Ex Parte MacKenzieDownload PDFPatent Trial and Appeal BoardJan 31, 201813538254 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 13/538,254 06/29/2012 David S. MacKenzie HOR008 P313 7411 277 7590 02/02/2018 PRTrF HFNFVFT F) T T P EXAMINER 695 KENMOOR SE VALENTI, ANDREA M P O BOX 2567 GRAND RAPIDS, MI 49501 ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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 Appeal 2016-008048 Application 13/538,254 Technology Center 3600 Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and PAUL J. KORNICZKY, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-008048 Application 13/538,254 THE INVENTION Appellant’s claims are directed “to a modular planting system that includes a plurality of planter modules each including a planter for receiving plant matter therein, and a coupling member for securing the plant modules to one another, thereby creating a green-roof system.” Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A green roof planter assembly, comprising: a first planter module including a bottom wall and a plurality of side walls that cooperate with the bottom wall of the first planter module to form an interior space of the first planter module adapted to receive plant matter therein, wherein at least a pair of the plurality of side walls of the first planter module cooperate to form a first comer there between, the first comer defines a length therealong, and wherein first planter module includes a first relief located along the length of the first comer; a second planter module including a bottom wall and a plurality of side walls that cooperate with the bottom wall of the second planter module to form an interior space of the second planter module adapted to receive plant matter therein, wherein at least a pair of the plurality of side walls of the second planter module cooperate to form a second comer therebetween, the second comer defines a length therealong, and wherein the second planter module includes a second relief located along the length of the second comer; and a coupling member removably received within the first relief and the second relief, thereby inhibiting vertical movement of the first planter module with respect to the second planter module. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lee US 5,281,185 Jan. 25, 1994 MacKenzie US 2008/0168710 July 17, 2008 2 Appeal 2016-008048 Application 13/538,254 REJECTION The Examiner made the following rejection: Claims 1—17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over MacKenzie and Lee. Ans. 2. ANALYSIS Regarding the rejection of claim 1, Appellant argues that the Examiner’s combination is improper because the Examiner’s motivation does “not consider[] the problem faced by the inventor of inhibiting vertical lifting of the modules during high winds” and also that “the Lee reference is not ‘reasonably pertinent’ to the problem which was faced by the inventor.” App. Br. 8, 9. In making this argument, Appellant essentially narrows the scope of the invention in an attempt to characterize Lee as non-analogous art because it does not solve the exact problem facing the inventor. We agree with the Examiner, however, that a more apt description of the problem being faced is “coupling/connecting modular units together” and that “Lee is concerned with the same problem.” Ans. 5. While, at first glance, it may not seem as if a toy block connection device is particularly related to the field of securing planter modules, when properly viewed through the Examiner’s broader lens of solving the problem of how to connect modular units together, the applicability of Lee is more clear. This is further elucidated when viewing the actual system of Lee in comparison with the invention at issue. Appellant’s connector system involves a number of slots and discs utilized to connect the planter trays together. See Spec. Fig. 11. Likewise, 3 Appeal 2016-008048 Application 13/538,254 Lee also uses a connector system of slots and discs, and other connectors, in order to connect cuboid building blocks together. See, Lee Fig. 31. Appellant’s and Lee’s connector systems are essentially identical; it is only the application that is different. In rejecting the claims, the Examiner uses the Appellant’s prior application, which did not include the connector system, for the majority of the claim limitations that pertain to the planter system and then turns to Lee for a connecting device for connecting modular units together. See Ans. 3. We do not believe one of ordinary skill in the art would restrict a review of the prior art only to planting systems when looking for connectors for modular planters, but agree with the Examiner that such a review would include looking for existing connecting systems that could be applied to the particular application at issue. That the two connecting systems are nearly identical lends credence to the Examiner’s findings that one of ordinary skill in the art could apply such a connecting system to a wide variety of modular systems. Appellant also appears to mischaracterize the purpose of Lee’s connecting system by focusing on the term “collapse” in Lee’s description. App. Br. 7. Appellant’s arguments suggest that the purpose of Lee’s connectors, because Lee’s blocks are assembled from flat blanks, is to prevent the collapse of the individual blocks. When using the term “collapse,” Lee is referring to collapse of any structure built with the blocks and connectors, not of the individual blocks collapsing on themselves. Appellant also focuses on Lee’s friction fit as being inapplicable to the present invention, but ignores that in addition to a friction fit, which in and of itself we believe would still prevent dislodgement and displacement 4 Appeal 2016-008048 Application 13/538,254 of planter trays in high winds, Lee teaches that the connecting slots and discs may be arranged either horizontally or vertically. See, e.g., Fig. 31. Appellant’s arguments appear directed only to the vertical arrangement of the connectors while ignoring the horizontal arrangement, which again is nearly identical to that disclosed in the instant Specification. Appellant’s attempt to narrow the scope of the problem so as to declare Lee nonanalogous art is belied by the obvious applicability of Lee’s system to other modular units besides toy blocks. As to claims 3 and 11, as noted above, Lee teaches both vertically and horizontally extending connectors and Lee’s horizontal connectors extend longitudinally along the sidewalls as claimed. See, e.g., Lee Fig. 31. Regarding claim 10, Appellant asserts that Lee fails to teach four units connected by a single connector. App. Br. 11. The Examiner, however, correctly finds that Lee explicitly shows the connection of three blocks with the provision for a fourth block to be connected by the same connector. Ans. 7, see also Lee Fig. 31. Accordingly, while not explicitly showing four blocks connected as claimed, one of ordinary skill would have clearly understood that a fourth block could be affixed in the open space adjacent to the three connected blocks shown utilizing a single connector, thus meeting the claims. As such, we are not persuaded of error in the Examiner’s rejections of claims 1—17. DECISION For the above reasons, we affirm the Examiner’s decision to reject claims 1—17. 5 Appeal 2016-008048 Application 13/538,254 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 6 Copy with citationCopy as parenthetical citation