Ex Parte Mello

Board of Patent Appeals and Interferences

Aug 10, 2009

10452023 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAYMOND ANTHONY MELLO
____________________

Appeal 2008-003209
Application 10/452,023
Technology Center 3600
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Decided: August 10, 2009
____________________

Before JENNIFER D. BAHR, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-003209
Application 10/452,023

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STATEMENT OF THE CASE
Raymond Anthony Mello (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 1-3, 7-13, 17-21, 24, and
26-30.1 We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
Appellant’s claimed invention pertains to supporting young trees,
shrubs, flora and other vegetation (all of which Appellant collectively refers
to as “trees”). (Spec. 1, ll. 5-7.) Claim 1, reproduced below with
paragraphing added, is representative of the subject matter on appeal.
1. A support system for a tree, comprising:
a base having a side wall in the ground
around the roots of the tree with an upper portion
of the side wall substantially flush with the surface
of the ground for directing the roots to grow in a
downward direction,
a guide tube on the base opening through the
surface of the ground and forming a socket for
receiving a support pole,
a tree support pole which is mounted in and
supported by the guide tube and extends above the
ground in proximity to the tree, and

1 In the Final Rejection, the Examiner rejected claims 1-38. Subsequently,
claim 25 was cancelled, the Examiner withdrew the rejection of claims 5, 6,
14, 23, 32-36, 37 and 38, and allowed claims 4-6, 14-16, 22, 23, and 31-38.
(Ans. 2-3; see also Reply Br. 2.)
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a guide attached to the tree support pole and
loosely encircling a portion of the tree to train the
tree for growth in a predetermined manner.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sikes US 221,620 Nov. 11, 1879
Mead US 584,886 June 22, 1897
Schau, III US 4,665,645 May 19, 1987
Mayer (as translated) DE 296 09 170 U1 Sept. 26, 1996

The following Examiner’s rejections are before us for review:
1. Claims 1-3, 7-9, 11-13, 18-21, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Schau, Sikes, and Mayer; and
2. Claims 10, 17, and 26-30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schau, Sikes, Mayer, and Mead.

ISSUES
The Examiner concluded that Appellant’s claimed subject matter
would have been obvious based on the findings that Schau teaches a base
encircling tree roots, that Mayer teaches tree support poles and guides
mounted in tubes on a base, and that Sikes teaches that it was well known to
attach a support pole to a base for training plants. (Ans. 8-9.) Appellant
contends that there is no motivation or other basis, other than impermissible
hindsight, for combining the cited references, and that the combined
references would not lead to the claimed subject matter. (App. Br. 6-7;
Reply Br. 3.)

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Therefore the first issue on appeal is:
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Schau, Sikes, and Mayer would have suggested to
one of ordinary skill in the art the subject matter of claims 1-3, 7-9, 11-13,
18-21, and 24?
The claims subject to the second ground of rejection recite drip
emitters or irrigators along the upper and lower edges or edge portions of the
base side wall. The Examiner found that Mead discloses a root system drip
emitter, and concluded that Mead in combination with the modified Schau
system would have rendered Appellant’s claimed subject matter obvious.
(Ans. 11-12.) Appellant contends that Mead does not disclose drip emitters,
that Mead does not disclose drip emitters or irrigators located along upper
and lower edges of a base, that there is no basis in the references themselves
to combine them, and that the combined elements will not produce the
claimed invention. (App. Br. 12; Reply Br. 5.)
Therefore, the second issue on appeal is:
Has Appellant shown that the Examiner erred in concluding that the
combined teachings of Schau, Sikes, Mayer, and Mead would have rendered
the subject matter of claims 10, 17, and 26-30 obvious to one of ordinary
skill?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Schau discloses a planter box B placed in the ground around
roots of a tree T to control the growth pattern of the root system. (Schau,
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col. 1, ll. 17-23; col. 3, ll. 16-26; figs. 1, 2.) The top edge 11 of the planter
box is at grade level. (Id., col. 3. ll. 23-26; fig. 1.) When the planter box is
initially placed in service, its structural integrity is such that it confines the
root growth so that the roots emanate from the bottom of the box. (Id., col.
5, ll. 38-40.) Schau also discloses nutrient application tubes 35 extending
from the top to the bottom of the planter box. (Id., col. 4, ll. 66-68; fig. 2.)
Schau’s figure 2 depicts eight such tubes.
2. Mayer discloses a device for securing a Christmas tree at a
point higher than that possible with the previously known, conventional tree
stand. (Mayer 1.) Mayer’s device comprises two tubulars 1, two rods 2, two
arcs 3, and three wing-nut screws 6. (Id. at 2; fig. 1.) Mayer explains that
the tubulars 1 are attached to the trunk receptacle 8 of a known, conventional
Christmas tree stand 7. (Id. at 2, 4, fig. 1.) The rods 2 are inserted into the
tubulars 1. (Id. at 2.) Arcs 3 are hung on slits 4 in the rods 2, forming a ring
loosely encircling tree. (Id. at 2, 3; figs. 1, 3.) The tree may then be
clamped in place with the wing-nut screws 6 attached to the arcs 3. (Id. at 2,
3; fig. 3.)
3. Sikes discloses an improved plant and vine culture appliance.
(Sikes 1, ¶ 2.) Sikes’s device has a stake A, hoop-protector B, and
trellis-hoops B′ and B2. (Id., ¶ 5; fig. 2.) The stake extends upward from
the ground and supports the hoop protector and the trellis-hoops. (Id., ¶¶ 2,
5.) The hoop-protector is seated in the ground such that a portion is
below-grade. (See id., ¶ 6; fig. 2.) The below-grade portion of the hoop-
protector encircles the plant roots located near the surface. (Id., fig. 2.) The
trellis-hoops loosely encircle the plant or vine, and are for training the
growth of the vegetation. (Id., ¶ 6; fig. 2.)
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4. Mead discloses an irrigation system for supplying water to the
roots of trees, shrubs, and plants. (Mead 1, ll. 8-16.) Mead’s system
includes a coil A of tubing that is placed in the ground around the plant’s
roots. (Id. at 1, ll. 53-58, 75-85, fig. 3.) The coiled section is provided with
very small apertures e. (Id. at 1, ll. 101-104, figs. 2, 3.) Mead teaches that
the irrigation system stimulates symmetric root growth so as to promote
more regular and rapid growth of the plant. (Id. at 1, ll. 39-49.)
5. Appellant’s Specification does not describe, in the written
description, the structure of the emitters 29. (See Spec. 7, ll. 11-16.) In
Appellant’s Figure 1, the emitters 29 appear to be merely holes in the drip
line 28.

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is the Appellant’s
burden to precisely define the invention, not that of the United States Patent
and Trademark Office. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(citing 35 U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the
claims during prosecution, and broad interpretation by the Examiner reduces
the possibility that the claim, once issued, will be interpreted more broadly
than is justified. Prater, 415 F.2d at 1404-05.
A claim is unpatentable for obviousness if “the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
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was made to a person having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103. The question of obviousness is resolved
on the basis of underlying factual determinations including: (1) the scope
and content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”). The scope and content of the prior art includes the explicit
and inherent teachings of the prior art. In re Zurko, 258 F.3d 1379, 1383-84
(Fed. Cir. 2001) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court reiterated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co., 550 U.S. at
416.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).

ANALYSIS
The rejection of claims 1-3, 7-9, 11-13, 18-21, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Schau, Sikes, and Mayer
As an initial matter, we note that Appellant’s briefs contain arguments
apparently directed to all of the claims subject to this rejection. (App. Br. 5-
7; Reply Br. 3.) Appellant then identifies various groups of claims under
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separate headings, points out what each claim recites, and states (as to some
claims) that the combination is not suggested. (App. Br. 7-9; Reply Br. 3-5.)
We do not regard such statements to be separate arguments for patentability
under 37 C.F.R. § 41.37(c)(1)(vii) (2009). Therefore, Appellant has grouped
the rejected claims together. We select claim 1 as the representative claim,
and claims 2, 3, 7-9, 11-13, 18-21, and 24 stand or fall with claim 1.
Schau discloses an in-ground base, with its top flush with the ground’s
surface, surrounding the roots of a tree. (Fact 1.) Mayer teaches a tree
support device having guide tubes, tree support poles, and a pair of arcs
(corresponding to Appellant’s guide) encircling the tree. (See Fact 2.)
Mayer also teaches attaching such a device to a base (the conventional
Christmas tree stand). (See id.) Sikes similarly teaches using an upright and
a plant training trellis-hoop in conjunction with a base (Sikes’s hoop-
protector B) having a portion below-grade and encircling the plant roots.
(See Fact 3.) To provide Schau’s base with Mayer’s tree support device
would have been obvious as the combination of prior art elements according
to known methods to yield predictable results. See KSR Int’l Co., 550 U.S.
at 416. Therefore, we determine that the Examiner did not rely on
impermissible hindsight, as Appellant urges (App. Br. 6), but rather relied on
the knowledge of those skilled in the art at the time of the invention.
Appellant addresses the cited references individually and asserts that
each one lacks particular features. (See, e.g., App. Br. 6-7, Reply Br. 3.)
Appellant’s assertions are misplaced as the Examiner’s rejection is based on
the combination of references. See In re Merck & Co., 800 F.2d at 1097.
Appellant also argues that there is no motivation, suggestion, or other basis
in the cited references to combine them. (App. Br. 6, 7.) However, the
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Supreme Court in KSR rejected the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness. KSR Int’l Co., 550 U.S. at 418-19.
Appellant suggests that the proposed combination of references would
render Schau unfit for its intended purpose. (App. Br. 6.) Specifically,
Appellant argues that inserting support poles into the Schau’s nutrient tubes
would prevent the tubes from delivering nutrients. (Id.) We are not
persuaded by this argument. As Appellant acknowledges, Schau “pertains to
a planter box for controlling the growth pattern of tree roots to prevent
damage to nearby structures ….” (Reply Br. 3; see also Fact 1.) Even if
every one of Schau’s several nutrient tubes were plugged, the walls of the
device would still serve the primary purpose of directing the roots
downwardly rather than outwardly. Nonetheless, Mayer discloses guide
tubes attached to the base (Fact 2), thus the combined teachings of Mayer
and Schau would result in a root encircling base that has guide tubes, and
that could also have separate nutrient tubes.
Appellant also argues that Mayer’s device does not support the tree
loosely as does Appellant’s device because Mayer has wing-nut screws
which may be used to clamp the Christmas tree in place. (App. Br. 7.) This
argument does not convince us of error in the rejection. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton,” KSR
Int’l Co., 550 U.S. at 421, and would recognize the desirability of having a
loose fitting guide for a living plant (like Sikes’s trellis-hoops) rather than
Mayer’s tightened wing-nut screws used to secure a cut Christmas tree.
Appellant has not shown error in the Examiner’s rejection of claim 1
as unpatentable over Schau, Sikes, and Mayer. Accordingly, we sustain the
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rejection of claim 1, as well as the rejection of claims 2, 3, 7-9, 11-13, 18-21,
and 24, which fall with claim 1.

The rejection of claims 10, 17, and 26-30 under 35 U.S.C. § 103(a) as being
unpatentable over Schau, Sikes, Mayer, and Mead
The claims subject to this rejection include a water delivery feature.
Claims 10, 17, and 26 recite a plurality of drip emitters spaced along upper
and lower edge portions of the base side wall. Claim 27 (along with the
claims that depend therefrom) and claim 30 require a plurality of irrigators
spaced along the upper inner edge and the lower outer edge of the side wall.
Appellant concedes that Mead discloses an irrigator, but argues that
Mead does not show drip emitters along the upper and lower edges of a root
director. (App. Br. 12.) Appellant’s written description does not describe
the structure of the emitters, and the Specification’s Figure 1 appears to
depict the emitters as merely holes in the drip line. (See Fact 5.) Mead
discloses irrigator tubing having very small apertures. (Fact 4.) The
Examiner found that Mead’s irrigation system inherently administers a drip
due to the nature of the size of the apertures. (Ans. 7.) Although Appellant
makes the general assertion that Mead does not disclose drip emitters,
Appellant does not appear to specifically challenge this reasonable finding
of inherency, and does not otherwise explain how Mead’s perforated tubing
is structurally distinct from the recited drip emitter. (See App. Br. 12; Reply
Br. 5.) Appellant has not persuaded us that the Examiner erred in finding
that Mead discloses a drip emitter when the claim is given its broadest
reasonable construction consistent with the Specification. Appellant’s
further argument that Schau’s nutrient tubes are not drip emitters (Reply Br.
5), is misdirected as the rejection is based on the combined teachings of the
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references, and the Examiner relies on Mead for the teaching of drip emitters
(Ans. 7, 11).
Appellant also argues that neither Mead nor the other cited references
show drip emitters along the upper and lower edge portions of a root director
or irrigators along the upper and lower edges of a root director, and that
there is no reason to combine the references. (App. Br. 12; Reply 5, 6.) We
do not find Appellant’s arguments persuasive. Mead teaches an irrigation
system placed around the roots so as to stimulate growth in a desired
manner. (Fact 4.) Schau teaches the use of a base in combination with a
nutrient delivery means. (Fact 1.) The Examiner’s rationale underlying the
conclusion of obviousness – that it would have been obvious to combine the
modified Schau device (as discussed above in the context of the first
rejection) with Mead’s irrigation system running the full length of the base
to promote healthy root development – is reasonable.
In a fashion similar to that regarding the first rejection, Appellant
identifies various claims under separate headings, points out what each claim
recites and states that the claim distinguishes over the references by calling
for the recited combination, and, for some claims, asserting that the recited
combination is not shown. (App. Br. 12-14; Reply Br. 5-6.) Even if we
were to consider such statements to be arguments for patentability, those
bare assertions fail to show with any specificity why the rejection is
purportedly erroneous.
Appellant has not demonstrated that the Examiner erred in rejecting
claims 10, 17, and 26-30 as being unpatentable over Schau, Sikes, Mayer,
and Mead.

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CONCLUSIONS
Appellant has not shown that the Examiner erred in concluding that
the combined teachings of Schau, Sikes, and Mayer would have suggested to
one of ordinary skill in the art the subject matter of claims 1-3, 7-9, 11-13,
18-21, and 24.
Additionally, Appellant has not shown that the Examiner erred in
concluding that the combined teachings of Schau, Sikes, Mayer, and Mead
would have rendered the subject matter of claims 10, 17, and 26-30 obvious
to one of ordinary skill.

DECISION
The decision of the Examiner to reject claims 1-3, 7-13, 17-21, 24,
and 26-30 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Klh

RAYMOND ANTHONY MELLO
9500 BASELINE ROAD
ELVERTA, CA 95626