Ex Parte CoxDownload PDFPatent Trials and Appeals BoardMay 22, 201914229615 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/229,615 03/28/2014 27939 7590 05/22/2019 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 FIRST NAMED INVENTOR Daniel S. Cox 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BPNGD0005NG.Pl 2980 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 05/22/2019 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 Exparte DANIELS. COX Appeal2018-007824 Application 14/229,615 Technology Center 3600 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel S. Cox ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 2, 4, 5, 8-13, 16-56, 62, 63, and 68. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Klondike Agricultural Products LLC is the Applicant and is identified as the real party in interest. Appeal Br. 2. Appeal2018-007824 Application 14/229,615 THE CLAIMED SUBJECT MATTER Appellant's invention relates to an agricultural system including a container containing a medium and a plant source. Spec. ,r 2. Sole independent claim 1, reproduced below, is representative: 1. A system, comprising: a container, defining a boundary between an interior region, interior to the container, and an exterior of the container; a binder contained in the interior region of the container; one or more additives bound to the binder; and a plant seed contained in the interior region of the container. REJECTI0NS 2 1. Claims 1, 2, 4, 5, 8-12, 16, 18, 21, 23, 34--42, 44, 45, and 52- 56 are rejected under 35 U.S.C. §§ 102(a)(l) and 102(a)(2) as being anticipated by Nilsson (US 4,628,633, issued Dec. 16, 1986). 2. Claims 13, 22, 46, and 51 are rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Motoyama (US 4,769,945, issued Sept. 13, 1988). 3. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Carlson (US 5,732,505, issued Mar. 31, 1998). 4. Claims 19 and 24--32 are rejected under 35 U.S.C. § 103 as unpatentable over Nilsson. 5. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Kouno (US 4,808,430, issued Feb, 28, 1989). 2 Claim 57 is listed as pending in the Claims Appendix. Appeal Br. 70 (Claims App.). Both the Non-Final Rejection and the Appeal Brief, however, indicate that claim 57 is withdrawn. Non-Final Act. 1; Appeal Br. 12. 2 Appeal2018-007824 Application 14/229,615 6. Claims 33, 47, and 48 are rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Hartle (US 2003/0101643 Al, published June 5, 2003, "Hartle '643"). 7. Claim 43 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and McKenzie (US 3,973,355, issued Aug. 10, 1976). 8. Claim 49 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Hartle (US 6,119,395, issued Sept. 19, 2000, "Hartle '395"). 9. Claim 50 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson, Hartle '395 and Motoyama. 10. Claim 62 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Redenbaugh (US 4,779,376, issued Oct. 25, 1988). 11. Claim 63 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Kohno (US 6,112,457, issued Sept. 5, 2000). 12. Claim 68 is rejected under 35 U.S.C. § 103 as unpatentable over Nilsson and Corak (US 2010/0263274 Al, published Oct. 21, 2010). 13. Claims 1, 2, 4, 5, 10-13, 16, 18-23, 28, 34--40, 44--46, and 51- 56 are rejected under 35 U.S.C. § 103 as unpatentable over Motoyama and Kouno. 14. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and Bissonnette (US 2005/0102895 Al, published May 19, 2005). 15. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and Carlson (US 5,732,505, issued Mar. 31, 1998). 16. Claims 24--27 and 29-32 are rejected under 35 U.S.C. § 103 as unpatentable over Motoyama and Kouno. 3 Appeal2018-007824 Application 14/229,615 17. Claims 33, 47, and 48 are rejected under 35 U.S.C § 103 as unpatentable over Motoyama, Kouno, and Hartle '643. 18. Claims 41--43 are rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and McKenzie. 19. Claims 49 and 50 are rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and Hartle '395. 20. Claim 62 is rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno 3, and Redenbaugh. 21. Claim 63 is rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and Kohno. 22. Claim 68 is rejected under 35 U.S.C. § 103 as unpatentable over Motoyama, Kouno, and Corak. DISCUSSION Rejection 1 Claims 1, 2, 4, 5, 8, 10, 12, 16, 18, 21, 23, 44, 45, 52-54, and 56 Appellant argues that Nilsson is not anticipatory because Nilsson only has two components, namely, a seed and a seed ball ( container) whereas claim 1 recites four elements. Appeal Br. 21. According to Appellant, Nilsson does not disclose a binder in the interior of the container. Id. at 22. Appellant asserts that Nilsson's coating is not a container because it is optional and is described as a syrup of sugar and its equivalents, which are not "capable of containing anything." Id. at 22-23. Appellant contends that 3 The Examiner's omission of Kouno from the heading of Rejection 20 is understood to be a typographical error in that Kouno is discussed in the body of the rejection. 4 Appeal2018-007824 Application 14/229,615 under a broadest reasonable interpretation consistent with the Specification, Nilsson's coating is not a container, because it does not protect the seed from harm, and because the Specification distinguishes between a coating and a container in that a coating is applied to the container. Id. at 24--25 (citing Spec. ,r,r 39 and 65). According to Appellant, because Nilsson's coating is an unreasonably broad interpretation of the term "container" when read in light of the Specification, the Examiner's anticipation rejection is improper. Id. at 25-27. The Examiner responds that Nilsson's filter paper shell is a container consistent with the Specification because it "seals the binder and seed from the external environment," consistent with Appellant's disclosure of containers that "provide different levels of protection." Ans. 3 ( citing Spec. ,r 39). Appellant reiterates that Nilsson's "filter paper" is not a container consistent with the Specification because it does not protect the seed from harm. Reply Br. 19. For the reasons set forth below, we are not persuaded of Examiner error. Claim 1 requires four components, namely, 1) a container, 2) a binder inside the container, 3) an additive bound to the binder, and 4) a plant seed in the container. Nilsson discloses that peat is a binder (Nilsson, 3: 13-14 ), that the peat may be mixed with additives (id. 4:23-24), and that a seed 5 is within the peat. Nilsson, Fig. 1. Thus, the Examiner correctly finds that Nilsson discloses components 2}-4). Nilsson further discloses that the peat may be formed as a seed ball that "may be provided with a shell in the form of thin paper." Id. 5:12-13. Although Nilsson discloses that the shell could be filter paper, Nilsson discloses that the shell is "a protective shell." Id. 5 Appeal2018-007824 Application 14/229,615 6:62. This is consistent with Appellant's Specification, which discloses that "[t]he container provides a protective environment, which may also shield the seed from harm and help ensure that nutrients and the like required by the seed/plant remain available to the seed/plant. The container may be designed in different ways to provide different levels of protection." Spec. ,r 39; see also Ans. 3. We agree with the Examiner that Nilsson's shell provides some protection to the seed within. Moreover, the Specification discloses that the container may be permeable to water, biodegradable, and formed from a vegetable protein material. Id. ,r,r 54 and 61---62. Appellant does not explain adequately why Nilsson's filter paper would protect the seed any less than Appellant's permeable, biodegradable container. Because we agree with the Examiner that Nilsson's shell provides some level of protection consistent with the Specification, the Examiner's finding that Nilsson's shell is a container is supported by a preponderance of the evidence. As such, Nilsson discloses each of components 1 }-4 ), as the Examiner finds. Accordingly, we sustain the rejection of claim 1. Appellant does not separately argue claims 2, 4, 5, 8, 10, 12, 16, 18, 21, 23, 44, 45, 53, 54, and 56, which depend from claim 1, and we sustain the rejection of these claims for the same reason. Claim 9 Appellant argues that Nilsson's color coating, which acts as a deterrent to noxious animals, is not an indicium as recited because it does not "correspond[ s] to a particular type of one or more of the binder, the additives, the seed, or the environment in the container containing the binder, the additives, or the seed." Appeal Br. 28. 6 Appeal2018-007824 Application 14/229,615 The Examiner responds that Nilsson's "colors are specific to the environment in which the container is disposed since these colors are used to not attract the wildlife in the environment to the container when the container is disposed in the environment for planting." Ans. 4. For the reasons discussed below, Appellant's arguments are not persuasive. Nilsson discloses that the seed capsule may be "coloured in a suitable colour, e.g. blue, in order not to be attractive to noxious animals." Nilsson, 3:23-25. Appellant's Specification discloses that the "term 'particular type' of an object may refer to a particular characteristic or property of the object." Spec. ,r 105. The Specification further discloses that "[t]ypes of environment may refer to geographic region, climate, soil type, type of field, types of neighboring plants, types of prevalent insects or other animals, pathogens, or plant diseases, or any other feature of the environment in which container 56a/56b containing the aforementioned contents is to be planted." Id. Here, Nilsson's particular type of object is a blue object, and the type of environment refers to a prevalent type of animal, namely, noxious animals. We, therefore, sustain the rejection of claim 9 because Nilsson's indicium is consistent with how the Specification describes "indicia. "4 4 As a preponderance of the evidence supports the Examiner's finding that Nilsson discloses an indicium corresponding to a particular type of environment in which the container is to be disposed, we need not address whether the information carried by the indicium recited in claim 9 is functionally related to the substrate upon which the indicium is located. In other words, even assuming, arguendo, that the information included in the indicium carries patentable weight and the indicium is not merely non- functional descriptive material, this limitation is met by Nilsson. 7 Appeal2018-007824 Application 14/229,615 Claim 11 Appellant argues that Nilsson does not disclose a container the size of a pharmaceutical capsule. Appeal Br. 28. The Examiner responds that the capsule shown in Figure 1 of Nilsson is about the size of a pharmaceutical capsule because it is slightly larger than the seed and because Nilsson discloses a size of the capsule of 5 to 12 mm. Ans. 4 (citing Nilsson, 3:1-12). Appellant replies that the disclosure of Nilsson relied on by the Examiner relates to ball-shaped or spherical seed balls, whereas a pharmaceutical capsule includes a cylinder as well as hemispherical ends. Reply Br. 19. Appellant's arguments are not persuasive. Although the preferred shape of Nilsson is ball-shaped or spherical, Nilsson discloses that the shape of the capsule "may vary" and be "ball- shaped, oval, cubic, etc." Nilsson, 2: 1-2. "The size of the cover, of course, depends on the kind of seed used and may thus vary from, for example, a few centimeters to a few millimeters." Id. 2:66-68. Given that an oval shaped capsule having a size of a few millimeters is disclosed by Nilsson, the Examiner's finding that Nilsson discloses a container that is approximately the size of a pharmaceutical capsule is supported by a preponderance of the evidence. We, therefore, sustain the rejection of claim 11. Claim 34 Appellant argues that because Nilsson does not teach a binder, "Nilsson fails to teach any component that both retains, and limits the release of, water." Appeal Br. 29. According to Appellant, Nilsson only discloses 8 Appeal2018-007824 Application 14/229,615 swelling, but does not disclose retaining and limiting the release of water. Id. The Examiner responds that the binder in Nilsson is a peat material which naturally retains water and limits the release of water over time. Ans. 4. Appellant replies that Nilsson's disclosure only suggests that peat retains water, but does not disclose that water is released or that the release is limited. Reply Br. 20. Appellant's argument is not persuasive. Nilsson discloses that peat is a hydrophilic material that absorbs water. Nilsson, 1 :44--46. Nilsson further discloses that the peat provides the "necessary germination components water, oxygen and light." Id. 1 :49-52. Given that Nilsson discloses that germination occurred after 14 days (id. 7:23-26), one of ordinary skill would understand that the peat provided the necessary germination component of water for 14 days and limited the release of water over that time period. Nilsson also discloses that the peat "provide( s) the desired protection and the moist or humid environment around the seed." Id. 3:4---6. This is consistent with Appellant's Specification, which discloses binder materials that are hydrophilic and retain water that "may be slowly released from the binder." Spec. ,r 73. Indeed, Appellant lists peat among the disclosed binders (see id. ,r 68) that function to retain and release water. Appellant does not apprise us of Examiner error on this point. We, therefore, sustain the rejection of claim 34. Claim 35 Appellant argues that Nilsson's disclosure of swelling does not suggest "control of the release of water at a variable rate that depends on a 9 Appeal2018-007824 Application 14/229,615 moisture content of the environment of the binder." Appeal Br. 30; see also Reply Br. 20. The Examiner responds that Nilsson's peat "will provide for a variable release of water in that the amount of water available to the binder and seed will vary based on the environmental conditions in which the binder and seed are placed." Ans. 4. The Examiner has the better position here. Nilsson discloses that ground was prepared and "was continually kept moist" with peat capsules arranged on the surface. Nilsson, 7:16-20. The Specification discloses that the "release [ ofJ water at a variable rate" is based on changing the relative humidity of the air surrounding the binder, or the moisture content of a growing medium in contact with the binder. Spec. ,r 73. We see no reason why Nilsson's disclosure of a moist growing medium (ground) would not result in a variable rate of water release based on the environmental conditions (moisture content) in which the binder and seed are placed, as the Examiner finds. We, therefore, sustain the rejection of claim 35. Claim 36 Appellant argues that Nilsson does not disclose "control of the release of water that is controllable by an operator, as set forth in claim 36." Appeal Br. 30. In response, the Examiner states that "the operator can control how much water is provided to the seed capsules." Ans. 4--5. Appellant's argument is not persuasive for the following reasons. The Specification discloses that "the release of water from binder 54 may be controlled by an operator" by changing the relative humidity of the air surrounding the binder, or the moisture content of a growing medium in 10 Appeal2018-007824 Application 14/229,615 contact with the binder. Spec. ,r 73. Given that Nilsson discloses that the ground "was continually kept moist" (Nilsson, 7: 16-17), one of ordinary skill in the art would understand that an operator could control the release of water from the binder. As such, the Examiner's finding that "the operator can control how much water is provided to the seed capsules" (Ans. 4--5) is supported by a preponderance of the evidence. We, therefore, sustain the rejection of claim 36. Claims 37-40 and 55 Appellant argues that Nilsson does not disclose a binder operable to retain the additive and to limit the release of the additive over time, because Nilsson does not disclose a binder, and because "the word 'release' is never used in Nilsson's disclosure." Appeal Br. 30-33. We treat these claims together because Appellant's arguments for each of claims 37--40 and 55 is premised on Nilsson's failure to use the word "release." Id. The Examiner responds that Nilsson's binder "limits release of the additive in that fertilizers such as the nutritive salts disclosed are designed to time release and thus have limited release as they slowly release nutrients to the seed when combined with water." Ans. 5. Appellant replies that the portions of Nilsson relied on by the Examiner do not "mention whatsoever of limiting release of additives. Nor is there a description of the mechanism limiting their release. To the contrary, the passages suggests that all additives are retained within the capsule." Reply Br. 21. Appellant's arguments are not persuasive. Nilsson discloses that the peat binder may be mixed with additives. Nilsson, 4:21-23. Nilsson also discloses that the ground having peat 11 Appeal2018-007824 Application 14/229,615 capsules thereon "was continually kept moist." Id. 7: 16-20. The Specification discloses that the "release of water and additive 60" is based on changing the relative humidity of the air surrounding the binder, or the moisture content of a growing medium in contact with the binder. Spec. ,r,r 7 5-7 6. Although we appreciate that Nilsson does not use the term "release," given that Nilsson has a germination period of about 14 days (Nilsson, 7 :25-26), and discloses additives including "nutrients ... fungus cultures for keeping harmful insects away [ and] germination inhibitors for germination not to be initiated to early (id. 3: 19-23), Appellant does not explain adequately why Nilsson's additives are not designed to time release or release at a variable rate, and thus, have limited release as they slowly release nutrients to the seed when combined with water, as required by claims 37, 38, 40, and 55. Cf Spec. ,r 82. Moreover, one of ordinary skill in the art would understand that it is an operator, as required by claim 39, that controls the moisture level so that the ground "was continually kept moist." Nilsson, 7: 16-17. Appellant's arguments do not apprise us of Examiner error. We, therefore, sustain the rejection of claims 37--40 and 55. Claims 41 and 42 The Examiner finds that Nilsson discloses a growing medium in the interior regions, namely peat which is also organic. Non-final Act. 6 (citing Nilsson, 4:20--40). Appellant does not dispute that peat is an organic growing medium but argues that claims 41 and 42 each includes a fifth element, namely, growing medium, and that the Examiner improperly relies on Nilsson's seed pellet to be both the growing medium and the binder. Appeal Br. 32-33. 12 Appeal2018-007824 Application 14/229,615 The Examiner responds that peat is the binder and that "paper fibers which is mixed with the peat material can be considered the growing medium." Ans. 4--5 ( citing Nilsson 4:21-25, 5: 1-25, Fig. 1 ). Appellant does not dispute these findings in the Reply Br. See Reply Br. Appellant's arguments are not persuasive for the following reasons. Nilsson discloses that the binder, peat, can be combined with other materials, "such as, for example, paper fib[ ers ]." Nilsson, 2:59---65; see also Ans. 5. Given that paper fibers are disclosed by Nilsson as an exemplary medium for germinating seeds (growing medium), we are not persuaded that paper fibers mixed with peat is not a growing medium or an organic growing medium. We, therefore, sustain the rejection of claims 41 and 42. Rejection 2; Claims 13, 22, 46, and 51 Claim 13 The Examiner finds that Nilsson does not disclose a sterile container but that Motoyama does. Non-Final Act. 8. The Examiner concludes that it would have been obvious to make the container of Nilsson sterile "to yield the predictable result of increasing the viability of the plant tissue/seed." Id. Appellant argues that the Examiner's "stated motivation for making the combination constitutes nothing more than a short, conclusory statement in violation ofMPEP §2142." Appeal Br. 36. According to Appellant, the rejection is improper because the Examiner does not provide an explanation for the rejection or evidence to support the rejection. Id. at 37-38. The Examiner replies that because Nilsson and Motoyama "have similar function and structure," one of ordinary skill in the art would understand that when modifying the device of Nilsson based on the 13 Appeal2018-007824 Application 14/229,615 disclosure of Motoyama, the functions of Motoyama would act similarly in the device of Nilsson to yield predictable results with respect to seed viability. Ans. 6; see also Non-Final Act. 8-9. Appellant's arguments are not persuasive. Motoyama discloses a closed type container in order to "maintain the interior in a sterile condition for a given time and to so design that the sterile condition is broken after plant bodies are germinated or grown." Motoyama, 5:51-53; see also Non- Final Act. 8. Motoyama further discloses that for open type containers, "contamination from the outside [is prevented] by adding fungicide and/or bactericide." Motoyama, 5:54--56. Thus, Motoyama discloses different ways to ensure seed germination depending on the container. In light of this disclosure, Appellant does not provide persuasive evidence or technical reasoning to support its assertion that Motoyama's sterile material does not "yield the predictable result of increasing the viability of the plant tissue/seed," as the Examiner determines. Appellant provides no persuasive reason why a person of ordinary skill in the art could not have implemented sterile material in Nilsson's device. Nor do we see why the results of using sterile material would have been unpredictable. The Examiner is correct in concluding that using sterile material would have been obvious. Claim 22 The Examiner finds that Nilsson does not disclose that the binder does not completely surround the plant seed, but that Motoyama does. Non-Final Act. 8. The Examiner concludes that it would have been obvious to modify the binder of Nilsson so that it does not completely surround the plant seed "to yield the predictable result of allowing for other items to be placed into the container." Id. 14 Appeal2018-007824 Application 14/229,615 Appellant argues that the Examiner's "stated motivation for making the combination constitutes nothing more than a short, conclusory statement in violation ofMPEP §2142." Appeal Br. 36. According to Appellant, the rejection is improper because the Examiner does not provide an explanation for the rejection or evidence to support the rejection. Id. at 37-38. The Examiner responds that because Nilsson and Motoyama "have similar function and structure," one of ordinary skill in the art would have understood that when modifying the device of Nilsson based on the disclosure of Motoyama, the functions of Motoyama would act similarly in the device of Nilsson to yield predictable results with respect to placing items into the container. Ans. 6; see also Non-Final Act. 8-9. Appellant's arguments are not persuasive. Motoyama discloses that the binder does not completely surround the plant tissue. Motoyama, Figs. 1-3. Motoyama also discloses a "plurality of meristematic tissues" in a vessel. Id. at 5:41--42; Fig. 7. In light of this disclosure, Appellant does not provide persuasive evidence or technical reasoning to support its assertion that Motoyama' s binder does not "yield the predictable result of allowing other items to be placed in the container," as the Examiner finds. We do not see why a person of ordinary skill in the art could not have implemented a binder that does not completely surround the plant tissue in Nilsson's device nor why the results of using a binder that does not completely surround the plant tissue would have been unpredictable. The Examiner is correct in concluding that using a binder that does not completely surround the plant tissue would have been obvious. Claim 46 15 Appeal2018-007824 Application 14/229,615 The Examiner finds that Nilsson does not disclose an antimicrobial agent but that Motoyama does. Non-Final Act. 8. The Examiner concludes that it would have been obvious to use an antimicrobial agent in the device of Nilsson "to yield the predictable result of enhancing the viability of the plant tissue/seed." Non-Final Act. 9. Appellant argues that the Examiner's "stated motivation for making the combination constitutes nothing more than a short, conclusory statement in violation ofMPEP §2142." Appeal Br. 36. According to Appellant, the rejection is improper because the Examiner does not provide an explanation for the rejection or evidence to support the rejection. Id. at 37-38. The Examiner replies that, because Nilsson and Motoyama "have similar function and structure," one of ordinary skill in the art would have understood that modifying the device of Nilsson based on the disclosure of Motoyama, the functions of Motoyama would act similarly in the device of Nilsson to yield predictable results with respect to seed viability. Ans. 6; see also Non-Final Act. 8-9. Appellant's arguments are not persuasive for the following reasons. Motoyama discloses that an additive comprises an antimicrobial agent, namely, a bactericide. Motoyama, 3:56-65; see also Non-Final Act. 8. Motoyama further discloses that other additives include nutrients and water-retaining agents. Id. Given that Nilsson also discloses additives including nutrients and wetting agents for improved germination (Nilsson, 3: 19-23), Appellant does not provide persuasive evidence or technical reasoning to support its assertion that Motoyama's antimicrobial additive does not "yield the predictable result of increasing the viability of the plant tissue/seed," as the Examiner finds. We do not see why a person of ordinary 16 Appeal2018-007824 Application 14/229,615 skill in the art could not have implemented an antimicrobial additive in Nilsson's device nor why the results of using an antimicrobial additive would have been unpredictable. The Examiner is correct in concluding that using an antimicrobial additive would have been obvious. Claim 51 The Examiner finds that Nilsson does not disclose a pH adjusting agent but that Motoyama does. Non-Final Act. 9. The Examiner concludes that it would have been obvious to add a pH adjusting agent to the binder of Nilsson "to yield the predictable result of enhancing the viability of the plant tissue/seed." Id. Appellant argues that the Examiner's "stated motivation for making the combination constitutes nothing more than a short, conclusory statement in violation ofMPEP §2142." Appeal Br. 36. According to Appellant, the rejection is improper because the Examiner does not provide an explanation for the rejection or evidence to support the rejection. Id. at 37-38. The Examiner responds that because Nilsson and Motoyama "have similar function and structure," one of ordinary skill in the art would have understood that modifying the device of Nilsson based on the disclosure of Motoyama, the functions of Motoyama would act similarly in the device of Nilsson to yield predictable results with respect to seed viability. Ans. 6; see also Non-Final Act. 9. Appellant's arguments are not persuasive for following reasons. Motoyama discloses that an additive comprises a pH adjusting agent. Motoyama, 3:57---61; see also Non-Final Act. 9. Motoyama further discloses that other additives include nutrients and water-retaining agents. Id. Given 17 Appeal2018-007824 Application 14/229,615 that Nilsson also discloses additives including nutrients and wetting agents for improved germination (Nilsson, 3: 19-23), Appellant does not provide persuasive evidence or technical reasoning to support its assertion that Motoyama's pH adjusting agent does not "yield the predictable result of enhancing the viability of the plant tissue/seed," as the Examiner finds. Appellant provides no persuasive reason why a person of ordinary skill in the art could not have implemented a pH adjusting agent in Nilsson's device. Neither does Appellant provide any persuasive reason why the results of using a pH adjusting agent would have been unpredictable. The Examiner is correct in concluding that using a pH adjusting agent would have been obvious. Rejections 3 and 8-12; Claims 17, 49, 50, 62, 63, and 68 Appellant, without more, argues that "the rationale supporting making the combination in each rejection is nothing more than a conclusory statement." Appeal Br. 38. The Examiner states that the motivation is proper because it would "yield the predictable result of facilitating growth of the plant tissue." Non- Final Act. 9 and 12-14; see also Ans. 6-7. In each of rejections 3 and 8-12, the Examiner proposes to modify Nilsson's binder based on the additional references disclosing the missing limitations in their binders. Non-Final Act. 9 and 12-14. Appellant provides no persuasive reason why a person of ordinary skill in the art could not have modified Nilsson's binder as the Examiner suggests. Neither does Appellant provide any persuasive reason why the results of the Examiner's modification would have been unpredictable. Appellant, thus, fails to persuasively apprise us of error in the Examiner's rationale. KSR Int 'l Co. v. 18 Appeal2018-007824 Application 14/229,615 Teleflex, Inc., 550 U.S. 398,416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). We, therefore, sustain the rejection of claims 17, 49, 50, 62, 63, and 68. Rejection 4; Claims 19 and 24-32 Claim 19 The Examiner finds that, although Nilsson does not disclose a mass of the container of not more than approximately 73 5 mg, because the claimed mass is not critical, it would have been obvious to make the container "any desired size to hold any desired mass of material including the claimed mass of material, to yield the predictable result of providing the proper amount of additive to the plant to facilitate growth of the plant." Non-Final Act. 10. Appellant argues that there is "no requirement that 'criticality' be specified in a specification disclosure for patentability of a claim." Appeal Br. 34. Appellant thus argues that because the Examiner admits that "the prior art fails to teach the limitations ... the claim is allowable." Id. The Examiner responds that because the mass of Nilsson's seed capsule would be small given the sizes of the capsules disclosed by Nilsson, it would have been obvious "to make the capsule any desired mass." Ans. 6. The Examiner has the better position. In a case, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454,456 (CCPA 1955). If the Examiner shows that the general conditions are disclosed in the prior art, Appellant has the burden to show the criticality of the claimed range to establish patentability. Id. This 19 Appeal2018-007824 Application 14/229,615 rule is limited to cases in which the optimized variable is a "result-effective variable." In re Antonie, 559 F.2d 618, 620 (CCPA 1977). In this case, Nilsson discloses "oval" capsules and that the diameter of the capsule is "about 5-12 mm." Nilsson, 2:2, 3:2. One of ordinary skill in the seed container art would thus understand that Nilsson discloses the general conditions of size of the container (capsule). Nilsson further discloses that "[t ]he size of the cover [capsule], of course, depends on the kind of seed used and may thus vary from, for example, a few centimeters to a few millimeters." Id. 2:66-68. Thus, the size of the container is recognized in Nilsson as a result-effective variable. The Specification discloses that"[ w ]here the size of container 56a, 56b is identical or similar to that of a pharmaceutical capsule (for human ingestion), container 56a, 56b may hold approximately 73 5 mg of material." Spec. ,r 60. For "larger sizes ... the mass ... may be increased accordingly." Id. Given that Nilsson discloses a capsule (container) similar in size to a pharmaceutical capsule, and discloses that the size of the capsule varies depending on the seed type, we agree with the Examiner that determining a mass for the contents of the container, as recited in claim 19, would have been obvious to one of ordinary skill in the art unless Appellant can establish the criticality of the recited mass. We, therefore, sustain the rejection of claim 19. Claims 24-32 Claims 24--32 recite various binders. The Examiner's position is that, because Nilsson discloses that the binder material contains natural materials, polymers, absorbent materials, and plant growth materials, it would have been obvious to use "any suitable binder material [in Nilsson] including each of the claimed binder materials of claims 24--32, to yield the predictable 20 Appeal2018-007824 Application 14/229,615 result of protecting the plant tissue while facilitating growth of the plant tissue." Non-Final Act. 10. Appellant argues that because Nilsson does not teach any of the claimed binder materials, the rejection is based on an impermissible "obvious-to-try theory." Appeal Br. 35. According to Appellant, because Nilsson's list of binder materials does not include any of the claimed binders, "[t]he Examiner cannot fill the void by stating that it would merely be 'obvious to try' these materials without the benefit of Applicant's disclosure and impermissible hindsight." Id. The Examiner responds that because the claimed binders are "functionally equivalent binders" to those of Nilsson, adding them to or using them to replace Nilsson's binders would have been obvious. Ans. 6. Appellant's argument is persuasive and we agree, that although Nilsson discloses various binders, this does not mean that every binder is obvious to try, without evidence or reasoning tending to demonstrate the obviousness of the particularly claimed binder. In other words, while the Examiner's position appears to be that any binder that is "functionally equivalent" would have been obvious in view of Nilsson's teaching, the Examiner fails to make any finding concerning whether the particular type of binders called for in the claims, namely, polyacrylamide or pulverized crystals thereof, rice, hydrogel, superabsorbent polymer, sodium bicarbonate, com starch, and compost are "functionally equivalent" to the binders disclosed in Nilsson. Consequently, the Examiner has not adequately established that the claimed binders are functionally equivalent to Nilsson's binders. We, thus, find that the Examiner's conclusion of obviousness is not supported by facts, and thus, cannot stand. See In re 21 Appeal2018-007824 Application 14/229,615 Warner, 379 F.2d 1011, 1017 (CCPA 1967). Moreover, the Examiner has not provided evidence or reasoning to suggest that the possible approaches to solve the problem are "known and finite" or that one of ordinary skill had "good reason to pursue the known options within his or her technical grasp." See Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1359 (Fed. Cir. 2007) ( discussing the requirements of an "obvious to try" type obviousness rejection) (internal quotations and citation omitted). Accordingly, we do not sustain the Examiner's rejection of claims 24--32 as unpatentable over Nilsson. Rejection 5; Claim 20 The Examiner finds that Nilsson does not disclose a binder having a moisture content of approximately 8 weight percent or less, but that Kouno does. Non-Final Act. 10 (citing Kouno, 8:53-9:5). The Examiner concludes that it would have been obvious to make the moisture content of Nilsson's binder 8 weight percent or less, "to yield the predictable result of not damaging the plant tissue and promoting growth of the plant tissue." Id. Appellant argues that Kouno does not remedy the deficiencies in Nilsson because the portion of Kouno relied on by the Examiner does not disclose a binder having the claimed weight percent. Appeal Br. 39. The Examiner responds that Kouno' s disclosure of 3--4 percent meets the claimed range. Ans. 7. Appellant replies that Kouno' s disclosure of 3--4 percent refers to the outer gel layer, which acts as a container, whereas "claim 20 recites the binder, which is inside the container." Reply Br. 21. Appellant's arguments are not persuasive for the following reasons. 22 Appeal2018-007824 Application 14/229,615 Kouno discloses a seed 21 surrounded by an air bubble 17, which is in tum surrounded by a gel coat 26. Kouno, 8:42--46; Fig. 7. Part of gel coat 26 is cured to form a hardened water insoluble layer 26a with gel layer 26 inside. Id. 8:32--41. Kouno further discloses that the gel layer improves germination by protecting the seed, supplying nutrients and oxygen. Id. 4:28-32. Given that Kouno's gel layer performs similar functions to that of Nilsson's binder, namely supplying nutrients and oxygen, a preponderance of the evidence supports the Examiner's position that Kouno' s gel layer is a binder. Moreover, as the Examiner correctly finds, Kouno discloses that "the gel layer contains 3 to 4% water." Id. 8:64---65; see also Non-Final Act. 10. Appellant's argument that (only) the outer layer ofKouno is dried to the disclosed moisture content is not well taken given that Kouno' s drying process is so that the seed can "be stored till the sowing time." Id. 8:56-57. Appellant does not explain how a moist gel coat with only a dried outer layer would allow storage, in order for the seed to germinate at the proper time. Id. 8:53---65; see also Non-Final Act. 10. For these reasons, we sustain the Examiner's rejection of claim 20. Rejection 6; Claims 33, 47, and 48 Appellant argues claims 33, 47, and 48 as a group. Appeal Br. 39--40. We select claim 33 as representative and claims 47 and 48 stand or fall with claim 33. 37 C.F.R. § 41.37 (c)(l)(iv). The Examiner finds that Nilsson does not disclose wax applied to the binder but that Hartle '643 does. Non-Final Act. 11 (citing Hartle '643 ,r 28). Appellant counters that Hartle '643 uses wax to seal an end of the container, but does not apply wax to the binder. Appeal Br. 60. Appellant 23 Appeal2018-007824 Application 14/229,615 also argues that Hartle's "[e]lement 272 is a part of the container. It is not applied to the gel" and "[t]he gel is not a binder." Id. The Examiner responds that Hartle '643 teaches "the wax - at 272, is applied to the binder - at 258" as claimed because Figure 1 of Hartle '643 shows that "the bottom of the wax material is applied to and in contact with the top of the binder material." Ans. 7. According to the Examiner, "[ c ]laim 33 does not require the wax is mixed with the binder so that the wax is applied to a majority or all of the binder particle material." Id. For the following reasons, we sustain the rejection of claim 33. Hartle '643 uses wax 272 as an end seal as seen in Figure 1 of Hartle '643, reproduced below. 256 Fig.I. Figure 1 of Hartle '643 is a cross-sectional view of a manufactured seed. Hartle '643 ,r 12. Element 252 "includes a containing portion 202 defined on either side by closed end 256 and open end 254." Id. ,r 35. The "seed coat 252 substantially surround[s] a hydrated gel 258." Id. ,r 21. We do not agree with Appellant's assertion that "the gel is not a binder" but "is 24 Appeal2018-007824 Application 14/229,615 instead a container" for two reasons. First, seed coat 252 is disclosed as surrounding hydrated gel 258 indicating it is not part of the container. Second, Appellant's Specification discloses that "[t]he binder anchors or holds ... water in the vicinity of the seed" (Spec. ,r 38) and Appellant does not explain adequately why "hydrated gel 258" is not a binder holding water in the vicinity of a seed. Hartle '643 also discloses that "a[] primary end seal 272 is applied over the gel surface .... Many materials are suitable for the primary end seal 272. Paraffin wax of the kind described thus far has proved suitable." Id. ,r 28. Regardless of whether end seal 272 is part of the container as Appellant asserts, it nonetheless is in contact with or applied5 to hydrated gel 258 as shown at the left end of Figure 1 above. Consequently, wax, ( end seal 272) is "applied to the binder" (gel 258) as required by claim 33. We, therefore, sustain the rejection of claim 33. Claims 47 and 48 fall with claim 33. Rejection 7; Claim 43 The Examiner finds that Nilsson does not disclose soil as a growing medium but McKenzie does. Non-Final Act. 12 (citing McKenzie, 4:25- 45). The Examiner considers that it would have been obvious to add soil to the device of Nilsson "to yield the predictable result of allowing the plant to grow in an environment similar to where it will be placed after initial growth." Id.; see also Ans. 7. 5 An ordinary meaning of "apply" is "to lay or spread on." https://www.merriam-webster.com/dictionary/apply (last accessed on May 20, 2019). 25 Appeal2018-007824 Application 14/229,615 Appellant argues that Nilsson does not teach a binder in an interior region of a container and that McKenzie does not remedy this deficiency because McKenzie's soil "is contained within nothing. It is instead a coating for a seed." Appeal Br. 41. Appellant's arguments are not persuasive for the following reasons. Claim 43 requires that soil is added to the contents of the container. McKenzie discloses "various conventional plant growing media, such as vermiculite, perlite, sand, sawdust, wood fiber, fir bark, peat, topsoil and the like." McKenzie, 4:30-32. Nilsson discloses various materials that are suitable for germination (promoting growth) include "materials based upon peat, mineral wool, paper pulp, various synthetic materials, such as plastic, e.g. plastic foam, etc., alone or in combination." Nilsson, 1 :60-62. Given that both Nilsson and McKenzie disclose peat as a suitable growing material, and Nilsson discloses that combinations of growing materials can be used, the Examiner has a sound basis for modifying Nilsson based on McKenzie so that Nilsson's binder would include a mix of soil and peat. We see no reason why a person of ordinary skill in the art could not have added soil to Nilsson's device nor why the results of adding soil would have been unpredictable. We, therefore, sustain the rejection of claim 43. Rejection 13; Obviousness based on Motoyama and Kouno The Examiner finds that Motoyama discloses most of the limitations of claim 1 including a container, a binder within the container, an additive bound to the binder, and a plant source. Non-Final Act. 14. The Examiner finds that Motoyama's plant source is not a seed, and relies on Kouno to disclose that the plant source is a seed. Id. The Examiner considers that it 26 Appeal2018-007824 Application 14/229,615 would have been obvious to use a plant seed in the system of Motoyama "to yield the predictable result of allowing the system to produce a healthy viable plant as desired." Id. at 15. Specifically, according to the Examiner, using a plant seed is the simple substitution of one functionally equivalent plant source material for another. Id. Appellant argues, inter alia, that Motoyama teaches away from using seeds because "Motoyama, requires the use of meristem tissue and continuously and consistently cautions the reader never to use seeds. Appeal Br. 41. Appellant contends, moreover, that the Examiner's modification would change the principle under which Motoyama operates, namely, attaining a true-to-type propagation. Id. at 45. According to Appellant, the Examiner impermissibly used Appellant's disclosure "to justify the motivation to make the combination." Id. at 4 7. The Examiner responds that Motoyama prefers to use seed, but does not exclude seed, and that the disclosure of Motoyama as a whole does not suggest that Motoyama is not "capable of being used with seed in place of the meristematic tissue." Ans. 8. Appellant's arguments are persuasive. Motoyama discloses that the "invention relates to the compositions containing plant meristematic tissues." Motoyama, 1: 6-7. Motoyama defines meristematic tissues as "tissues which are capable of directly growing into entire plant bodies or after they have passed through differentiation and organogenesis, and which exclude seed." Id. 3:65--4:1 (emphasis added). Kouno is directed to "an improvement for a method of applying gel-coating to seeds of plants." Kouno, 1:6-7. While we appreciate the Examiner's statement that Motoyama fails to disclose the system as "not being capable of being used 27 Appeal2018-007824 Application 14/229,615 with seed in place of the meristematic tissue," the Examiner does not direct us to any disclosure in Motoyama or provide persuasive technical reasoning to support an inference that Motoyama's system is capable of using seed. Ans. 8. Nor does the Examiner direct us to any disclosure in Kouno that seed and meristematic tissue are known alternatives. Moreover, the Examiner's position that the combination "is the simple substitution of one functionally equivalent plant source material being meristematic tissue with that of another functionally equivalent plant source material being the plant seed of Kouno," is misplaced in that any functional equivalence of seed and meristematic tissue is based on seeds having a coating and an embryo such that encapsulated meristematic tissue is the "analogue of seed." Motoyama, 1:57-2:7. Given that Motoyama's entire disclosure relates to meristematic tissue, which by definition excludes seed, the reason for the combination stated by the Examiner lacks a rational underpinning because the Examiner does not support the reasoning with specific findings supported by the prior art. For these reasons, we do not sustain the rejection of claim 1 as unpatentable over Motoyama and Kouno. Claims 2, 4, 5, 10-13, 16, 18-23, 28, 34--40, 44--46, and 51-56 depend directly or indirectly from claim 1 and we do not sustain the rejection of these claims for the same reasons. Rejections 14-22 Claims 8, 9, 17, 24--27, 29-33, 41--43, 47-50, 62, 63, and 68 depend from claim 1. Appeal Br. 64--72 (Claims App.). The Examiner rejects these claims based on the combination of Motoyama and Kouno with additional disclosure from Bissonnette, Carlson, Hartle '643, McKenzie, Hartle '395, 28 Appeal2018-007824 Application 14/229,615 Redenbaugh, Kohno, or Corak. Non-Final Act. 21-26. The Examiner does not rely on the additional disclosure of Bissonnette, Carlson, Hartle '643, McKenzie, Hartle '395, Redenbaugh, Kohno, or Corak to cure the deficiencies in the combination of Motoyama and Kouno discussed above in connection with the rejection of claim 1. Id. We, thus, do not sustain the rejection of claims 8, 9, 17, 24--27, 29-33, 41--43, 47-50, 62, 63, and 68 for the same reasons stated in connection with the rejection of claim 1. DECISION The Examiner's decision rejecting claims 1, 2, 4, 5, 8-13, 16-23, 33-56, 62, 63, and 68 is affirmed. The Examiner's decision rejecting claims 24--32 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 29 Copy with citationCopy as parenthetical citation