Ex Parte MacKenzie

Patent Trial and Appeal Board

Sep 26, 2016

12831732 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/831,732 07/07/2010 David S. MacKenzie
277 7590 09/28/2016
PRICE HENEVELD LLP
695 KENMOOR SE
PO BOX 2567
GRAND RAPIDS, MI 49501
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.
HOR008 P307 3026
EXAMINER
HA YES, KRISTEN C
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID S. MACKENZIE
Appeal2014-007401
Application 12/831,732
Technology Center 3600
Before LYNNE H. BROWNE, MARK A. GEIER, and GORDON D.
KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
Appeal2014-007401
Application 12/831,732
CLAIMED SUBJECT MATTER
The claims are directed to a wall planting system. Spec. 1. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A modular wall mounted agricultural system, comprising:
a mounting structure comprising:
a first end;
a second end;
a fluid conduit extending longitudinally between the
first and the second end; and
at least one longitudinally extending channel; and
at least one planter box that is adapted to mount within the
at least one channel of the mounting structure, and wherein the
at least one planter box includes a plurality of sidewalls and a
bottom wall that cooperate to form a compartment adapted to
receive plant matter therein, the plurality of sidewalls
cooperating to form an upwardly opening aperture adapted to
receive a fluid from the conduit.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bodine
Okuda
Sichello
Caddy
us 4,593,490
US 2008/0003445 Al
US 2010/0095586 Al
UK 2,239,255
REJECTIONS
The Examiner made the following rejections:
June 10, 1986
Jan.3,2008
Apr. 22, 2010
June 26, 1991
Claims 9-14, 18, and 19 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1--4, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Okuda.
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Claims 1, 4--7, 9--11, and 15-22 stand rejected under 35 U.S.C.
§ 102( e) as being anticipated by Sichello.
Claims 9 and 12-14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bodine.
Claim 22 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Caddy.
Claim 8 stands rejected under 35 U.S.C. § 103 in view of Okuda and
Sichello.
OPINION
Rejections under§ 112
The Examiner finds that there is insufficient antecedent basis for "the
compartment" in claim 9, line 7. Final Act. 2. We note that the phrase "the
compartment" appears in line 8 of claim 9, and that line 7 positively recites
"an upwardly opening compartment." See Appeal Br. 20, Claims App.
Thus, claim 9 provides proper antecedent basis for the recitation of "the
compartment" in line 8 thereof. Accordingly, the Examiner's finding is in
error.
Claim 9 includes a limitation of an "outwardly opening ... channel."
Appeal Br. 20 (Claims App.) (emphasis added). Claim 12 adds that this
channel includes an "upwardly opening first channel" and a "downwardly
opening second channel". Appeal Br. 21 (Claims App.) (emphasis added).
The Examiner states, "It is unclear if the 'upwardly opening first channel' of
claim 12 is the same channel of claim 9 or an additional channel." Final
Act. 2. In the Answer, the Examiner finds, "In independent claim 9 the at
least one channel is already claimed as having 'upwardly opening first
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channel'." Ans. 2. Based on this finding, the Examiner determines that "[i]t
is unclear if the 'upwardly opening first channel' and the 'downwardly
opening second channel' of claim 12 are part of the 'upwardly opening first
channel' of claim 9 or if they are additional channels." 1 Ans. 2 (emphasis
added.)
We find no confusion over these terms. In claim 9 the at least one
channel is "outwardly" opening. Claim 12 adds that the channel includes
two channels, one opening upwardly in the other opening downwardly.
Since both "upwardly" and "downwardly" are within the ambit of
"outwardly," we find no ambiguity in the claim and therefore so not sustain
the § 112 rejection of claim 12.
Claim 14 has been rejected for lack of antecedent basis for "the wall
structure." Claim 14 depends from claim 9 which recites "a substantially
vertical wall structure." Appeal Br. 20, Claims App. Accordingly, claim 9
provides proper antecedent basis for the recitation of "the wall structure" in
claim 14.
Claim 18 has been rejected because the Examiner found "the
limitation 'the plurality of side walls' in line 9 ... has insufficient
antecedent basis." Final Act. 2. Appellant correctly notes that the limitation
"the plurality of side walls" was changed by amendment filed May 24, 2012,
two "a plurality of side walls" and argues this amendment addresses the
Examiner's rejection. The Examiner does not respond either by
1 The Examiner's Answer misquotes claim 9 as including an "upwardly
opening first channel" (Ans. 2), while claim 9 actually calls for an outwardly
opening ... channel. We overlook this error because the rejection is without
foundation in any event.
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Application 12/831,732
withdrawing the rejection or by argument supporting it. Accordingly, we
reverse the Examiner's rejection of claim 18 under§ 112.
Claims 1-4, 6, and 7 Anticipated by Okuda
Claim 1 requires "a mounting structure comprising ... at least one
longitudinally extending channel; and at least one planter box that is adapted
to mount within the ... channel." The Examiner identifies the "mounting
structure" as being item 100 in Okuda and cites "to the left of 11 O" as
corresponding to the channel of claim 1. Final Act. 3. These features are
shown in Okuda Figures 14 and 15. The Appellant points out there is
nothing whatsoever in the gap to the left of 110. Appeal Br. 12. In the
Answer, the Examiner finds "Okuda teaches the elements of the mounting
structure as claimed. Okadu [sic] also discloses the planter being adapted to
mount in the channel to the left of 110, as shown in Figure 14. Figure 14
also shows planters mounted in channels." Ans. 3. The Appellant is correct.
Okuda does not disclose each and every limitation of claim 1. Accordingly,
we do not sustain the Examiner's decision rejecting claim 1 as anticipated by
Okuda.
Claims 2--4, 6, and 7 depend directly or indirectly on claim 1, and we
likewise do not sustain their rejection.
Claims 1, 4-7, 9-11, and 15-22 Anticipated by Sichello
Appellant seeks reversal of the rejection of claim 1 as anticipated by
Sichello, making a single argument. Appellant argues that the recess 32
(shown, but unnumbered in Figure 2 and also shown in Figures 4 and 14)
cannot function as a "conduit." Appellant defines a conduit as a pipe, a tube,
or a channel for conveying a fluid. Appeal Br. 14. Appellant argues "that
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the irrigation opening (32) cannot be interpreted as a fluid conduit as defined
in claim 1." We agree.
The support structure 30 of Sichello has four walls that taper slightly
toward each other. See Sichello, Fig. 4. As viewed in Figure 4, the support
structure 30 has an open top and an open bottom. The structure cited by the
Examiner as meeting claim 1 's "conduit" is a slot 32 cut through the left
wall (at the end of lead line 33, Fig. 4) and part way into the two adjacent
walls. The slot 32 cannot function as a conduit; it has no top, no bottom, no
sides, and no ends. See Sichello, Figures 2, 4. The Examiner contends that
because the slot 32 "is in fluid communication with and fluidly connected to
the conduit [70]," it meets the definition of "conduit." Ans. 3--4. The
Examiner relies upon an overly broad interpretation of the claim term
conduit. Moreover, even using the Examiner's definition of "conduit" the
slot 32 is not "in fluid communication" with the conduit carrying water, nor
is it "fluidly connected" to anything. An opening such as Sichello's slot 32
does not become a fluid conduit by being near or touching a conduit such as
Sichello's pipe 70 (Sichello, Fig. IA), especially where the slot has no
surfaces that could contain a fluid. Because the slot 32 in Sichello is not a
conduit, Sichello does not disclose each and every limitation of claim 1 or
claims 4--7 which are dependent on claim 1. Accordingly, we do not sustain
the Examiner's decision rejecting claims 1 and 4--7 as anticipated by
Sichello.
Appellant argues that claim 9 is not anticipated because Sichello does
not have an "upwardly opening" planter box required by claim 9. Appeal
Br. 15. The Examiner notes "applicant has not defined or specified a
direction to limit the term 'upwardly."' Ans. 4. Further the Examiner finds
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that "[ d]epending on the orientation of the device [of Sichello] the
compartment opens upwardly." Id. We find the term "upwardly" has a
clearly understood meaning and, in the context of plants and planter boxes, a
well-defined direction, namely, opposite the direction of the force of gravity.
In Sichello the tray comprising the back wall 20, the side walls 30, and the
front wall 40, also have an implicit orientation. Every Figure and all the
description in Sichello show the container opening to the side when in use.
See, e.g., Figures 10-14. Further, Sichello describes mounting his
containers to "a vertical surface of a ... wall." i-f 51. Accordingly, we agree
that Sichello does not disclose an "upwardly opening compartment" as
required by claim 9. For this reason Sichello does not disclose each and
every limitation of claim 9. As claims 10 and 11 depend from claim 9,
Sichello also does not disclose each and every limitation of claims 10 and
11. Accordingly, we do not sustain the Examiner's decision rejecting claims
9-11 as anticipated by Sichello.
Independent claim 15 requires a mounting structure that includes a
longitudinally and horizontally extending fluid conduit. Appeal Br. 21
(Claims App.). The Examiner cites the slot 32 of Sichello as meeting this
requirement. As we noted above, the slot 32 in Sichello cannot reasonably
be considered a conduit, and so Sichello does not disclose each and every
limitation of claim 15. Claim 18 includes substantially the same limitation.
Accordingly, we do not sustain the Examiner's decision rejecting claims 15
and 18 as anticipated by Sichello.
Claims 16 and 17 depend from claim 15, and the Examiner's decision
rejecting claims 16 and 17 as anticipated by Sichello is not sustained for the
same reasons the rejection of claim 15 is not sustained. Claim 19 depends
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from 18, and the Examiner's decision rejecting claim 19 as anticipated by
Sichello is not sustained for the same reasons as the rejection of claim 18
was not sustained.
Claim 20 requires a "plurality of side walls ... to form an upwardly
opening aperture adapted to receive fluid from the conduit." Appeal Br. 22
(Claims App.). Because the planter box of Sichello does not have an
upwardly opening aperture, Sichello does not disclose each and every
limitation of claim 20. Accordingly, we do not sustain the Examiner's
decision rejecting claim 20 as anticipated by Sichello.
Appellant made no argument concerning claim 21 beyond including it
in the heading. Appeal Br. 13-16. Claim 21 is not anticipated by Sichello
for the same reasons as claim 20, from which it depends. Accordingly, we
do not sustain the Examiner's decision rejecting claim 21 as anticipated by
Sichello.
Appellant made no argument concerning the rejection of claim 22 as
anticipated by Sichello (Appeal Br. 13-16); however, the rejection of claim
22 relies on the same erroneous finding as the rejection of claim 1.
Therefore we do not sustain the Examiner's decision rejecting claim 22 as
anticipated by Sichello.
Claims 9 and 12-14 Anticipated by Bodine
Appellant filed an Amendment after Final Rejection seeking to
include the subject matter of claim 10 into claim 9, but that amendment was
not entered. Appellant's only argument concerning claim 9 (as purportedly
amended) is directed to the subject matter of claim 10. Thus, Appellant
made no substantive argument for the patentability of claim 9, and we affirm
its rejection. Similarly, Appellant's argument for patentability of claims 12-
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Application 12/831,732
14 was predicated on entry of the After Final Amendment, and Appellant
made no substantive argument for the patentability of claims 12-14 as
currently pending.
For these reasons, we sustain the Examiner's decision rejecting claims
9, 10, and 12-14 as anticipated by Bodine.
Claim 22 Anticipated by Caddy
Independent claim 22 is argued to be patentable over Caddy because
"Caddy '155 does not disclose the irrigation means as being an integral,
single piece with the base (20)." Appeal Br. 17. Appellant maintains that
position in his Reply, stating "the V-shaped channel defined between the
rear wall (10) and the incline [sic] base (20) of Caddy [does not] define a
fluid conduit that is part of a mounting structure in the manner as define [sic]
in claim 1." Reply 5.
The Examiner has determined that Caddy discloses a fluid conduit in
the form of a V-shaped channel to the left of element 20 in Figure 1, and
which is shown in Figure 2 to be integral with the mounting structure. Ans.
4. We agree. Caddy states that the "upwardly inclined base may form with
the rear wall an irrigation channel." Caddy p. 3, 11. 1-2. Further, the
irrigation tube that rests in the irrigation channel may be perforated along
each part of its length that passes through each of the plant compartments.
Id., 11. 11-15. Thus, the irrigation channel formed between the rear wall and
the inclined base in Caddy forms a "fluid conduit" that is integral with the
single piece mounting structure of Caddy. Accordingly, we are not
persuaded that the Examiner erred in finding that Caddy anticipates claim
22. We sustain the Examiner's decision rejecting claim 22 as anticipated by
Caddy.
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Rejection of Claim 8 as Obvious
Claim 8 depends from claim 1. The secondary reference, Sichello,
was not cited to cure the deficiencies of Okuda. Therefore, we do not
sustain the rejection of claim 8 for the same reasons we do not sustain the
rejection of claim 1.
DECISION
The Examiner's rejection of claims 1-2, 6, and 7 as anticipated by
Okuda is reversed.
The Examiner's rejection of claims 1, 4--7, 9-11, and 15-22 as
anticipated by Sichello is reversed.
The Examiner's rejection of claims 9, 10, and 12-14 as anticipated by
Bodine is affirmed.
The Examiner's rejection of claim 22 as anticipated by Caddy is
affirmed.
The Examiner rejection of claim 8 as unpatentable over Okuda and
Sichello is reversed.
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) (2009).
AFFIRMED IN PART
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