Ex Parte Dunn

Patent Trials and Appeals Board

Jun 19, 2019

13844649 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/844,649 03/15/2013
24225 7590 06/21/2019
Gerald T Peters
JTT Patent Services, LLC
335 Lions Garden Minase Grand River
2-15-45 Egawa
Shimamoto-cho Mishima-gun Osaka, 618-0013
JAPAN
FIRST NAMED INVENTOR
W. Michael Dunn
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.
100419 5594
EXAMINER
BARLOW, MORGAN T
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
06/21/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cust8@jttpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. MICHAEL DUNN
Appeal2019-001837
Application 13/844,649
Technology Center 3600
Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
W. Michael Dunn ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-22, which constitute
all the claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as the inventor, W. Michael
Dunn. Appeal Br. 4.
Appeal2019-001837
Application 13/844,649
BACKGROUND
Independent claims 1, 15, and 20 are pending. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A seedling container having a compartment for receiving
one or more seeds and growing medium, the compartment
compnsmg:
a top portion;
a bottom portion; and
a frangible strip between the top portion and the bottom
portion;
wherein the compartment defines an axial direction;
wherein the frangible strip is separated from the top
portion by an upper circumferential score line and is separated
from the bottom portion by a lower circumferential score line;
wherein the upper circumferential score line is arranged
about the periphery of the compartment so as to form a first at
least partially closed loop having a locus which is more or less
circumferential with respect to the compartment axial direction;
wherein the lower circumferential score line is arranged
about the periphery of the compartment so as to form a second at
least partially closed loop having a locus which is more or less
circumferential with respect to the compartment axial direction,
the upper circumferential score line being generally parallel to
the lower circumferential score line; and
wherein a transverse score line interconnects the lower
circumferential score line and the upper circumferential score
line.
REJECTI0NS 2
I. Claims 1, 2, 9, 10, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Krane (US 4,091,929, iss. May 30, 1978) and
Hawkinson (US 2011/0296755, pub. Dec. 8, 2011). Final Act. 9.
2 The Examiner has withdrawn the indefiniteness rejection of independent
claims 1, 15, and 20. Ans. 4.
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II. Claims 3-8 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane, Hawkinson, and Bullock (US 4,691,834, iss. Sept.
8, 1987). Final Act. 13.
III. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane, Hawkinson, and Peck (US 3,877,633, iss. Apr. 15,
1975). Final Act. 17.
IV. Claims 15-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Timmis (US 5,119,588, iss. June 9, 1992), Krane, and
Hawkinson. Final Act. 20.
V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane and Bullock. Final Act. 25.
ANALYSIS
In the pending rejections, the Examiner determines that the claim
recitation of a "seedling container" does not "innately provide a specific
structure," and is considered an intended use of the claimed container that is
not "afforded the effect of a structural limitation" because "the body of the
claim fails to set forth structure that refers back to or draws life and breath
from the preamble." Final Act. 9.
Recitation in a claim's preamble of a purpose or intended use of the
claimed invention must be evaluated to determine whether the recited
purpose or intended use results in a structural difference between the
claimed invention and the prior art. See Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997) ("[W]here a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.")
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( citation omitted). The claims recite a structurally complete container
compartment comprising top and bottom portions, and a frangible strip
therebetween. Appeal Br. 42 (Claims App 'x). Score lines defining the
frangible strip are also claimed. The only reference to seeds and growing
medium is in the preamble. Here, as in Rowe, Appellant has defined a
structurally complete invention in the body of the claims, and uses the
preamble only to state a purpose or intended use of the invention. We
therefore agree with the Examiner that "seedling" and "for receiving one or
more seeds and growing medium" define intended use, rather than structural
limitations.
The Examiner finds that Krane discloses, inter alia, a container
having a compartment "capable of receiving one or more seeds and growing
medium." Final Act. 9. The Examiner finds that Krane discloses "'a
vertical break also to determine the beginning and end of each rip-strip,"'
but does not specifically disclose a "transverse score line" interconnecting
the upper and lower circumferential score lines. Id. at 11 ( citing Krane
1 :60-64). The Examiner then finds that Hawkinson discloses "a package
(10) with a tear-off strip (34, 'tear strips, perforations' [0008, & 28])," and a
transverse score line interconnecting upper and lower score lines of the tear-
off strip. Id. The Examiner concludes that it would have been obvious to
modify Krane's vertical break with Hawkinson's transverse score line "to
provide a device which is not only easily handled during shipment, but also
easily disassembled for use by the consumer." Id.
Appellant argues claims 1-22 as a group. Appeal Br. 17. Regarding
Rejection I, we select claim 1 as the representative claim for the group. 37
C.F.R. § 4I.37(c)(l)(iv). Further, Appellant makes no argument that any
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Application 13/844,649
claim would be patentable over the references cited in Rejections II-V, other
than arguments concerning the patentability of claim 1 over Krane and
Hawkinson.
Non-Analogous Art
Appellant first argues that Krane is non-analogous art. Appeal Br. 18.
A reference is analogous art to the claimed invention if: (1) the reference is
from the same field of endeavor as the claimed invention; or (2) the
reference is reasonably pertinent to the problem faced by the inventor. See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellant contends that
the field of endeavor of Krane is ice cream containers, which differs from
the claimed "seedling container" field of endeavor. Appeal Br. 21.
Appellant further contends that the problem solved by Krane is shortening
the height of an ice cream container as the contents are used up, whereas the
problem solved by the claimed invention is "trouble-free ejection of seedling
root systems from seedling containers." Id. at 22.
A recitation in a claim of intended use need not limit the field of
endeavor or field of search to thereby prevent prior art from being deemed
reasonably pertinent. See In re Schreiber, 128 F.3d 1473, 1475 (Fed. Cir.
1997) ("[T]he recitation of a new intended use for an old product does not
make a claim to that old product patentable."); see also In re Bigio, 381 F.3d
1320, 1324--25 (Fed. Cir. 2004) (affirming the Board's conclusion that a
toothbrush was in the same field of endeavor as a claimed hair brush,
because "'structural similarities between toothbrushes and small brushes for
hair would have led one skilled in the art working in the specific field of
hairbrushes to consider all similar brushes including toothbrushes."').
Considering Appellant's Specification, including the pending claims, we
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define the field of use as containers capable of storing seeds and growing
medium. As discussed below, we agree with the Examiner that Krane's
container is capable of storing seeds and growing medium. Krane is
therefore analogous art.
Hindsight
Appellant argues that the Examiner's proffered rationales "cannot be
found in any of the cited references but arises only in hindsight in the mind
of the Examiner." Appeal Br. 24. Appellant further argues that the
Examiner's proffered rationales "are deficient because they: ( 1) are based
on hindsight and not on the factual inquiries required under Graham v.
Deere; and/or (2) fail to account for why one of skill in the art would have
been motivated to remove the lid" from Krane's ice cream container "so that
the ice cream container of KRANE might be used as a seedling container."
Id.
Regarding motivation to remove Krane's lid, the Examiner contends
that no reasoning is necessary, because (1) the claims do not specifically
recite an open top, and (2) Krane discloses an open topped container that is
structurally separate from a lid for the container. Ans. 7. Krane has no
requirement that its container remain closed with the lid, and Appellant
makes no argument that Krane's container, when used without a lid, is not
capable of containing seeds and growing medium. Indeed, "in normal
operation of the device of Krane, the lid would be removed." Id. at 8. Nor
does Appellant argue persuasively that a container for containing a seedling
cannot have a lid to protect the seedling. See, e.g., Appeal Br. 25 (stating
conclusorily that a lid makes the container "incapable of receiving seed(s)
and/or growing medium" and "would interfere with the growth of a seedling
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Application 13/844,649
of any nontrivial height"), 27 & n.23 (citing Spec. 5:2-7). Further, the claim
recites a container "comprising," which is an open-ended transition that does
not exclude the presence of a lid. See Mars Inc. v. H.J. Heinz Co., 377 F.3d
1369, 1376 (Fed. Cir. 2004). We agree with the Examiner that no
motivation needs to be provided for Krane's container to remain open. See
Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
1989) (a reference "is prior art for all that it teaches.").
Regarding combining Krane and Hawkinson, the Examiner responds,
inter alia, that it would have been obvious to substitute Hawkinson's
perforation for Krane' s vertical break as a "simple substitution of one known
element for another to obtain predictable results." Ans. 6 ( citing MPEP
2143); see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--421 (2007).
Appellant does not contend, in response, that Hawkinson's perforation
and Krane' s vertical break are other than structural equivalents, or that
substitution thereof would achieve other than predictable results. We find
no error in the Examiner's conclusion that such substitution would have
been obvious.
Rational Basis
Appellant next argues that the Examiner's rationale for modifying
Krane "fail[s] to account for why one of skill in the art would have been
motivated to remove the lid, essential to the function and object of KRANE,
from the ice cream container of KRANE so that the ice cream container of
KRANE might be used as a seedling container." Appeal Br. 26. Appellant
also contends that one skilled in the art would not have been motivated to
remove Krane's lid to make it usable as a seedling container "because to do
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so would have rendered KRANE unfit for its intended purpose and/or
changed the principle of operation of KRANE." Appeal Br. 28.
As explained above, Krane need not be modified for its container to
remain open, because it can be open during regular use. Therefore, the
Examiner need not provide a reason for so modifying Krane, and we do not
find this argument persuasive.
Erroneous Finding
Appellant lastly argues that the Examiner erred in finding that Krane
discloses a seedling container. Appeal Br. 30. According to Appellant,
Krane's lid is essential to its function and object, and when ice cream is not
"actively being inserted" or removed, Krane' s container "is envisioned as
being closed by a lid at its top, in which state it is incapable of receiving
seed(s) and/or growing medium, and in which state the lid would interfere
with the growth of a seedling." Id.
As explained above, Krane' s container is open during some states of
its use, and Krane teaches a container separate from its lid. In such an open
state, Krane's container is capable of receiving seeds and growing medium.
We discern no error in the Examiner's finding that Krane discloses a
container capable of receiving seeds and growing medium. Final Act. 9; See
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (If a prior art structure
is capable of performing the intended use as recited in the preamble, then it
meets the claim.).
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Conclusion
For the reasons set forth above, Appellant has not persuaded us that
the Examiner's rejections contain erroneous findings or conclusions. We
sustain pending rejections I-V.
DECISION
We AFFIRM the pending obviousness rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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