Ex parte Heyworth

Board of Patent Appeals and Interferences

Aug 17, 1999

08534705 (B.P.A.I. Aug. 17, 1999)

Application for patent filed September 27, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MALCOLM I. HEYWORTH
__________
Appeal No. 98-3291
Application 08/534,7051
___________
ON BRIEF
___________
Before FRANKFORT, STAAB and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 5 through 10, which are all of the claims
remaining in the application. Claims 1 through 4 have been
canceled.
Appeal No. 98-3291
Application 08/534,705
2
Appellant’s invention relates to a Christmas tree
watering device. One embodiment of the invention (claims 5-7)
is seen in
Figure 3 of the drawings, while a second embodiment of the
invention (claims 8-10) is found in Figures 1 and 2 of the
application. Independent claims 5 and 8 are representative of
the subject matter on appeal and a copy of those claims, as
reproduced from the Appendix to appellant’s brief, is attached
to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Spinosa 4,993,176 Feb. 19, 1999
Lorenzana et al. (Lorenzana) 5,009,028 Apr. 23, 1991
Copenhaver 5,369,910 Dec. 6, 1994
Claims 5 through 7 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. In particular, the
examiner urges that these claims are rendered indefinite by a
lack of proper antecedent basis for “said tree stand” in lines
6-7 and 9 of claim 5.

Appeal No. 98-3291
Application 08/534,705
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Claims 5 through 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Copenhaver in view of Spinosa.
Claims 8 through 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Copenhaver in view of Lorenzana.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding the
rejections, we make reference to the examiner's answer (Paper
No. 13, mailed September 3, 1997) for the examiner's reasoning
in support of the rejections, and to appellant’s supplemental
brief (Paper No. 12, filed May 5, 1997) for appellant’s
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
Appeal No. 98-3291
Application 08/534,705
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consequence of our review, we have made the determinations
which follow.
Looking first at the rejection of claims 5 through 7
under 35 U.S.C. § 112, second paragraph, after reviewing
appellant’s specification and drawings, and claim 5 in light
thereof, it is
our opinion that the scope and content of the subject matter
embraced by claim 5 on appeal is reasonably clear and
definite, and fulfills the requirement of 35 U.S.C. § 112,
second
paragraph, that it provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the claim,
with the adequate notice demanded by due process of law, so
that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. See, In re Hammack, 427 F.2d
1378, 1382, 166 USPQ 204, 208 (CCPA 1970). In that regard, we
agree with appellant that one of ordinary skill in the art
would have readily associated the recited “said tree stand”
found in lines 3, 6-7 and 9 of claim 5 with the “stand for
Appeal No. 98-3291
Application 08/534,705
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holding... a Christmas tree” set forth in line 2 of claim 5.
Accordingly, we will not sustain the examiner's rejection of
appellant’s claims 5 through 7 under
35 U.S.C. § 112, second paragraph.
We next look to the examiner's prior art rejections of
the appealed claims, turning first to the rejection of claims
5 through 7 under 35 U.S.C. § 103 as being unpatentable over
Copenhaver in view of Spinosa. Claims 5 through 7 are
directed to the embodiment of appellant’s invention seen in
Figure 3.
Claim 5 expressly sets forth a tree stand which holds the butt
of a Christmas tree above the surface on which the tree stand
rests and a receptacle for retaining water adapted to be
positioned
beneath the butt end of said tree, with said receptacle being
“separate and apart from said tree stand.” Recognizing that
the water receptacle (e.g., 32) in Copenhaver is clearly part
of the tree stand, the examiner turns to Spinosa, urging that
Spinosa teaches a tree irrigation device wherein “the
receptacle for retaining water (30) is separate from the tree
Appeal No. 98-3291
Application 08/534,705
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stand (18)” (answer, page 4). Having made this determination
with regard to Spinosa, the examiner concludes that it would
have been obvious to one of ordinary skill in the art to
“substitute the tree stand with separate receptacle for
retaining water as taught by Spinosa for the tree stand with
integral receptacle of the apparatus of Copenhaver.”
Appellant (brief, page 7) argues that the examiner’s
findings with regard to Spinosa are in error and that the
receptacle or container (30) of Spinosa is mounted to the
stand (18) and therefore a part thereof. We agree. The tree
stand as seen in Spinosa is clearly like that shown in
appellant’s Figures 1 and 2, and in Lorenzana (Fig. 1),
wherein the receptacle for
retaining water is part of the tree stand itself. Thus, like
appellant, we fail to find in either Copenhaver or Spinosa any
teaching or suggestion regarding a water retaining receptacle
adapted to be positioned beneath the butt end of a tree and
which is “separate and apart from said tree stand,” as
required in claim 5 on appeal. For that reason, it is clear
that any combination of Copenhaver and Spinosa would not
Appeal No. 98-3291
Application 08/534,705
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render obvious the Christmas tree watering device that is set
forth in appellant’s claim 5 on appeal. Thus, the examiner’s
rejection of claim 5 under 35 U.S.C. § 103, and of claims 6
and 7 which depend therefrom, based on Copenhaver in view of
Spinosa will not be sustained.
The next rejection for our review is that of claims 8
through 10 under 35 U.S.C. § 103 as being unpatentable over
Copenhaver in view of Lorenzana. In this instance, the only
distinction between appellant’s claimed subject matter and
that seen in Copenhaver (Figure 1) resides in the particular
form of tree stand required in appellant’s claim 8. However,
Lorenzana (Figure 1) clearly shows the exact same type of tree
stand (at 17) that is defined in appellant’s claim 8 on appeal
and describes such stand as being “of a type that is widely
available
for supporting Christmas trees during the Holiday Season”
(col. 2, lines 37-38). Based on the collective teachings of
Copenhaver and Lorenzana, we must agree with the examiner that
it would have
Appeal No. 98-3291
Application 08/534,705
8
been obvious to one of ordinary skill in the art to substitute
a tree stand like that seen at (17) in Lorenzana for the tree
stand (30) of Copenhaver.
Appellant’s argument (brief, page 10) that there is no
suggestion whatsoever to combine the tree stand and vacuum
dispensing system of Lorenzana with the unusual tree stand and
different system of Copenhaver, is unpersuasive. This
argument appears to entirely miss the point of the examiner’s
rejection, which is that only the tree stand (17) of Lorenzana
is to be substituted for the tree stand (30) of Copenhaver,
thereby resulting in a Christmas tree watering device as set
forth in appellant’s claim 8 on appeal. While we understand
that the systems as a whole in Lorenzana and Copenhaver are
somewhat different from one another, we see no reason to
conclude that it would have been unobvious to one of ordinary
skill in this art at the time of appellant’s invention to
substitute one type of tree stand for another as the examiner
has done in this rejection, and we note that appellant has
provided no argument supporting the
Appeal No. 98-3291
Application 08/534,705
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unobviousness of such a substitution. Accordingly, the
examiner’s rejection of claim 8 under 35 U.S.C. § 103 is
sustained.
In accordance with appellant’s grouping of the claims on
page 4 of the brief, it follows that claims 9 and 10 will fall
with independent claim 8, from which they depend.
To summarize: the decision of the examiner to reject
claims 5 through 7 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention, is
reversed, as is the examiner’s decision rejecting claims 5
through 7 under 35 U.S.C. § 103 based on Copenhaver and
Spinosa. However, the decision of the examiner to reject
claims 8 through 10 under 35 U.S.C. § 103 as being
unpatentable over Copenhaver in view of Lorenzana is affirmed.
Thus, the decision of the examiner is affirmed-in-part.
Appeal No. 98-3291
Application 08/534,705
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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
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Appeal No. 98-3291
Application 08/534,705
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Administrative Patent Judge )
CEF/kis
Ernest B. Lipscomb, III
BELL, SELTZER, PARK & GIBSON
P. O. Box 34009
Charlotte, NC 28234
Appeal No. 98-3291
Application 08/534,705
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APPENDIX
5. A Christmas tree watering device comprising:
a stand for holding the butt of a Christmas tree above
the surface on which said stand rests;
a receptacle for retaining water having a base and sides
and adapted to be positioned beneath the butt end of said
tree, said receptacle being separate and apart from said tree
stand;
a water reservoir having a base and sides, said reservoir
being located apart from said tree stand; and
a single conduit having a first end connected to said
base of said water reservoir and a second end connected to
said base of said receptacle for retaining water,
whereby when water is placed in said water reservoir, the
water passes to said receptacle and automatically remains at
the same height as the water in said water reservoir.
8. A Christmas tree watering device comprising:
a stand having a means for holding the butt of a
Christmas tree, said means comprising at least three legs
which engage a ring and are in spaced relationship to each
other, the free ends of each leg supporting a second ring
which has a series of adjustable screws at a position equally
spaced around said second ring and threaded therethrough to
Appeal No. 98-3291
Application 08/534,705
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hold the trunk of said tree which is positioned coaxially with
said second ring;
a receptacle for retaining water having a base and sides
and adapted to be positioned beneath the butt end of said
tree, said receptacle being mounted to said tree stand;
a water reservoir having a base and sides, said reservoir
being located apart from said tree stand; and
a single conduit having a first end connected to said
base of said water reservoir and a second end connected to
said base of said receptacle for retaining water,
whereby when water is placed in said water reservoir, the
water passes to said receptacle and automatically remains at
the same height as the water in said water reservoir.