Ex Parte Ferris

Patent Trial and Appeal Board

Jun 22, 2018

14197135 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/197,135 03/04/2014
24377 7590 06/26/2018
Law Office of R. Dabney Eastham
P.O. Box 1042
Fort Bragg, CA 95437
FIRST NAMED INVENTOR
Aleen Beth Ferris
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.
137-lOlUSlNP 7269
EXAMINER
VALENTI, ANDREA M
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
DABNEYEASTHAM@YAHOO.COM
dabneyeastham@gmail.com
dabney _eastham@thinktankphoto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEEN BETH FERRIS 1
Appeal2017-009590
Application 14/197, 13 5
Technology Center 3600
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-5 and 13-25. Appeal Br. 1. Claims 6-12 are
cancelled. Id. at 31 (Claims App'x). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 ab Johnson, Inc. is identified as the real party in interest. Appeal Br. 3.
Appeal2017-009590
Application 14/197, 13 5
CLAIMED SUBJECT MATTER
The claimed methods protect plants and roots from being eaten by
underground dwelling mammals such as gophers and moles. Spec. i-fi-1 2, 3.
Claims 1, 16, and 21 are independent. Claim 1 is reproduced below.
1. A method for protecting a plant having a root system
immersed in soil from underground dwelling mammals,
comprising the steps of:
providing at least one device comprising at least one
elongated member with a first end, the first end being shaped to
have a point,
inserting the first end of the elongated member of the
device into the soil adjacent the root system of a plant, and
aligning the elongated member so that the first end of the
elongated member is so positioned adjacent a bottom of the root
system that the underground dwelling mammal will encounter
the point of the first end of the elongated member when the
underground dwelling mammal burrows up toward the bottom
of the root system.
Appeal Br. 30 (Claims App'x).
REJECTION
Claims 1-5 and 13-25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Neumann (US 2011/0214338 Al, pub. Sept. 8, 2011) and
Koessler (US 2007/0199240 Al, pub. Aug. 30, 2007).
ANALYSIS
Appellant argues claims 1-5 and 13-15 as one group, claims 16-20 as
a second group, and claims 21-25 as a third group. Appeal Br. 10-29. We
select claims 1, 16, and 21 as representative claims. Claims 2-5 and 13-15
stand or fall with claim 1. Claims 17-20 stand or fall with claim 16. Claims
22-25 stand or fall with claim 21. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2017-009590
Application 14/197, 13 5
Claims 1-5 and 13-15
The Examiner finds that Neumann teaches a method of protecting a
root system, as recited in claim 1, using an elongated member (spike 300)
with a pointed end (prong 302) by inserting pointed end 302 into the ground
around the plant to deter burrowing mammals, but Neumann does not teach
to position the first end adjacent a bottom of the plant root system. Final
Act. 3. The Examiner finds that Koessler teaches to place a sharp, elongated
member with a first pointed end adjacent a bottom of a root system. Id. The
Examiner determines it would have been obvious to modify Neumann based
on Koessler' s teachings as the application of a known technique to a known
device ready for improvement for predictable results where Koessler teaches
to position the pointed ends of stakes adjacent a bottom of a plant's roots to
protect the roots against animals digging from underneath. Id.; Ans. 9.
Appellant argues that Figure 8B of Koessler illustrates stakes 22A,
22C that protect a bulb 30 and roots 36, but the stakes would not be in the
way of a burrowing mammal attempting to reach roots 36 of bulb 30 from
below the roots. Appeal Br. 14--15, 16-17. Appellant argues that the ends
of the stakes in Koessler are not positioned adjacent to the bottom of plant
roots 36 so "the underground dwelling mammal will encounter the point of
the first end of the elongated member when the underground dwelling
mammal burrows up toward the bottom of the root system." Id. at 17, 17-
18, 21. Appellant asserts that the size of the underground mammal (whether
a fat gopher or thin vole) is not claimed, and the claims require a pointed end
of an elongated member "adjacent a bottom of the root system" to make a
mammal "encounter the point of the first end of the elongated member" if
the mammal "burrows up toward the bottom of the root system." Id. at 21.
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Appeal2017-009590
Application 14/197, 13 5
Appellant's arguments are not persuasive for the following reasons.
First, Neumann teaches the use of pest deterring spikes 300 that may be used
against burrowing animals that cause damage to plants from beneath and eat
roots or otherwise destroy a garden or landscaped area. See Neumann i-f 1.
In the case of such burrowing pests, Neumann teaches to position spikes 300
in a downward direction away from the ground surface "to deter burrowing
pests." Id. i-f 26. "[W]hen the spikes are arranged in a downward fashion,
the burrowing pests would encounter the spikes as they burrowed upward"
and "[ u ]pon encountering the spikes, the burrowing pest would be deterred
from digging in that spot." Id. Furthermore, in the case of plants, Neumann
teaches to place spikes in a donut shape that surrounds the plant. Id. i-f 25.
Neumann further teaches to change the direction, length, number, size, and
shape of the prongs of spikes 300 to customize the area of coverage around a
plant and provide a different concentration of spikes as desired. Id. i-f 26.
These disclosures teach to align the pointed ends "adjacent a bottom
of a root system," as claimed, because Neumann teaches that this disclosed
structure and placement serves the function of protecting a plant's roots so
"the underground dwelling mammal will encounter the point of the first end
of the elongated member when the underground dwelling mammal burrows
up toward the bottom of the root system" as claimed. See id.
The teachings of Neumann are supported further by Koessler, which
also teaches a plant-protection device that positions pointed ends of stakes
around a plant with the pointed ends positioned "adjacent a bottom of the
root system" of the plant. Koessler, Figs. 8B, 9B. Koessler teaches that the
downwardly-positioned stakes 22 with points 23 and flange 13 "cooperate to
protect planted bulb 30 from being accessed by animals." Koessler i-f 37.
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Appeal2017-009590
Application 14/197, 13 5
Both references teach to position downwardly-pointed stakes in the
ground in an area that is adjacent to a plant, including plant roots, to be
protected from pests, including underground dwelling and burrowing pests
that eat roots. Neumann i-fi-f l, 25, 26; Koessler i-fi-136, 37; Abstract. Both
references teach to position stake points adjacent to plants and plant roots to
protect the plants and roots from underground burrowing animals intent on
eating the roots from beneath, and Koessler expressly teaches in Figures 8B
and 9B to position the pointed ends adjacent to a bottom of a root system as
claimed. The modified method of Neumann thus teaches all of the claimed
process steps so the Examiner had a sound basis to find that such a modified
method would result in an underground dwelling mammal encountering the
pointed ends when it burrows up toward the bottom of a root system. In this
regard, Neumann teaches that its downwardly-aimed, pointed stakes can be
customized to any number, size, length, and direction to ensure coverage of
an area such as plant roots and inherently provides this function. In re Best,
562 F.3d 1252, 1254--55 (CCPA 1977) (when the PTO has reason to believe
that a functional limitation asserted to be critical to novelty is an inherent
characteristic of the prior art, it has the authority to require an applicant to
prove that the prior art does not possess the claimed function); see also In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (same) (citing id.).
Appellant's attorney arguments do not persuade us that Neumann's
modified method that positions pointed ends adjacent a bottom of the root
system does not provide the claimed function of the claimed plant protection
method. Both Neumann and Koessler position pointed stakes adjacent to a
plant or root system to be protected so that burrowing pests encounter the
pointed ends as they try to eat the roots or plants from beneath or the side.
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Appeal2017-009590
Application 14/197, 13 5
Moreover, claim 1 recites "providing at least one device." Thus, to
the extent Appellant's arguments are premised on a particular arrangement
of a multiplicity of pointed ends and stakes such as illustrated in Appellant's
Figures 2, 9, and 10, those arguments are not commensurate with the method
of claim 1, which requires only a single device. We do not limit the scope of
claim 1 to a particular embodiment or read limitations into claim 1 when the
language of claim 1 is broader than those embodiments. Further, Figures
13-15 of Appellant's disclosure illustrate methods that position a single
device 1 adjacent to a single plant or an alternating linear arrangement of
one device and one plant. Appellant discloses this latter arrangement to
protect a row of vegetable plants. Spec. i-fi-131-34. The Specification also
discloses the positioning of five devices in a circle around a single plant V
and its roots R (see Figures 9-12), but claim 1 does not recite a method that
places pointed ends of multiple elongated members adjacent the roots of a
single plant. Claim 1 only requires "at least one device" and "at least one
elongated member with a first end." In any case, Neumann teaches to
emplace spiked devices 300 around a plant in a donut shape and concentrate
the pointed ends in areas to be protected to deter underground mammals
from eating the roots of plants. Neumann i-fi-f l, 25, 26.
The Examiner's reason for modifying Neumann with teachings of
Koessler is based on the teachings of Koessler discussed above and on
Neumann's desire to protect plant roots. "[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see Final Act. 3; Ans. 9-10.
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Appeal2017-009590
Application 14/197, 13 5
We have no evidence from Appellant that modification of Neumann
in the manner taught by Koessler would have been beyond the level of
ordinary skill in the art. Furthermore, as discussed above, both references
position pointed ends of spikes and stakes adjacent to a plant to be protected,
and plant roots are items to be protected from underground pests. Therefore,
the Examiner's reason for modifying Neumann in view of the teachings of
Koessler is supported by a rational underpinning based on the teachings of
both references if not also the common sense of a skilled artisan in view of
these teachings and understanding in the art. See Appeal Br. 23. 2
Thus, we sustain the rejection of claims 1-5 and 13-15.
Claims 16-20
Because we sustain the rejection of claim 1, Appellant's argument that
the rejection of claim 16 should be reversed on the same grounds as claim 1
(Appeal Br. 23-24) is not persuasive. Thus, we also sustain the rejection of
claims 16-2 0.
2 Indeed, Appellant recognizes that Neumann teaches to aim the spikes of a
pest deterrent system downwardly "to deter burrowing pests" and burrowing
pests are deterred from digging in the spot where they encounter the spikes.
Appeal Br. 12-13. Appellant recognizes that Neumann's spikes have prongs
that can be bent by a user to change direction and/ or the length of the prongs
and the spikes themselves can be spread out to cover a larger area or they
can be concentrated to cover a smaller area more densely. Id. at 13. Also,
Appellant recognizes that Koessler teaches a device for protecting planted
bulbs and including downwardly extending portions 25 that secure the
device in the ground and provide further protection to the bulb against
contact from the sides by digging animals. Appeal Br. 13-14. Appellant's
illustration of an underground gopher G attacking roots R in Figures 1 and 2
of the disclosure supports the Examiner's finding that Koessler's "adjacent"
pointed spikes would deter such a rodent as the horizontal movement of the
gopher would place its body in contact with the ends of the spikes when it
attempts to eat plant roots R adjacent to those stake points.
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Appeal2017-009590
Application 14/197, 13 5
Claims 21-25
Independent claim 21 recites a similar method as claim 1 plus the step
of "periodically inserting the first end of the at least one elongated member
of the device further into the soil adjacent the root system as the plant grows
and its root system lengthens in order to maintain the position of the point of
the first end of the elongated member adjacent the bottom of the root system
.... " Appeal Br. 33 (Claims App'x). The Examiner takes Official Notice
"it is notoriously well-known in the art of plant husbandry to adjust length
for plant growth e.g. support stakes" and cites US 2012/0260568 Al to King
as evidence. Final Act. 5---6, 9; Ans. 10. Appellant argues that King teaches
horizontal repositioning of plant waterers as the plant grows but not to insert
the first end further into the soil as claimed. Appeal Br. 28-29.
We agree with the Examiner that King teaches to position a pointed
stake watering system adjacent to tree roots and reposition it periodically as
the plant grows to maintain it adjacent to the ends of the roots. King i-f 145;
Ans. 10 (citing id.). King also teaches to position stakes of different lengths
at different penetration depths according to a desired root growth. Id. i-f 132.
Further, Neumann teaches to vary the length, direction, number, size, and
shape of spikes according to a desired area of coverage. Neumann i-f 26. A
skilled artisan aware of these teachings would have been motivated to insert
an elongated member further into the soil to maintain the point adjacent a
root system in order to achieve Neumann and Koessler's stated objectives of
protecting a plant and its roots from being eaten by burrowing mammals. A
skilled artisan is a person of ordinary creativity who would adjust the area of
coverage of spikes 300 as the area of coverage changes due to root growth.
Thus, we sustain the rejection of claims 21-25.
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Appeal2017-009590
Application 14/197, 13 5
DECISION
We affirm the rejection of claims 1-5 and 13-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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