lines
61-64).
We fail to perceive any teaching or suggestion in the applied references to
modify Allen’s seed planting mat as proposed by the examiner by moving the cover
layer 9 to a location below the seed layer. First, the cover layer 9 of Allen is located
above the seed layer 6 to protect the seed in layer 6 from wind, rain and birds and other
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1 Where the proposed modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See Tec
Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
pests. Movement of the cover layer to a location below the seed layer would render it
incapable of serving its intended protection function and, thus, would not have been
obvious to one of ordinary skill in the art.1 Moreover, as to the motivation alluded to by
the examiner, namely, to provide structural integrity to the vegetation element of Allen,
a base or backing layer 5 of fibrous material is already provided below the seed layer 6
of Allen for this purpose. From our perspective, the only suggestion for putting the
selected pieces from the references together in the manner proposed by the examiner
is found in the luxury of hindsight accorded one who first viewed the appellant’s
disclosure. This, of course, is not a proper basis for a rejection. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). It follows that we shall not
sustain the examiner’s rejection of claim 23, or claims 29, 30 and 37-40 which depend
from claim 23, as being unpatentable over Allen in view of Muldner.
The above-noted deficiency in the combination of Allen and Muldner finds no
cure in the additional teachings of Schmidt, Nestor, Lippoldt and Angruner. Thus, we
also shall not sustain the rejections of claim 25 as being unpatentable over Allen in view
of Muldner and Schmidt, claim 26 as being unpatentable over Allen in view of Muldner,
Schmidt and Nestor, claim 27 as being unpatentable over Allen in view of Muldner,
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Schmidt and Lippoldt and claims 31-33 as being unpatentable over Allen in view of
Muldner and Angruner.
CONCLUSION
To summarize, none of the examiner’s rejections is sustained. The decision of
the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/dal
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