Ex Parte Henson

Patent Trial and Appeal Board

Feb 9, 2016

12573597 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/573,597 10/05/2009
21834 7590 02/10/2016
Beck Tysver Evans, PLLC
2900 THOMAS A VENUE SOUTH
SUITE 100
MINNEAPOLIS, MN 55416
FIRST NAMED INVENTOR
David Lee Henson
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.
T68.12-0002 6483
EXAMINER
CLERKLEY, DANIELLE A
ART UNIT PAPER NUMBER
3643
MAILDATE DELIVERY MODE
02/10/2016 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
Ex parte DAVID LEE HENSON
Appeal2013-002667
Application 12/573,597
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 47---61. 1 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We AFFIRM.
1 "Think Mint Incorporated" is "the real party in interest." (Appeal Br. 3.)
Appeal2013-002667
Application 12/573,597
STATEMENT OF THE CASE
The Appellant's invention "relates to horticultural containers,
particularly those that allow drainage." (Spec. 1, lines 10-11.)
Illustrative Claim2
4 7. A horticultural combination, comprising:
a) a pot having:
i) an open top and a closed bottom,
ii) solid sides extending from the open top to the
closed bottom, where the solid sides do not
allow for passage of water, the solid sides
having an upper portion proximal the open top
and a lower portion proximal the closed bottom,
with the upper portion being larger than the
lower portion, and
iii) a plurality of holes within the lower portion of
the solid sides, the plurality of holes allowing
for the passage of water, wherein the upper
portion of the solid sides has no holes;
b) a natural fiber liner containing a majority of kenaf
fibers, the natural fiber liner located within the pot, the
natural fiber liner having a bottom surface resting
proximal the closed bottom and a top surface
positioned above the plurality of holes, the natural
fiber liner having a density; and
c) soil located within the pot and above the top surface of
the natural fiber liner;
i) wherein the density is such that droplets of
water when applied to the top surface of the
natural fiber liner are not absorbed by the
natural fiber liner, but when the top surface is
saturated with water that water passes through
the natural fiber liner and out the plurality of
holes.
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 18-20 of the Appeal Brief.
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Appeal2013-002667
Application 12/573,597
Kneller
Hendrickson
Medoff
Strand
References
us 1,977 ,827
US 2003/0024160 Al
US 2003/0187102 Al
GB 2 360 434 A
Rejections
Oct. 23, 1934
Feb. 6,2003
Oct. 2, 3003
Sept. 26, 2001
I. The Examiner rejects claim 52 under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. (Final
Action 3.)
II. The Examiner rejects claims 47-61under35 U.S.C. § 103(a) as
unpatentable over Hendrickson, Medoff, Strand, and Kneller. (Id. at 4.)
ANALYSIS
Rejection I
The Appellant does not present arguments regarding the Examiner's
rejection of claim 52 as failing to comply with the enablement requirement,
so we summarily sustain the Examiner's rejection of claim 52 under
35 U.S.C. § 112, first paragraph.
Rejection II
Independent claims 47 and 56 each recite "a natural fiber liner
containing a majority of kenaf fibers." (Claims App.) The Examiner finds
that Hendrickson teaches a natural fiber liner containing a majority of flax
fibers and that Medoff teaches that "flax" and "kenaf' are known
lignocellulosic raw materials. (See Final Action 4--5; see also Hendrickson i-f
9, and Medoffi-f 50.) In view of these teachings, the Examiner finds that it
would have been obvious to one of ordinary skill in the art to modify
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Application 12/573,597
Hendrickson's liner to contain a majority ofkenaf fibers. (See Final
Action 5.)
The Appellant argues that "Medoff does not teach the use of kenaf in
agricultural liners." (Appeal Br. 11.) This argument is premised upon the
words "sheets," "mats," and "agricultural" being just three items in a long
list of possible uses for Medoff s fibrous material. (Id.) We are not
persuaded by this argument because the Examiner's rejection is based upon
a combination of the teachings of Hendrickson and Medoff. Hendrickson
specifically teaches that an agricultural liner can be comprised of stem-plant
fibers (i.e., flax) and binder fibers (see Hendrickson i-f 31 ); and Medoff
teaches that an agricultural product can be comprised of stem-plant fibers
(i.e., flax or kenaf) (see Medoffi-fi-150, 97). We agree with the Examiner that
one of ordinary skill in the art would understand from these teachings that
kenaf fibers could be used in an agricultural liner. (See Final Action 7-8.)
The Appellant argues that the proposed kenaf-for-flax substitution
"would render Hendrickson unsatisfactory for its intended purpose," as
' [ t ]he stated purpose of the Hendrickson liner is to improve water retention."
(Appeal Br. 14--15 (citation omitted).) We are not persuaded by this
argument because Hendrickson's modified liner could still be used to line a
basket for a hanging plant. Moreover, Hendrickson specifically teaches the
desirability of different water-control characteristics in a liner. (See
Hendrickson i-f 3 1.)
The Appellant argues that kenaf fibers are not a "known alternative"
for the flax fibers. (Appeal Br. 14.) This argument is premised upon
Medoffs second example showing "different compositions containing
different combinations of materials" and each different composition having
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Application 12/573,597
"unique" and "vastly different" properties. (Id.) We are not persuaded by
this argument because Medoff' s second example does not provide any
comparison of compositions containing different stem-plant fibers (i.e., flax
versus kenat), and thus does not demonstrate they would have different
properties that would deter substitution. (See Medoffi-fi-f 103-119.)
Independent claims 47 and 56 also each require the natural fiber liner
to have density such that certain water-control characteristics (i.e., "such that
droplets of water when applied to the top surface of the natural fiber liner are
not absorbed by the natural fiber liner, but when the top surface is saturated
with water that water passes through the natural fiber liner and out the
plurality of holes") are achieved. (Claims App.) The Examiner finds that
Hendrickson's modified liner (wherein kenaf fibers are substituted for flax
fibers) would possess such a density. (See Answer. 8.)
The Appellant argues that "none of the prior art references teaches a
liner having the described density." (Appeal Br. 13.) We are not persuaded
by this argument because the Appellant's liner and Hendrickson's liner are
produced by identical or substantially identical processes. 3 As implicated by
the Examiner (see Answer 8), the binder-to-fiber ratios, the mixing, the
blanket-forming, the oven-setting, and the processed thicknesses disclosed
by Hendrickson to produce its liner are very similar to, if not the same as,
those disclosed by the Appellant to produce its liner with the claimed
density. (Compare Hendrickson i1i1 31-34 and Spec. 7, lines 2-25). As
3 Where "the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product."
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
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Application 12/573,597
such, the Examiner has reason to believe that a kenaf-substituted-for-tlax
liner made by Hendrickson's production method would result in a liner
having the claimed density; and the Appellant provides us with no evidence
to the contrary.
The Appellant argues that "substituting kenaf for flax does not
produce predictable results," namely the water-control characteristics
achieved by the claimed density. (Appeal Br. 15.) We are not persuaded by
this argument because it infers that the claimed density is dictated solely, or
at least mostly, by the presence ofkenaf fibers. However, the Appellant's
Specification conveys that this density is the result of a plurality of
production factors, including, for example, binder-to-fiber ratios and
processed thicknesses. (See Spec. 7, lines 2-25.) As indicated above,
Hendrickson discloses the same, or very similar, production factors. (See
Hendrickson i-f 31.) Moreover, the Specification does not convey that kenaf
fibers are critical to achieve the claimed density, as it calls for "[k ]enaf or
like fibers," or "[k]enaf like fibers." (See Spec. 7, lines 2-25.) And,
notwithstanding the Specification, the Appellant offers us no evidence
showing that the alleged "unexpected results" occur by virtue of the
substitution of kenaf for flax.
Thus, we are not persuaded that the liner recited in the independent
claims would not have been obvious over the applied prior art references;
and we sustain the Examiner's rejection of independent claims 47 and 56
under 35 U.S.C. § 103(a). As the Appellant does not argue the dependent
claims separately, we also sustain the Examiner's rejection of dependent
claims 48-55 and 57---61under35 U.S.C. § 103(a).
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DECISION
We AFFIRM the Examiner's rejections of claims 47---61.
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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