Ex Parte Brorson

Board of Patent Appeals and Interferences

Feb 16, 2010

10897630 (B.P.A.I. Feb. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEROY BRORSON
____________________

Appeal 2009-010631
Application 10/897,630
Technology Center 3600
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Decided: February 16, 2010
____________________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claim 21.1 We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

1 Claims 1-20 have been canceled and claims 22-25 have been withdrawn.
(App. Br. 2).
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STATEMENT OF THE CASE
Appellant’s claim is directed to an apparatus for “a combination
planting and irrigation system for a plurality of plants.” (Spec. [0001]).
Specifically, the apparatus allows secondary plants surrounding a primary
plant to be easily exchanged with a tertiary plant. (Id. at [0002]).
Independent claim 21 is the only claim pending in the application.
Claim 21 reads as follows:
21. An apparatus comprising
a first semi-circular component adapted by a first
retaining clip for removable, independent, and lateral
securernent to a first portion of an upper edge of a first plant
container; and
a second semi-circular component adapted by a second
retaining clip for removable, independent, and lateral
securement to a second portion of the upper edge of the first
plant container;
wherein the first semi-circular component and the second
semi-circular component each
have an inner wall, an outer wall, and a floor having a plurality
of holes in a floor;
wherein the first semi-circular component and the second
semi-circular component contain a planting medium for a
plurality of second plants;
wherein when water is added to each semi-circular
component, the water will pass through a planting medium and
through the holes;
wherein the holes are sized such that an excess water will
pass though the holes and irrigate the plant without allowing the
planting medium to pass through he holes; and
wherein the first retaining clip and the second retaining
clip each extend over the upper edge and downwardly outside
the first plant container so each of the first and second semi-
circular components are in contact with portions of an inside
and an outside of the first plant container.

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(App. Br. 12-13, Claims App’x.).

Figures 2 and 8 from the Application, reproduced below,
illustrate the peripheral planting device of the invention. (Spec.
[0012], [0018]).

{Fig. 2 and 8 illustrate a cross-sectional view and a perspective view
of a planting device of the invention. (Id.).}

THE EVIDENCE

The Examiner relies upon the following as evidence in support of the
rejection:
Alwell 4,067,143 Jan. 10, 1978
Matthews 6,516,563 B1 Feb. 11, 2003
Yoon WO 01/80624 A1 Nov. 1, 2001

THE REJECTION

The following rejection is before us for review:
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matthews, Yoon and Alwell.

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ISSUE
Has Appellant established that the Examiner erred in determining that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to combine the known elements of the prior art for their
known functions?
FINDINGS OF FACT
The record supports the following findings of fact by a preponderance
of the evidence.
1. Matthews described a plant container formed of two readily
releasable half-container parts. (Matthews, Abstract).
2. Matthews Figures 2 and 3 are reproduced below:

{Fig. 2 and 3 show sectional and perspective views of the container
assembly of Matthews’ invention. (Id. at 4:5-9).}

3. Matthews described plant container assembly 22 comprising a
decorative container 4 and an upper plant container 24 that sits on the upper
peripheral rim 26 of the lower plant container 6, wherein a central opening
28 allows access of the trunk 16 from a shrub in the lower inner plant
container 6. (Id. at 4:36-47; Fig. 2).
4. Matthews taught that “[a]ny suitable means may be provided to
readily release the upper container.” (Id. at 3:12-13).
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5. Matthews disclosed that “[t]he upper container may be located
adjacent the lower container by any suitable locating/fixing means,
preferably readily releasable. For example, the upper container may be
provided with seating means adapted to sit on a portion of the lower inner
plant container and/or a portion of the lower outer container.” (Id. at 3:44-
49).
6. Alwell described a plant watering device for use with a plant pot.
(Alwell, Abstract).
7. Alwell Figures 2 and 3 are reproduced below:

{Fig. 2 and 3 show perspective and sectional views of the
plant watering device of Alwell’s invention. (Id. at 2:8-14).}

8. Alwell taught that the plant watering device 10 includes a housing
means 26 that is removable from rim 19 of the plant pot 12. (Id. at 2:39-41).
9. Alwell disclosed that “retaining means 35 is downwardly
extending from the housing means 26 to peripherally encompass the rim 19”
so that “the housing means is retained in seated position relative to the plant
pot 12.” (Id. at 2:48-53; Fig. 3).
10. Yoon described a semi-circular removable flower pot having a
plurality of drainage holes 50 at the bottom. (Yoon, Abstract).
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11. Yoon taught that a portion of the divided flower pot incorporates a
clip 40 for engaging a second part of the flower pot. (Id. at 2).
12. Appellant’s Specification states: “As used herein, the term
‘retaining clip’ means a device for securing a peripheral planting system to a
pot.” (Spec. 5:[0021].)
13. Appellant’s Specification describes FIG. 2 as illustrating
peripheral planting device (PPD) 11, which “comprises retaining clip 18.”
(Spec. 6:[0024].)
PRINCIPLES OF LAW
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007).
ANALYSIS
I. The Examiner’s Rejection.
The Examiner found that Matthews described removable first and
second semi-circular components 24 each having an inner wall, an outer
wall and a floor. (Non-Fin. Rej. 6 (dated Aug. 2, 2007), incorporated by
reference in Fin. Rej. 4 (dated Jan. 15, 2008)(citing Matthews, Figs. 2-4 and
8). The Examiner also found that Matthews taught first and second semi-
circular components removably engaged to an upper edge 26 of a first plant
container 6. (Non-Fin. Rej. 4)(citing Matthews, 3:12). According to the
Examiner, the recess located in the lower end of the semi-circular
components which rests upon the upper edge 26 of the first container 6
disclosed by Matthews “is readable as a ‘retaining clip’ as conventionally
accepted (as defined in Dictionary.com Unabridged (v 1.1)), wherein ‘clip’
is defined as to encircle or encompass, and said structure of Matthews as
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depicted clearly encircles or encompasses the upper edge (26) of the first
container (6).” (Id. at 6).
Additionally, the Examiner found that Matthews described an
arrangement for removably fixing the upper container to a lower container
“by any suitable locating/fixing means.” (Fin. Rej. 6). Specifically, the
Examiner found that Matthews taught: “[t]he upper container may be located
adjacent the lower container by any suitable locating/fixing means,
preferably readily releasable, for example, the upper container may be
provided with seating means adapted to sit on a portion of the lower inner
plant container and/or a portion of the lower outer container.” (Id. at
5)(quoting Matthews 3:44-49). According to the Examiner, a “retaining
clip,” as recited in the instant claim, was a “known element known to
improve similar devices in the same way as claimed to yield predictable
results.” (Id. at 4). The Examiner determined that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to have exercised “ordinary creativity, common sense and logic” to
modify Matthews to include such a well known locating/fixing means for its
predictable result. (Id.).
Further, the Examiner found that Alwell taught a plant pot
arrangement comprising an upper container located adjacent to a lower
container whereby the upper container sits on a portion of the lower
container similar to the assembly of Matthews. (Fin. Rej. 6). In particular,
the Examiner found that Alwell provided a known means for locating/fixing
the upper container to the lower container, i.e., “a downwardly directed rim
(36) for retention purposes.” (Id.; Alwell, 2:48-51). The Examiner
determined that it would have been obvious to a person of ordinary skill in
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the art at the time the invention was made to have modified Matthews “with
a downwardly projecting peripheral rim or flange (36) as taught by Alwell,
as a means to removably fix the upper container to the lower container.”
(Fin. Rej. 7). According to the Examiner, such a modification would have
been “the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for
improvement.” (Id.)(quoting Ex Parte Smith, 83 USPQ 2d 1509, 1518-1519
(BPAI 2007)(citing KSR v. Teleflex, 550 U.S. 398, 416-417 (2007)).
The Examiner also found that Matthews taught hole 63 in the side of
the semi-circular components 24 for variable fluid release to prevent
waterlogging. (Id.). Additionally, the Examiner found that Matthews did
not specifically teach a floor having a plurality of holes, as claimed.
However, the Examiner found that Yoon described a semi-circular
removable plant container having a floor with a plurality of holes 50 and
further taught retaining clip 40. (Id.).
II. Appellant’s Contentions.
A. “retaining clip”
Appellant challenges the Examiner’s rejection by asserting that
Matthews fails to teach a “retaining clip,” as claimed. (App. Br. 6-7).
Specifically, Appellant asserts that the Examiner erred in finding that
Matthews’ “means to readily release,” i.e., the recess located in the lower
end of the semi-circular component which rests upon the upper edge 26 of
the first container 6 disclosed by Matthews, meets the recitation of a
“retaining clip.” (Id.). According to Appellant, a clip is “a device that grips
and holds tightly” and “Matthews’s ‘means to readily release’ does not grip
anything and does not hold anything tightly.” (Id.)(citing an online
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dictionary). Appellant asserts that “the only ‘means to readily release’
disclosed by Matthews is a ‘seating means’….” (Id.). In the Reply Brief,
Appellant further asserts that Matthews’ seating means, as a single section,
is not laterally secure, as claimed. (Reply Br. 2-3).
We agree with Appellant that the “seating means” described by
Matthews is not a “clip” within the dictionary meanings, i.e., “a device that
grips and holds tightly,” or “encircles or encompasses.” (see App. Br. and
Ans. 15, acknowledging dictionary includes both definitions). However,
Matthews described the “seating means” as an exemplary method of fixing
the containers.
To interpret the meaning of claim 21’s “retaining clip” we look first to
the Specification, which defines retaining clip simply by its intended
purpose. (FF12.) Figure 2 is informative, and shows retaining clip 18,
which simply encircles or encompasses the rim of a flower pot. (FF13.)
Matthews stated that “[t]he upper container may be located adjacent
the lower container by any suitable locating/fixing means, preferably readily
releasable.” (Fin. Rej. 5)(quoting Matthews, 3:44-49)(emphasis added). The
Examiner found that a “retaining clip” was well known in the art at the time
of the invention, as evidenced by Alwell and Yoon, to be an effective means
of retaining, i.e., fixing, components in a readily releasable fashion. (See
Fin. Rej. 5). For example, Alwell taught a planter arrangement wherein the
upper container sits on a portion of the lower container similar to the
assembly of Matthews. (See FF 7-8). The Examiner found that Alwell
utilized a well known means for locating/fixing the upper container to the
lower container, i.e., a “retaining means 35” downwardly extending to
encompass the rim with a flange 36. (Fin. Rej. 6; Alwell, 2:48-51). The
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Examiner reasoned that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to have modified
Matthews with a downwardly projecting peripheral rim or flange 36 as
taught by Alwell, as a means to removably fix the upper container to the
lower container. (Fin. Rej. 7). This simple substitution of one known
element for another known element in the art meets the instant
Specification’s definition of a “retaining clip”, i.e., a “a device for securing a
peripheral planting system to a pot.” (Spec. 5:[0021].) Further, in addition
to performing the function of the claimed retaining clip, Alwell’s retaining
means also looks like the disclosed embodiment of the claimed element.
(Compare Alwell Fig. 3, element 36 with Spec. Fig. 2, element 18).
Therefore, we agree with the Examiner’s conclusion that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to have exercised “ordinary creativity, common sense
and logic” to modify Matthews to include a well known locating/fixing
means such as Alwell’s encircling or encompassing downward flange 36 to
achieve a removable, independent and laterally secure arrangement. (Fin.
Rej. 4).
B. “semi-circular components are in contact with portions of an
inside and an outside of the first plant container”
Appellant asserts that the combination of Matthews and Alwell fails to
teach that “each of the first and second semi-circular components are in
contact with portions of an inside and an outside of the first plant container,”
as claimed. (App. Br. 7-8). According to the Appellant, Matthews depicts
only that the upper plant container 24 contacts the top of lower plant
container 6, and is silent regarding the upper plant container 24 contacting
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the inside of lower plant container 6. (Id. at 7). Appellant further asserts
that Matthews depicts a space between the upper plant container and the
interior of the lower plant container and argues that if the upper container
contacted the inside of the lower container, “the friction from this contact
would diminish the ability of upper plant container 24 to be readily
released.” (Id. at 8). Additionally, Appellant asserts that “while Alwell
teaches plant watering device 10 contacting the top of plant pot 12, Alwell
fails to teach plant watering device 10 contacting the exterior of plant pot
12.” (Id.). Further, Appellant asserts that Alwell depicts a space between
the plant watering device 10 and the plant pot 12 and argues that if the
watering device was in contact with the outside of the plant pot, “the friction
from this contact would diminish the ability of the plant watering device 10
to be readily removed.” (Id.).
These arguments are unpersuasive as they treat each reference in
isolation. Instead, each reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
Examiner determined that it would have been obvious to modify Matthews’
apparatus to include well known retaining means. In view of the Matthews
and Alwell disclosures together, it is reasonable and predictable that such a
modification by a skilled artisan would have resulted in an apparatus
wherein the retainer clips extend over the upper edge and downwardly
outside the first plant container so each of the first and second semi-circular
components are in contact with portions of an inside and an outside of the
first plant container for secure positioning, i.e., “locating/fixing.” It is well
settled that “[i]If a person of ordinary skill can implement a predictable
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variation, § 103 likely bars its patentability.” KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
We are also unpersuaded by Appellant’s further assertion that
modifying Matthews’ upper plant container 24 to contact both the inside and
outside of lower plant container 6 would diminish the ability of the upper
plant container 24 to be readily released due to “friction from the contact.”
(Id. at 9). This assertion is merely attorney argument and not supported by
evidence. In particular, Appellant has not provided any evidence to establish
that if any “friction” resulted from the positioning of the retaining clip, it
would prevent the clip from being readily releasable, as described by
Matthews. We find it would have been within the level of skill reflected by
the Matthews and Alwell disclosures to adapt retaining clips so that the
original functionality of both devices would have been preserved.
CONCLUSION OF LAW
On the record before us, Appellant has not shown error on the part of
the Examiner. It would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine the known elements of the
prior art for their known functions.
DECISION
The rejection of claim 21 under 35 U.S.C. §103(a) as being
unpatentable over Matthews, Yoon and Alwell is AFFIRMED.

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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) (2006).

AFFIRMED

lp

DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS TX 75380