Ex Parte Gilberg

Board of Patent Appeals and Interferences

Jun 22, 2004

09989330 (B.P.A.I. Jun. 22, 2004)

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written for publication and is not binding precedent of the Board.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. 20

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DOUGLAS BENNETT GILBERG
__________

Appeal No. 2004-1293
Application No. 09/989,330
___________

ON BRIEF
___________

Before GARRIS, WALTZ, and, DELMENDO, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1 through
32 (final Office action mailed Dec. 18, 2002, paper 8), which
are all of the claims pending in the above-identified
application.1

1 In reply to the final Office action, the appellant
submitted an amendment pursuant to 37 CFR § 1.116
(2003)(effective Feb. 5, 2001) (paper 9 filed Feb. 24, 2003),
proposing a change to claim 17. The examiner, however, refused
Appeal No. 2004-1293
Application No. 09/989,330

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The subject matter on appeal relates to a plant display
(claims 1-29) and to a method of managing a plant display
(claims 30-32). Further details of this appealed subject matter
are recited in illustrative claims 1, 17, 18, and 30, the only
independent claims on appeal, reproduced below:
1. A plant display comprising:
a transparent container having an inner surface
defining an interior volume adapted to be at least
partially occupied by a substantially transparent
liquid;
a plant receptacle positioned at least partially
within the interior volume of the transparent
container in a manner so that at least a portion of
the receptacle is below a surface of the liquid
occupying the container when the container is at least
partially occupied by the liquid, the receptacle
resting on a bottom portion of the inner surface of
the transparent container, the receptacle having an
outer surface with at least one recess, the recess
being at least partially occupied by a substrate
medium;
the recess and substrate medium occupying the
recess being adapted to hold a live plant growing
therein, wherein the recess is located in a portion of
the outer surface of the receptacle that is at least
partially below the surface of the liquid occupying
the container when the container is at least partially
occupied by the liquid so that the plant is at least
partially below the surface of the liquid when the
plant is held in the recess and substrate medium
occupying the recess.

17. A plant display comprising:
a transparent container having an inner surface
defining an interior volume adapted to be at least
partially occupied by a substantially transparent
liquid; and a plant receptacle positioned at least

entry of this proposed amendment. (Advisory action mailed Mar.
6, 2003, paper 10.
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Application No. 09/989,330

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partially within the interior volume of the
transparent container in a manner so that at least a
portion of the receptacle is below a surface of the
liquid occupying the container when the container is
at least partially occupied by the liquid, the
receptacle having an outer surface with at least one
recess, the recess being at least partially occupied
by a substrate medium;
the recess and substrate medium occupying the
recess being adapted to hold a live plant growing
therein, wherein the recess is located in a portion of
the outer surface of the receptacle that is at least
partially below the surface of the liquid occupying
the container when the container is at least partially
occupied by the liquid so that the plant is at least
partially below the surface of the liquid when the
plant is held in the recess and substrate medium
occupying the recess;
wherein the recess is located in a portion of the
outer surface of the receptacle that is sufficiently
near the surface of the liquid so that a majority of
the plant is growing above the surface of the liquid,
when the container is at least partially occupied by
the liquid and when the plant is held in the recess.

18. A plant display comprising:
a transparent container having an inner surface
defining an interior volume that is at least partially
occupied by a substantially transparent liquid;
a plant receptacle positioned at least partially
within the interior volume of the transparent
container so that at least a portion of the receptacle
is below a surface of the liquid, the receptacle
resting on a bottom portion of the inner surface of
the transparent container, the receptacle having an
outer surface with a first recess that is at least
partially occupied by a first substrate medium and a
second recess that is at least partially occupied by a
second substrate medium;
the first recess and first substrate medium being
adapted to hold a first live plant growing therein,
wherein the first recess is located in a portion of
the outer surface of the receptacle that is below the
surface of the liquid occupying the container when the
container is at least partially occupied by the liquid
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Application No. 09/989,330

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so that the first plant is at least partially below
the surface of the liquid; and
the second recess and second substrate medium
being adapted to hold a second live plant growing
therein, wherein the second recess is located in a
portion of the outer surface of the receptacle that is
above the surface of the liquid occupying the
container when the container is at least partially
occupied by the liquid so that the second plant is
above the surface of the liquid.

30. A method of managing a plant display
comprising the steps of:
providing a transparent container having an inner
surface defining an interior volume;
at least partially filling the interior volume of
the container with a substantially transparent liquid;
providing a plant receptacle having an outer
surface with at least one recess;
at least partially filling the recess with a
substrate medium;
planting a live plant in the substrate occupying
the recess; and
positioning the receptacle at least partially
within the interior volume of the transparent
container with the receptacle resting on a bottom
portion of the inner surface of the transparent
container and in a manner so that the recess is below
a surface of the liquid occupying the container.

The examiner relies on the following prior art references
as evidence of unpatentability:
Gillinder 715,571 Dec. 09, 1902

DiLernia 5,867,938 Feb. 09, 1999

Gates 6,179,218 B1 Jan. 30, 2001
(filed Feb. 02, 1999)

Satterlee Nursery, Planting Depths of Various Water Plants, at
http://www.satterleenursery.com/planting_depth_diagram.gif
(publication date unknown)(Satterlee).

Appeal No. 2004-1293
Application No. 09/989,330

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The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
I. claims 1 through 11, 14 through 16, 18 through 27, and
30 through 32 as unpatentable over Gillinder
(examiner’s answer mailed Jun. 23, 2003, paper 13,
pages 3-4; final Office action, pages 2-4);2
II. claims 12, 13, 28, and 29 as unpatentable over
Gillinder in view of DiLernia and Gates (answer, page
4; final office action, page 5); and
III. claim 17 as unpatentable over Gillinder in view of
Satterlee (answer, pages 4-5; final Office action,
page 5).
We reverse rejections I and II but affirm rejection III.
In addition, we enter a new ground of rejection pursuant to our
authority under 37 CFR § 1.196(b)(2003)(effective Dec. 1, 1997).

2 The statement of the rejection as set forth in the Jun.
23, 2003 answer omitted claims 2-11, 14-16, 18-27, and 30-32.
In an order mailed Oct. 27, 2003 (paper 16), a Program and
Administrator of the Board of Patent Appeals and Interferences
required clarification of various matters including the omission
of these claims. In response, the examiner indicates that
claims 2-11, 14-16, 18-27, and 30-32 should have been rejected
on this ground. (Supplemental examiner’s answer mailed Jan. 14,
2004, paper 18, p. 3.) We note, however, that the examiner’s
issuance of a supplemental answer without our authorization
pursuant to 37 CFR § 1.193(b)(1)(2003)(effective Dec. 1, 1997)
is inappropriate. Under these circumstances, we will ignore the
supplemental answer except as to clarification of matters
specifically raised in the Oct. 27, 2003 order.
Appeal No. 2004-1293
Application No. 09/989,330

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I. Claims 1-11, 14-16, 18-27, & 30-32: Gillinder
The examiner’s rejection relies on Gillinder as the
principal prior art reference. According to the examiner
(answer, page 3), “Gillinder discloses the claimed invention, as
cited in claims 1 and 30, except the plant receptacle does not
sit on a bottom portion of the transparent container.”
Nevertheless, it is the examiner’s position that “[i]t would
have been obvious to one having ordinary skill in the art at the
time the invention was made to place the receptacle C on a
bottom portion of the transparent container A, since it has been
held that rearranging parts of an invention involves only
routine skill in the art.” (Id.)
We cannot agree with the examiner’s analysis and
conclusion. As pointed out by the appellant (appeal brief filed
May 14, 2003, paper 12, pages 13-14), Gillinder describes an
aquarium plant-holder that does not interfere “with the freedom
of the fish from the top to the bottom of the water, and vice
versa...” (Lines 8-15.) Specifically, Gillinder teaches that
the plant-holder includes radiating arms E which, in concert
with the neck portion of the aquarium, support the plant-holder
in suspension in the container. (Figures 1 and 2; lines 28-40.)
Gillinder further teaches that the configuration of the plant-
holder permits it to be “readily removed and reapplied” and that
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Application No. 09/989,330

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the plants are prevented from spreading or crowding the neck
portion of the aquarium because the top of the plant-holder is
above the neck of the aquarium. (Emphasis added; lines 40-51.)
Given the particular requirements of the configuration and
positioning of Gillinder’s plant-holder, we share the
appellant’s view that one of ordinary skill in the art would not
have been led to modify Gillinder’s aquarium in the manner as
proposed by the examiner. It is our judgment, therefore, that
the examiner has not established a prima facie case of
obviousness against appealed claims 1 through 11, 14 through 16,
18 through 27, and 30 through 32.
The examiner argues that Satterlee provides evidence of
obviousness. (Answer, page 6.) We note, however, that
Satterlee was not included in the statement of the rejection.3
Moreover, Satterlee relates to a water garden, not to an
aquarium in which the object is to provide a plant holder that
permits fish to swim freely from top to bottom and vice versa
and prevents or reduces the possibility of the plant restricting
the neck portion of the aquarium, as specifically described in
Gillinder.

3 In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970)(“Where a reference is relied on to support a
rejection, whether or not in a ‘minor capacity,’ there would
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Application No. 09/989,330

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II. Claims 12, 13, 28, & 29: Gillinder, DiLernia, & Gates
Appealed claims 12, 13, 28, and 29 depend from either claim
1 or claim 18 and recite that at least a portion of the
receptacle of the plant display is shaped to resemble an animal
(claims 12 and 28) or a vegetable organism (claims 13 and 29).
While the examiner relies on additional prior art references in
the form of DiLernia and Gates for teachings relevant to
limitations further recited in appealed claims 12, 13, 28, and
29 (answer, page 4), these references do not cure the basic
deficiency in the examiner’s rejection of independent claims 1
and 18. Accordingly, we reverse for the same reasons set forth
above in our discussion of rejection I.
III. Claim 17: Gillinder and Satterlee
It is well settled that, in proceedings before the United
States Patent and Trademark Office (PTO), claims in an
application are to be given their broadest reasonable
interpretation, taking into account the written description
found in the specification. In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)(“During
patent examination the pending claims must be interpreted as

appear to be no excuse for not positively including the
reference in the statement of rejection.”).
Appeal No. 2004-1293
Application No. 09/989,330

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broadly as their terms reasonably allow.”); In re Yamamoto, 740
F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984)(“The PTO
broadly interprets claims during examination of a patent
application since the applicant may ‘amend his claim to obtain
protection commensurate with his actual contribution to the
art.’”)(quoting In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ
541, 550 (CCPA 1969)).
We are of the opinion that appealed claim 17 does not
positively require the plant display to contain “a substantially
transparent liquid” or “a live plant.” The recitations “adapted
to” and “when” clearly indicate to one skilled in the relevant
art that the use of the terms “substantially transparent liquid”
and “live plant” is merely for the purpose of defining further
functional characteristics of and relationship between the
transparent container and/or the plant receptacle.
Like the appellants’ claimed plant display, Gillinder’s
aquarium is said to comprise a fish jar or aquarium A (i.e., “a
transparent container having an inner surface defining an
interior volume adapted to be at least partially occupied by a
substantially transparent liquid”) and, disposed within the
aquarium, a plant holder C consisting of a vessel or flower pot
D and radiating arms E in which are disposed sand, stone, or
other matter as well as a plant (i.e., “a plant receptacle
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Application No. 09/989,330

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positioned at least partially within the interior volume of the
transparent container in a manner so that at least a portion of
the receptacle is below a surface of the liquid occupying the
container when the container is at least partially occupied by
the liquid, the receptacle having an outer surface with at least
once recess, the recess being at least partially occupied by a
substrate medium”). When Gillinder’s plant holder is provided
with a sufficiently tall plant, which is not specifically
required as a component of the plant display in appealed claim
17, the majority of the plant would necessarily be located under
water, as required by appealed claim 17. Accordingly, Gillinder
describes, either expressly or inherently, each and every
limitation of appealed claim 17. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Although the examiner’s rejection of appealed claim 17 has
been made under 35 U.S.C. § 103(a), a prior art disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim
obvious, for anticipation is the epitome of obviousness. In re
Baxter Travenol Laboratories, 952 F.2d 388, 391, 21 USPQ2d 1281,
1284-85 (Fed. Cir. 1991); In re Fracalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982); In re May, 574 F.2d 1082, 1089,
197 USPQ 601, 607 (CCPA 1978).
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Summary of Disposition of Examiner’s Rejections
In summary, we reverse the examiner’s rejections under 35
U.S.C. § 103(a) of: (i) appealed claims 1 through 11, 14 through
16, 18 through 27, and 30 through 32 as unpatentable over
Gillinder; and (ii) appealed claims 12, 13, 28, and 29 as
unpatentable over Gillinder in view of DiLernia and Gates. We
affirm, however, the examiner’s 35 U.S.C. § 103(a) rejection of
appealed claim 17 as unpatentable over Gillinder in view of
Satterlee.
The decision of the examiner is therefore affirmed in part.
New Grounds of Rejection
We enter the following new grounds of rejection.
A. Claims 1 through 3, 6 through 11, 16, 17, and 30 are
rejected under 35 U.S.C. § 102(b) as anticipated by British
patent application GB 2 059 280 A published in the name of
inventor James on Apr. 23, 1981, already of record.
James describes a filtration system for an aquarium
comprising a hollow shell 11 resting on the bottom of the
aquarium and including one or more depressions 18 filled with
gravel in which live plants may be grown. (Figure 1; page 1,
lines 116.) James further teaches that the hollow shell may be
polymeric and that the outer upper surface of the hollow shell
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Application No. 09/989,330

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may have an external appearance of a natural object such as a
rock or log. (Page 2, lines 18-24.)
From these teachings, we determine that James describes,
either expressly or inherently, each and every limitation of
claims 1 through 3, 6 through 11, 16, 17, and 30 within the
meaning of 35 U.S.C. § 102(b). In re Schreiber, 128 F.3d at
1477, 44 USPQ2d at 1431.
B. Claims 12, 13, 18, 22, 24, 26 through 29, 31, and 32
are rejected under 35 U.S.C. § 103(a) over James.
Claims 12 and 13 recite that at least a portion of the
receptacle is shaped to resemble an animal and a “vegetable
organism,” respectively. As we discussed above in rejection A,
James teaches that the outer upper surface of the hollow shell
may be in the form of any natural object. Thus, we determine
that one of ordinary skill in the art would have found it prima
facie obvious to mold the hollow shell of James in the form of
any natural object such as an animal or a vegetable.
Claims 18, 22, 24, and 26 through 29 require two recesses,
one of which is below the surface of the liquid when the
container is at least partially filled and the other above the
surface of the liquid. As we indicated above, James teaches one
or more hollow shells. One of ordinary skill in the art would
have found it prima facie obvious to provide at least one hollow
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shell that is higher than another in order to obtain a natural
and aesthetically pleasing appearance.
Claim 31 recites that the receptacle is positioned in the
transparent container after the recess is partially filled with
substrate medium and a live plant is planted, while claim 32
recites removing the plant display from the aquarium for
cleaning purposes. Although James does not specifically
disclose these steps, we determine that one of ordinary skill in
the art would have carried out the recited steps in the normal
use of James’s aquarium in order to facilitate the positioning
of the filter system in the aquarium as well as its periodic
cleaning and maintenance.
C. Claims 4, 5, 23, and 25 are rejected under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of James and
U.S. Patent 4,117,805 issued to Ward on Oct. 3, 1978, already of
record.
Claims 4, 5, and 25 recite a transparent container having a
“convex configuration so that, when viewed from outside the
container through the convex portion, contents of the container
appear magnified” or “a generally spherical bowl.” Ward teaches
an aquarium having a generally spherical bowl shape. (Figure
1.) Thus, it is our judgment that one of ordinary skill in the
art would have been led to combine the teachings of James with
Appeal No. 2004-1293
Application No. 09/989,330

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Ward to arrive at an aquarium encompassed by claims 4 and 5.
Specifically, one of ordinary skill in the art would have found
it prima facie obvious to manufacture James’s aquarium in the
shape of a generally spherical bowl as shown in Ward with a
reasonable expectation of obtaining the aesthetic qualities
attributable to such an aquarium having a generally spherical
shape.
Claim 23 recites that “the contents of the second recess
are isolated from the liquid occupying the container.” Ward
teaches that an aquarium may be provided with a terrarium to
sustain terrestrial living plants and animals. (Column 1, lines
30-36.) Accordingly, one of ordinary skill in the art would
have found it prima facie obvious to provide a terrarium in the
aquarium of James as suggested by Ward in order to sustain
terrestrial plant life.
D. Claims 14, 15, and 19 through 21 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of
James and U.S. Patent 4,074,997 issued to Cohen on Feb. 21,
1978, copy attached.
Claims 14, 15, and 19 through 21 recite that the substrate
medium is a “synthetic material, comprises “fiberglas batting,”
or is “an organic material.” Cohen teaches aquarium plant
substrates are known in the art to include organic material such
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Application No. 09/989,330

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as peat, organic polymers, and fibrous materials. (Column 1,
line 5 to column 3, line 51; Examples 1-34.) Thus, we
determine that one of ordinary skill in the art would have found
it prima facie obvious to use substrates including organic
material such as peat, organic polymers, and fibrous materials
(e.g., fiberglas batting) as suggested by Cohen in James in
order to enhance the growth of the live plants in an aquarium.
Time for taking action
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that “[a] new
ground of rejection shall not be considered final for the
purposes of judicial review.” 37 CFR § 1.196(b) also provides
that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise ONE (1) of the following two options
with respect to the new ground of rejection to avoid termination
of proceedings (37 CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner...

(2) Request that the application be reheard under
37 CFR § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record...

Appeal No. 2004-1293
Application No. 09/989,330

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED IN PART
37 CFR § 1.196(b)

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

rhd/lp

Appeal No. 2004-1293
Application No. 09/989,330

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