Ex Parte MacKenzie

Patent Trial and Appeal Board

Mar 19, 2015

11623168 (P.T.A.B. Mar. 19, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/623,168 01/15/2007 David S. MacKenzie HOR08 P301 4361
277 7590 03/20/2015
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
WILLIAMS, MONICA L
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
03/20/2015 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 S. MACKENZIE
____________________

Appeal 2013-002723
Application 11/623,168
Technology Center 3600
____________________

Before JOHN C. KERINS, BRANDON J. WARNER, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David S. Mackenzie (Appellant)
1
seeks review under 35 U.S.C. § 134
of the Examiner’s rejections of claims 1–12 and 26–48. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a modular planting system. Claims 1, 23,
28, 31, 37, 38, 42, 43, 44, and 45 are independent claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1
Appellant indicates that the real party in interest is Hortech, Inc. Appeal
Br. 5.
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1. A green roof planter module, comprising:
a planter including a bottom wall, a plurality of sidewalls
that cooperate with the bottom wall to form an interior space,
and at least one support tab that extends inward towards the
interior space from at least a select one of the bottom wall and
the plurality of sidewalls; and
a removable collar member extending upwardly from at
least a select one of the plurality of sidewalls, wherein the collar
member is supported within the interior space by the at least
one support tab, the collar member is adapted to retain a plant
matter that extends above the plurality of sidewalls, the collar
member is not secured to the planter with respect to a generally
upward force exerted on the collar in a substantially vertical
direction, and wherein the planter is adapted to support a
majority of a plant matter placed within the interior space,
supported by the collar and extending upward along a majority
of a vertical height of the collar, subsequent to the collar being
removed from within the interior space.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chadbourne
Ripley
Peterson
Buss
Wu
Perry
Waterford
US 3,651,976
US 5,187,894
US 5,309,846
US 5,419,080
US 6,536,361 B1
US 2007/0094927 A1
US 7,387,823 B2
Mar. 28, 1972
Feb. 23, 1993
May 10, 1994
May 30, 1995
Mar. 25, 2003
May 3, 2007
June 17, 2008
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REJECTIONS
2

I. Claim 37 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Waterford. Non-Final Act. 3.

II. Claims 31 and 35 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Wu. Non-Final Act. 4.
III. Claims 1–3, 5–7, 9, 10, 36, 38, and 40–48 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Peterson and
Waterford. Non-Final Act. 5.
IV. Claims 4, 8, 12, and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Peterson, Waterford, and Ripley.
Non-Final Act. 16.
V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peterson, Waterford, and Perry. Non-Final
Act. 18.
VI. Claims 28–30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chadbourne. Non-Final Act. 18.
VII. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wu and Buss. Non-Final Act. 20.
VIII. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu and Peterson. Non-Final Act. 20.

2
Appellant filed the present appeal after the Examiner issued a non-final
Office action January 10, 2012, after reopening prosecution following the
filing of an earlier appeal brief. Non-Final Act. 2. Claims 23–25 stand
allowed by the Examiner. Non-Final Act. 21.
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ANALYSIS
Rejection I
Claim 37 requires, in relevant part, “a removable collar member . . .
adapted to be forced against at least one of the plurality of sidewalls of the
planter by a plant matter located within the interior space.” Appeal Br.,
Claims App. The Examiner finds that Waterford’s removable collar member
(item 14) is adapted to be forced against a sidewall by plant matter in the
interior space of the planter. Non-Final Act. 4 (referencing Waterford, Figs.
4A and 4B).
Figures 4A and 4B of Waterford are reproduced below:

Figures 4A and 4B depict the relationship between the peripheral wall
14 (which the Examiner finds to correspond to the recited removable collar
member) and the flange 18 (which the Examiner finds to be a sidewall).
Also instructive is Figure 6 of Waterford, reproduced below:
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Figure 6 depicts adjacent planters with fill material. Appellant argues
that Waterford “in no way explicitly [or inherently] discloses that the
synthetic infill material (40) as placed about the base plate (12) forces the
peripheral wall (14) outward against the flange (18).” Appeal Br. 16. We
find this argument unpersuasive. As seen in Figure 6, the material within the
planter would exert a lateral force against at least a part of peripheral wall
14. At least near the lower edges of the planter, this lateral force would
force the peripheral wall (14) against the flange (18). As seen in the above
figures, the peripheral wall (14) contacts the flange (18), so that lateral
forces would be transferred through the peripheral wall (14) to the flange
(18). See Answer 3.
Appellant’s contentions appear to be based on a belief that claim 37
requires the peripheral wall (14) to be deformed outward to be forced against
the flange (18). See Appeal Br. 16. This belief is inconsistent with the
scope of claim 37, which merely requires the collar to be adapted to be
forced against the sidewall. As the Examiner correctly finds, the fill
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material in the interior of Waterford’s planter would force the peripheral
wall (14) against the flange (18). Non-Final Act. 4.
For the reasons above, we sustain the Examiner’s rejection of claim
37.

Rejections II, VII, and VIII
Independent claim 31 recites, in relevant part, “a drainage member . . .
and a planter separate from the drainage member . . . wherein at least a
portion of the planter extends upwardly from an uppermost surface of the
drainage member.” Appeal Br., Claims App. The Examiner finds that Wu
anticipates claim 31, including disclosing a drainage member (item 1) and a
planter (item 2). Non-Final Act. 4 (referencing Wu, Fig. 3).
Appellant argues that Wu’s planter (item 2, but not including item 20)
fails to include a portion that ends upwardly from an uppermost surface of
the drainage member as required by claim 31. Appeal Br. 17–18. In
response, the Examiner makes clear that the rejection includes item 20 as
part of Wu’s planter 2. Answer 3–4 (“The Examiner maintains that portion
20 is considered to be part of portion 2 which is the planter.”). Accordingly,
at least a portion of the planter extends upwardly from an uppermost surface
of the drainage member as required by claim 31. Appellant does not
demonstrate error in the Examiner’s finding.
For the reasons above, we sustain the Examiner’s rejection of
independent claim 31. Appellant does not provide any separate arguments
for the patentability of claims 32, 33, and 35, which depend, directly or
indirectly, from claim 31. See Appeal Br. 18, 31. Accordingly, we sustain
the rejection of claims 32 and 33 (Rejection VII) and claim 35 (Rejection II)
for the same reasons.
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Appellant does separately argue the patentability of claim 34, which
depends from claim 31. See id. at 18. However, Appellant makes the same
argument as for claim 31—namely “that should the short wall (20) not be
considered part of the support plate (2), then [Wu] fails to disclose a
removable collar member as defined in claim 34.” Id. As the Examiner
makes clear, and Appellant does not rebut, Wu’s short wall (20) is
considered part of the planter or support plate (2). Answer 3–4.
Accordingly, we sustain the rejection of claim 34 (Rejection VIII).

Rejection III
The Examiner rejects claims 1–3, 5–7, 9, 10, 36, 38, and 40–48 under
35 U.S.C. § 103(a) as being unpatentable over Peterson and Waterford.
Appellant argues claims 1, 2, 5–7, 10, 36, 38, 40–45, 47, and 48 as a group
and provides separate arguments for claims 3, 9, and 46. Appeal Br. 18–27.
We take claim 1 as being representative of the claims argued as a group, and
claims 2, 5–7, 10, 36, 38, 40–45, 47, and 48 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv) (2012). Claims 3, 9, and 46 are separately
addressed.

Claim 1
Claim 1 recites, in part:
a planter including a bottom wall, a plurality of sidewalls that
cooperate with the bottom wall to form an interior space, and at
least one support tab that extends inward towards the interior
space from at least a select one of the bottom wall and the
plurality of sidewalls; and a removable collar member
extending upwardly from at least a select one of the plurality of
sidewalls.
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Appeal Br., Claims App. The Examiner finds that Peterson discloses much
of the subject matter of claim 1, except that Peterson’s support tab is on the
collar rather than the planter. Non-Final Act. 6. The Examiner further finds
that Waterford discloses a planter-collar arrangement with a support tab
configured on the planter rather than on the collar. See id. The Examiner
determines that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the planter module of
Peterson by providing the support tabs on the planter instead of
on the collar member, as taught by Waterford, in order to
strengthen the securement between the planter and the collar
member.
Id. The Examiner further finds that moving the support tab from Peterson’s
collar to the planter is a reversal of essential working parts that requires only
routine skill for one of ordinary skill in the art. Id. at 6–7.
Appellant argues that the Examiner’s reasoning for modifying
Peterson based on the teachings of Waterford is “merely conclusory” and
“incorrect.” Appeal Br. 20. Appellant explains that:
there is nothing within the disclosures of the art as currently
cited, and respectfully submits that it would not be generally
known by someone skilled in the art, that forming the tabs of
[Peterson] in a top edge of a sidewall and that inserting an edge
of the edge member therein would result in any increase in
securement of the pallet and edge member.
Id. at 21.
We find this argument unpersuasive as it fails to address the
Examiner’s further reasoning that the proposed modification is merely a
reversal of parts. See Non-Final Act. 6–7; Answer 4. As we agree with this
further reasoning, Appellant does not inform us of error in the Examiner’s
obviousness determination.
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Appellant further argues that:
should the Examiner be suggesting that the entrapment edge
member and pallet of [Peterson] be reconfigured to include the
arrangement as shown in Figure 12A of [Waterford] . . . claim 1
defines in part, that “the collar member is not secured to the
planter with respect to a generally upward force exerted on the
collar in a substantially vertical direction,” and that figure
12A . . . shows a positive engagement between the base plate
and the peripheral wall, namely, the resilient detents (24) which
engage the recesses (22).
Appeal Br. 21. We find this argument unpersuasive as it is not
commensurate with the Examiner’s rejection. The Examiner does not limit
Waterford to the teachings of the support tab/collar configuration of Figure
12A. See Non-Final Act. 6 (referencing both Figs 12A and 12B). As clearly
illustrated in Waterford’s Figure 12B, the support tab 28 does not include
any detents that engage the collar 14.
Appellant also argues that the Examiner “pick[s] and choose[s]”
among the elements of Waterford and ignores Waterford’s embodiment of
Figure 12A, which would secure the collar in the vertical direction, contrary
to the requirements of claim 1. Appeal Br. 22–23. We find this argument
unavailing. Waterford clearly discloses multiple embodiments, including an
embodiment, depicted in Figure 12B, that does not secure the collar in the
vertical direction. The Examiner’s reliance on this embodiment is not
improper. Cf. KSR Int’l Co., 550 U.S. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Appellant’s reliance on In re Wesslau, 353 F.2d 238, 241 (CCPA
1965) in support of this argument, is inapposite. See Appeal Br. 22. In
Wesslau, the court’s rationale for rejecting the examiner’s “piecemeal
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reconstruction” is that the prior art failed to suggest the proposed
modification. See id. at 240–41. This rationale is foreclosed by KSR Int’l
Co. v. Teleflex Inc., in which the Supreme Court rejected the rigid
requirement of a teaching, suggestion, or motivation to combine known
elements in order to show obviousness. See KSR Int’l Co., 550 U.S. at 415.
In re Mercier is equally inapposite. See Appeal Br. 22; In re Mercier, 515
F.2d 1161, 1165–66 (CCPA 1975). In Mercier, the court concluded that the
Board’s use of only some portions of a reference and ignoring other portions
was improper because those other portions taught away from the claimed
invention. See In re Mercier, 515 F.2d at 1165–66. Appellant does not
argue that Waterford and Peterson teach away from the claimed invention.
Finally, Appellant’s citation to Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341
(Fed. Cir. 2008), is unavailing. See Appeal Br. 22. We do not dispute
Appellant’s quotation from the case, but instead find the quotation
inapplicable—the Examiner does not merely “pick and choose” disparate
teachings from Waterford. Instead, the Examiner relies on a teaching from a
specific, independent embodiment. Accordingly, Appellant does not inform
us of error in the Examiner’s finding with respect to the placement of the
support tabs.
Claim 1 also requires “the collar member [to be] adapted to retain a
plant matter that extends above the plurality of sidewalls . . . and wherein the
planter is adapted to support a majority of a plant matter placed within the
interior space . . . subsequent to the collar being removed from within the
interior space.” Appeal Br., Claims App. The Examiner finds that Peterson
teaches such a configuration. Non-Final Act. 6.
Appellant argues that (1) Peterson’s column 3, lines 9–17, relied on
by the Examiner for teaching this subject matter, does not discuss the
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relationship between the collar, planter, and plant matter and (2) Peterson’s
Figures 3 and 6 “actually show that the synthetic materials that would be
supported by a majority of the vertical height of the edge member (32)
would not be supported by the pallet (12) subsequent to the removal of the
edge member.” Appeal Br. 22.
We find these arguments unpersuasive. First, Peterson’s column 3,
lines 9–17, describes Figure 6 and makes it clear that pallets 12—the recited
planter—remain under the plant material once the collar is removed. See
Peterson, col. 3, ll. 9–17. Further, as clearly seen in Figure 3, the collar
(edge member 32) retains the plant material that extends above the pallet 12
sidewalls. See id. at Fig. 3. Peterson’s Figure 6 clearly shows that, by
leaving the pallets 12 in place and removing the edge member 32, the pallets
12 support a majority of the plant material after the collar is removed, with
this support being in the vertical direction. See id. at Fig. 6. That is, the
pallets 12 support the weight of the plant material.
For the reasons above, we sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Peterson and
Waterford. We further sustain the rejection of claims 2, 5–7, 10, 36, 38, 40–
45, 47, and 48, which fall with claim 1.

Claim 3
Claim 3 recites “[t]he green roof planter module of claim 1, wherein
the collar angles laterally outwardly from the plurality of sidewalls at an
inclined angle.” Appeal Br., Claims App. The Examiner finds that
Peterson’s collar (edge member 32) angles laterally outwardly from the
plurality of sidewalls at an inclined angle as required by claim 3. Non-Final
Act. 7.
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Appellant argues that Peterson’s edge member 32 extends vertically at
a 180° angle, not at an incline. Appeal Br. 23–24 (relying on Peterson’s Fig.
3). Appellant compares the embodiment of Peterson’s Figure 3 with
Appellant’s Figure 5A, which depicts a collar that inclines laterally outward
continuously from the bottom of the planter. See id.
Figure 3 of Peterson is reproduced below.

Figure 3 depicts the planter (pallet 12) and collar (edge member 32)
assembly with the plant material in the planter. As the Examiner correctly
finds, and as is clearly seen in Figure 3, the edge member 32 includes a
section that is inclined and angles laterally outward, starting at the point
indicated by reference numeral 34 and extending until the edge member 32
becomes vertically oriented. See Answer 6. To the extent that Appellant
would have us read claim 3 as being limited to the configuration shown in
Figure 5A of the Specification—with the collar inclined laterally outward
through the entire extent of the collar—such an interpretation improperly
reads into the claim a limitation from the Specification. The plain language
of claim 3, as currently drafted, does not require the collar to be inclined for
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its entire extent. “[C]laims under examination before the [U.S. Patent and
Trademark Office] are given their broadest reasonable interpretation
consistent with the specification.” In re Abbott Diabetes Care Inc., 696 F.3d
1142, 1148 (Fed. Cir. 2012). Although the claims are read in light of the
Specification, limitations from the Specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
For the reasons above, we sustain the Examiner’s rejection of
dependent claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Peterson and Waterford.

Claim 9
Claim 9 recites “[t]he green roof planter module of claim 1, wherein
the at least one tab of the planter module is adapted to space the bottom wall
of the green roof planter from the bottom wall of a second planter module
when in a stacked position with the planter module.” Appeal Br., Claims
App. The Examiner finds that Peterson, as modified by the teachings of
Waterford, discloses the subject matter of claim 9. Non-Final Act. 8.
Appellant argues that “the geometrical configuration of the synthetic
turf module as disclosed by [Waterford] would not allow” the configuration
of claim 9. Appeal Br. 24. Specifically, Appellant argues that “the outer
flange (18) of the base plate (12) would abut a bottom surface of the base
plate (12) should multiple bases be stacked upon one another, thereby
preventing the upwardly-located base plate from abutting the locating flange
(28) in any manner.” Id.
We find this argument unpersuasive, as it attempts to improperly limit
the scope of claim 9. Appellant’s argument presumes that the recited second
plant module has a base that is at least as wide as the base of the recited
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plant module on which the second module is stacked. Appeal Br. 24. As the
Examiner correctly determines, claim 9 does not limit the size of a second
plant module to require, for example, that the second plant module is
identical to the plant module on which it is stacked. See Answer 6.
Accordingly, a second plant module that is smaller in size than the module
on which it is stacked would satisfy the scope of claim 9 by resting on the
support tab (flange 28). See id.
For the reasons above, we sustain the Examiner’s rejection of
dependent claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Peterson and Waterford.

Claim 46
Claim 46 recites “[t]he green roof planter module of claim 1, wherein
the collar abuts the bottom wall of the planter.” Appeal Br., Claims App.
The Examiner finds that Waterford teaches this limitation. Non-Final Act.
9.
Appellant contends that “the edge member (32) of [Peterson] is
significantly spaced from the base (18)” and “[t]he Examiner’s rejection
would require a significant reconstruction.” Appeal Br. 26. Appellant
argues that “an obviousness rejection is not proper if substantial
reconstruction or redesign of the prior art references is necessary to arrive at
the invention.” Id. (citing In re Ratti, 270 F.2d 810 (CCPA 1959)).
We find this argument unpersuasive. One of ordinary skill can use his
or her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. See KSR Int’l Co., 550 U.S. at 418 (“[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
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the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
Waterford teaches a configuration in which the tab is positioned on the base
of the planter and the collar extends to the base. See Waterford, Fig. 12B;
Answer 6. As the Examiner reasons, one of ordinary skill in the art would
know to use this teaching to modify Peterson. See Answer 6.
For the reasons above, we sustain the Examiner’s rejection of
dependent claim 46 under 35 U.S.C. § 103(a) as being unpatentable over
Peterson and Waterford.

Rejection IV
The Examiner rejects claims 4, 8, 12, and 39 under 35 U.S.C. § 103(a)
as being unpatentable over Peterson, Waterford, and Ripley. Non-Final Act.
16. Appellant argues the patentability of only claim 4 in connection with
this rejection. See Appeal Br. 27–28. We take claim 4 as representative of
this rejection, and claims 8, 12, and 39 stand or fall with claim 4.
Claim 4 recites “[t]he green roof planter module of claim 1, wherein
the collar comprises a biodegradable material.” Appeal Br., Claims App.
The Examiner finds that “Peterson teaches that the planter and collar
member are made of metal (Col. 3, lines 26-30) and does not explicitly teach
wherein the collar comprises a biodegradable material.” Non-Final Act. 16.
The Examiner further finds that “Ripley teaches a collar that comprises a
biodegradable material.” Id. (citing col. 6, ll. 20–24 of Ripley). The cited
disclosure teaches that Ripley’s collar may be made of either metal or wood.
The Examiner finds that Ripley teaches the interchangeability of metal and
wood, a biodegradable material. Id. The Examiner determines that one of
ordinary skill in the art would have reason to modify the teachings of
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Peterson and Waterford to include a collar made of wood “in order to make
the module more environmentally sound.” Id.
Appellant argues that the Examiner’s reasoning is conclusory. Appeal
Br. 28. Specifically, Appellant argues that “[t]here is no proof offered that
an exhaustable resource such as wood is more ‘environmentally sound’ then
utilizing a recyclable material such as metal.” Id. We find this argument
unpersuasive. We find that the Examiner’s reasoning is supported by
rational underpinning—that one of ordinary skill could consider wood as
more environmentally sound than metal. See Answer 8.
Appellant further argues that “nothing within any of the cited
reference[s] discusses the desirability of using a biodegradable material.”
Appeal Br. 28. As discussed supra, this argument is unavailing as the law
does not require this reasoning to necessarily come expressly from the prior
art.
Appellant argues that, given the temporary nature of Peterson’s and
Waterford’s planters, the planters would not require a biodegradable collar.
We also find this argument unpersuasive. As the Examiner finds, “[t]he
temporary nature of use of an object does not preclude the use of
biodegradable materials.” Answer 8. Also, Appellant’s argument suggests
that biodegradable materials are used in the claimed planter because the
collar is kept in place over an extended period of time, eventually to
biodegrade in place. Cf., Spec. ¶ 27 (“Alternatively, the collar member 18
comprises a biodegradable material that may be left within the planter 16
placed within the overall grid work of the green roof system 10.”).
However, claim 4 is not so limited as to require the collar to be left in place
over an extended period of time. Accordingly, Appellant’s argument
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improperly attempts to read a limitation from the Specification into the
claims.
For the reasons above, we sustain the Examiner’s rejection of claim 4
under 35 U.S.C. § 103(a) as being unpatentable over Peterson, Waterford,
and Ripley. We further sustain the rejection of claims 8, 12, and 39, which
fall with claim 4.

Rejection V
Appellant offers no arguments in support of the patentability of
dependent claim 11, which depends from claim 1. Appeal Br. 29. As we
sustain the Examiner’s rejection of independent claim 1 in connection with
our analysis of Rejection III, we also sustain the rejection of claim 11.

Rejection VI
Independent claim 28 recites:
A green roof planter module, comprising:
a planter including a bottom wall; and
a plurality of sidewalls that cooperate with the bottom
wall to form an interior space adapted to receive plant matter
therein, wherein each of the sidewalls includes a top edge and a
bottom edge, at least one of the sidewalls of the plurality of
sidewalls includes a relief extending through the at least one
sidewall and extending greater than half of a distance between
the top edge to the bottom edge of the at least one sidewall,
wherein the relief is adapted to provide fluid communication
between the interior space of the planter module and the interior
space of a proximate second planter module.
Appeal Br., Claims App. The Examiner finds that Chadbourne discloses the
subject matter of claim 28 except for “explicitly teach[ing] that the relief
extends greater than half of a distance sidewall between the top edge to the
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bottom edge of the at least one sidewall,” as required by the claim. Non-
Final Act. 19. The Examiner determines that it would have been obvious to
extend at least one of the reliefs “in order to increase the amount of air flow
amongst planters.” Id. The Examiner also determines that “a mere change
in size or shape of a component is generally recognized as being within the
level of ordinary skill in the art.” Id.
Appellant argues that Chadbourne fails to disclose a “planter,” but
rather is directed to packaging trays used to ship “eggs, fruits, light bulbs,
and the like.” Appeal Br. 29. Essentially, Appellants argue that the
Examiner’s construction of the term “planter” is unreasonably broad so as to
encompass Chadbourne’s trays.
We find this argument unpersuasive. The plain and ordinary meaning
of the term “planter” is “a container in which plants are grown.” See, e.g.,
Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/planter (last visited Mar. 6, 2015). This meaning is
consistent with the claim language and Specification, which does not import
any special meaning or specific structural limitation to the term “planter.”
See Answer 9. We agree with the Examiner that each of Chadbourne’s trays
may serve as a container in which plants are grown. See Non-Final Act. 18–
19; Answer 9.
Appellant also argues that the mere fact that art may be modified in
the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggests to the desirability of the modification.
Appeal Br. 29–30. As discussed above, this argument is foreclosed by KSR,
in which the Supreme Court rejected the rigid requirement of a teaching,
suggestion, or motivation to combine known elements in order to show
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obviousness. KSR Int’l Co., 550 U.S. at 415. Tellingly, Appellant relies on
pre-KSR decisions in support of this argument. See Appeal Br. 30.
Appellant further argues that Chadbourne fails to support “the
contention that the apertures as included therein would have been modified
in the manner as suggested by the Examiner, and particularly that the length
of the apertures with respect to the upper and lower edge of the associated
walls would have been enlarged in such a manner.” Appeal Br. 30. Again,
as we have previously stated, the reasons for a modification need not
originate in the art itself.
Finally, Appellant argues that the Examiner’s proposed modification
may cause “each tray to structural[ly] collapse should too much material be
removed therefrom or the overall structural integrity thereof be
compromised by removing material in inappropriate locations.” Appeal Br.
30. We find this argument unpersuasive as attorney argument, not supported
by any factual evidence. See In re Pearson, 494 F.2d at 1405. Also,
Appellant’s argument suggests that material would be removed from
multiple locations—that is, that material would be removed from every relief
depicted in Chadbourne’s tray to extend each relief to a length greater than
half the distance between the top edge and bottom edge. However, claim 28
requires only one relief to extend greater than half of a distance between the
top edge to the bottom edge of one sidewall. Such a modification would not
compromise the structure, particularly in view of the Examiner’s finding that
one of ordinary skill in the art would try a number of variations of the relief
to increase air flow, thus ensuring that the chosen configuration is
structurally sound. See Answer 8–9. Appellant does not inform us of any
error in the Examiner’s reasoning for modifying Chadbourne.
Appeal 2013-002723
Application 11/623,168
20
Claim 29 recites “[t]he green roof planter module of claim 28,
wherein the relief extends downward from the top edge.” Appeal Br.,
Claims App. The Examiner finds a relief extending from the top edge of
Chadbourne’s tray—apparently the central relief shown on each side of the
tray. See Chadbourne, Figs. 2 and 3; Non-Final Act. 19.
Appellant argues that, if the identified relief was extended more than
half the length of the side, such a modification “would in fact remove the
vast majority of all materials from each of the sidewalls/endwalls, thereby
rendering each tray inoperable for storing and transporting much of
anything.” Appeal Br. 30–31. Again, this unsupported argument is not
persuasive, as it is not commensurate with the claim scope. Claim 29
requires only one relief to extend more than one half the wall height.
Further, as the Examiner reasons, one of ordinary skill in the art would try a
variety of shapes for the relief, which likely would minimize any structural
disadvantage by arriving at a configuration that is structurally sound. See
Answer 8–9; see also KSR Int’l Co., 550 U.S. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”); see also In
re Sovish, 769 F.2d 738, 742–43 (Fed. Cir. 1985) (acknowledging that, in an
obviousness context, skill is presumed on the part of one of ordinary skill in
the art).
For the reasons above, we sustain the Examiner’s rejection of claims
28 and 29 under 35 U.S.C. § 103(a) as being unpatentable over Chadbourne.
Because Appellant does not separately argue the patentability of claim 30,
we also sustain the rejection of that claim.
Appeal 2013-002723
Application 11/623,168
21

DECISION
We AFFIRM the Examiner’s rejection of claim 37 under 35 U.S.C. §
102(b) as anticipated by Waterford.
We AFFIRM the Examiner’s rejection of claims 31 and 35 under 35
U.S.C. § 102(b) as anticipated by Wu.
We AFFIRM the Examiner’s rejection of claims 1–3, 5–7, 9–10, 36,
38, 40–48 under 35 U.S.C. § 103(a) as being unpatentable over Peterson and
Waterford.
We AFFIRM the Examiner’s rejection of claims 4, 8, 12, and 39
under 35 U.S.C. § 103(a) as being unpatentable over Peterson, Waterford,
and Ripley.
We AFFIRM the Examiner’s rejection of claim 11 under 35 U.S.C. §
103(a) as being unpatentable over Peterson, Waterford, and Perry.
We AFFIRM the Examiner’s rejection of claims 28–30 under 35
U.S.C. § 103(a) as being unpatentable over Chadbourne.
We AFFIRM the Examiner’s rejection of claims 32 and 33 under 35
U.S.C. § 103(a) as being unpatentable over Wu and Buss.
We AFFIRM the Examiner’s rejection of claim 34 under 35 U.S.C. §
103(a) as being unpatentable over Wu and Peterson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2012).

AFFIRMED
mls