Ex parte DE GROOT et al.

Board of Patent Appeals and Interferences

Nov 20, 2001

08750910 (B.P.A.I. Nov. 20, 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for publication and is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACOB FRANK DE GROOT and LARS HANSEN
____________
Appeal No. 2001-1078
Application No. 08/750,910
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, 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 1 to 3 and 7. Claims 4 to 6, 8 and 9 have
been allowed. No claim has been canceled.
We REVERSE.
BACKGROUND
Appeal No. 2001-1078 Page 2
Application No. 08/750,910
In determining the teachings of Dunn, we will rely on1
the translation provided by the USPTO. A copy of the
translation is attached for the appellants' convenience.
The appellants' invention relates to a plant cube having
a laminated structure of mineral wool fibres oriented in
parallel to each other (specification, p. 1). 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:
Blok EP 0 209 958 Feb. 1, 1987
Dunn WO 89/01736 Mar. 9, 19891
Claims 1 to 3 and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Blok in view of Dunn.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
19, mailed September 15, 1999) and the answer (Paper No. 25,
Appeal No. 2001-1078 Page 3
Application No. 08/750,910
mailed July 25, 2000) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 24,
filed April 17, 2000) and reply brief (Paper No. 26, filed
September 29, 2000) for the appellants' arguments
thereagainst.
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 1 to 3 and 7
under
35 U.S.C. § 103. 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
Appeal No. 2001-1078 Page 4
Application No. 08/750,910
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
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1, the sole independent claim on appeal, reads as
follows:
A plant cube comprising a block of mineral fibres,
the block having a top surface, a bottom surface and four
side surfaces, wherein the block comprises a laminated
structure formed from a superfolded layer of parallel
oriented mineral wool fibres, thereby forming a plurality
of sublayers connected by bends in the layer, wherein all
the mineral fibers in the sublayers are parallel to each
other.
Blok's invention relates to a water-absorbing porous
product made of water-absorbing mineral fibrous material for
the cultivation of plants. The product comprises
water-repellent oxygen-storing elements which are able to
Appeal No. 2001-1078 Page 5
Application No. 08/750,910
release oxygen in a delayed manner to a liquid sucked up into
the porous product. As shown in Figure 1, a small block 1
includes one layer 2 of water-repellent mineral wool flakes
between layers 3 and 4 of water-absorbing mineral wool.
Figure 6 shows diagrammatically a strip of water-absorbing
mineral wool 11 having a layer of water-repellent flakes of
mineral wool 14 which is folded together several times in a
zigzag pattern. Blok teaches (column 5, lines 35-39) that
after the being folded, small blocks, such as shown in Figure
1, can be cut out of a strip of this type along the broken
lines 15 shown in Figure 6.
Dunn discloses cultivation substrates based on mineral
wool. As shown in Figure 3, a substrate for cultivation
without soil is based on a mineral fibre felt and packaged
into the form of cakes 10 capable of supporting a plurality of
plants. Dunn teaches that the structure of the cakes is such
that in the position of use the fibers are arranged
essentially in vertical planes 9 and thereby plant production
is improved.
Appeal No. 2001-1078 Page 6
Application No. 08/750,910
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Blok and claim 1, it
is our opinion that the only differences are that the plant
cube includes a plurality of sublayers connected by bends and
all the mineral fibers in the sublayers are parallel to each
other.
In the rejection before us, the examiner determined
(final rejection, p. 2) with respect to claim 1 that Blok
lacked only the limitation that all the mineral fibers in the
sublayers are parallel to each other and that such difference
would have been obvious to one having ordinary skill in the
art from the teachings of Dunn.
Even if the examiner's determination regarding the
obviousness of modifying Blok to have all the mineral fibers
in the sublayers to be parallel to each other in view of the
Appeal No. 2001-1078 Page 7
Application No. 08/750,910
teachings of Dunn is correct, such a modification of Blok does
not arrive at the claimed invention since such a plant cube
would lack a plurality of sublayers connected by bends (the
bend limitation) as pointed out by the appellants (brief, pp.
5-7; reply brief, pp. 2-3). In that regard, the critical
issue for the resolution of the question of obviousness, as 35
U.S.C. § 103 makes plain on its face, is whether the invention
as a whole would have been obvious to one of ordinary skill in
the art at the time the invention was made. Thus, in this
case, the examiner's blatant dismissal of the bend limitation
because the appellants have not established criticality
(answer, pp. 3-4) is without merit. Additionally, the
examiner's position (answer, p. 4) that the strip shown in
Figure 6 prior to being cut is considered to be a cube is, in
our view, sheer speculation without any support in the
disclosure of Blok.
Since the examiner has not set forth a prima facie case
of obviousness for the reasons set forth above, the decision
of the examiner to reject claim 1, and claims 2, 3 and 7
dependent thereon, under 35 U.S.C. § 103 is reversed.
Appeal No. 2001-1078 Page 8
Application No. 08/750,910
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3 and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-1078 Page 9
Application No. 08/750,910
RICHARD L. BYRNE
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219-1818
Appeal No. 2001-1078 Page 10
Application No. 08/750,910
JVN/jg