Ex Parte Nixon-LaneDownload PDFPatent Trial and Appeal BoardMay 18, 201512815822 (P.T.A.B. May. 18, 2015) 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. 12/815,822 06/15/2010 Karen Nixon-Lane 14071-21 2139 80711 7590 05/18/2015 BGL/Ann Arbor 524 South Main Street Suite 200 Ann Arbor, MI 48104 EXAMINER BANIANI, SHADI SHUNTI ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 05/18/2015 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 KAREN NIXON-LANE ____________________ Appeal 2013-005727 Application 12/815,822 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Karen Nixon-Lane (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2013-005727 Application 12/815,822 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A ground cover or landscaping material that suppresses plant growth and comprises a volume of loose particles and a water activated adhesive component that when activated and cured secures the loose particles together. REJECTIONS I. Claims 1–20 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1, 2, 4–13, and 15–20 stand rejected under 35 U.S.C. § 102(b) as anticipated by McCalister (US 4, 219,966, iss. Sept. 2, 1980). III. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McCalister and Fowler (US 3,876,411, iss. Apr. 8, 1975). OPINION Rejection I — Written Description The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether the disclosure of the application relied upon Appeal 2013-005727 Application 12/815,822 3 reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. We appreciate the Examiner’s observation that Appellant’s Specification does not explicitly state that the ground cover of Appellant’s invention suppresses plant growth. However, persons having ordinary skill in the art would recognize that Appellant’s invention improves upon the types of ground covers, such as the synthetic wood chips discussed in the Greenberg patent publication, 1 for example, alluded to in the background section of Appellant’s Specification by combining them with an adhesive component. See Spec. ¶¶ 3, 4, 7, 18–22. Appellant’s Specification points out that one use of such ground covers is “weed and moisture control.” Id. ¶ 3. Moreover, Greenberg, “the complete disclosure of which is expressly hereby incorporated by reference” into Appellant’s Specification (id. ¶ 19), describes its synthetic mulch as “prevent[ing] the growth of weeds.” Greenberg ¶¶ 8, 18; see also ¶ 15. Thus, those skilled in the art would understand from the aforementioned disclosure that the ground cover of Appellant’s invention suppresses growth of weeds, which are plants. Accordingly, we find that the disclosure of the present application reasonably conveys to those skilled in the art that Appellant had possession of the invention recited in claims 1–20, namely, a ground cover or method of applying a ground cover that suppresses plant growth, such as the growth of weeds. Consequently, we do 1 US 2001/0047051 A1, pub. Nov. 29, 2001 (hereinafter “Greenberg”). Appeal 2013-005727 Application 12/815,822 4 not sustain the rejection of claims 1–20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Rejection II — Anticipation Appellant groups claims 1, 2, 4–13, and 15–20 together in contesting the rejection of these claims as anticipated by McCalister. See Appeal Br. 9–11. Thus, we decide the appeal of this rejection on the basis of claim 19. The issue presented in the appeal of this rejection is whether McCalister’s composition, applied to a surface area (i.e., the earth) satisfies the limitation “suppression plant growth” recited in claim 19. Final Act. 3; Ans. 5; Appeal Br. 9–10; Reply Br. 5. The Examiner finds that McCalister’s rapid grass growth promotion “can suppress other plant growth.” Final Act. 3. Thus, the Examiner posits that McCalister’s ground cover meets the plant growth suppression limitation of claim 19 “due to rapid growth of the grass taking over other plants that might thrive in the area of the grass growth. Certainly, rapid grass growth would suppress weed or other plant to [sic] growth.” Ans. 5. The Examiner adds that “McCalister’s ground cover includes not only grass seeds but also woodchips, bark chips, (col. 3, line 20) which woodchips are employed in [A]ppellant’s invention and woodchips used together with the grass seeds would suppresses [sic] plant growth.” Id.; see Spec. ¶ 18 (disclosing wood chips as one embodiment of the ground cover of the invention). Appellant argues that Appellant’s ground cover that suppresses plant growth is in contrast to the rapid growth composition of McCalister and that “inasmuch as suppressing plant growth is completely contrary to goals of McCalister, McCalister does not teach or anticipate [A]ppellant’s invention Appeal 2013-005727 Application 12/815,822 5 as presently claimed.” Appeal Br. 9, 10. Appellant adds that “it would destroy the teachings of McCalister to modify the grass growth composition of McCalister to suppress plant (grass) growth.” Id. at 10. In responding to the Examiner’s point that McCalister’s ground cover includes wood chips (one of the materials disclosed by Appellant for use in the ground cover of the invention), Appellant asserts that McCalister’s wood chips and other cellulose materials “have a particle [size] of 5 millimeters (0.2) or less,” 2 which is smaller than either certified playground mulch or triple shredded wood mulch. Reply Br. 4. Appellant also points out that “McCalister teaches that the cellulose material ‘simultaneously” begins to decompose as the fertilizer is ‘dissolved into the soil by the watering process.’” Id. Thus, according to Appellant, McCalister’s composition includes seeds, fertilizer, and a cellulose material that will retain moisture and decompose “to promote rapid plant growth, but [is] much smaller than the size of conventional mulch that is used to suppress plant growth.” Id. at 5. In finding that the rapid grass promotion characteristic of McCalister’s ground cover satisfies the plant growth suppression limitation of claim 19, the Examiner ostensibly construes plant growth suppression as requiring suppression of growth of any plant, not as requiring suppression of all plants. We find nothing in Appellant’s Specification that precludes such a construction, and Appellant does not persuade us that the Examiner’s construction is unreasonable. Appellant’s Specification refers to “weed” control, and Greenberg, incorporated by reference in Appellant’s Specification, mentions preventing the growth of weeds, as discussed above. 2 McCalister discloses chopping “the cellulosic material into particles of about 0.5 centimeters or less.” McCalister, col. 3, ll. 21–24. Appeal 2013-005727 Application 12/815,822 6 Spec. ¶ 3; Greenberg ¶¶ 8, 15, 18. The Examiner’s interpretation of McCalister’s rapid grass promotion to suppress growth of weeds and other plants that are not the grass whose growth is promoted is consistent with the weed control alluded to in Appellant’s Specification and Greenberg, incorporated therein. Appellant’s argument that modifying McCalister to suppress grass growth would destroy McCalister is not germane to the Examiner’s rejection, which proposes no such modification of McCalister. Appellant does not proffer any evidence to support the assertions about the particle size of conventional mulch that suppresses plant growth. As such, Appellant’s argument that the wood chip material used in McCalister’s ground cover is much smaller than such conventional mulch amounts to unsupported attorney argument, and thus is entitled to little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Further, although McCalister discloses that “the cellulosic material begins to decompose to supply organic material,” according to McCalister, the cellulosic material begins to decompose after germination of the grass plants and simultaneously with the supply of nutrients from the fertilizer dissolved into the soil by watering. McCalister, col. 4, ll. 15–20. McCalister further discloses that “[a]s the grass plants grow the cellulosic material continues to decompose and the fertilizer continues to dissolve to add necessary nutrients.” Id., col. 4, ll. 23–25. In other words, the wood chips, or other cellulosic material, does not begin to decompose until after the grass begins to grow, thereby suppressing growth of other plants that might otherwise thrive there. Appeal 2013-005727 Application 12/815,822 7 For the above reasons, Appellant fails to apprise us of error in the Examiner’s rejection of claim 1 as anticipated by McCalister. Accordingly, we sustain the rejection of claims 1, 2, 4–13, and 15–20 under 35 U.S.C. § 102(b) as anticipated by McCalister. Rejection III — Obviousness Appellant argues that “[t]he Examiner’s further reliance upon Fowler does not address or overcome the differences between [A]ppellant’s claimed invention and McCalister as set forth above.” Appeal Br. 11. This argument is not convincing for the reasons articulated above in addressing the anticipation rejection. Appellant raises a new argument against this rejection for the first time in the Reply Brief. Reply Br. 6–7. This argument was not raised in the Appeal Brief and is not responsive to an argument raised in the Answer, and thus will not be considered. 37 C.F.R. § 41.41(2). 3 Appellant does not apprise us of error in the rejection of claims 3 and 14. Thus, we sustain the rejection of claims 3 and 14 under 35 U.S.C. § 103(a) as unpatentable over McCalister and Fowler. 3 In any event, Appellant’s argument does not apprise us of error in the rejection. Appellant does not explain why Fowler’s teaching to add clay materials to enable the mulch to adequately carry fertilizer means that modification of McCalister to include latex materials would render McCalister’s fertilizer materials incompatible. See Reply Br. 6. Further, even accepting Appellant’s position that the combined teachings of McCalister and Fowler suggest adding latex materials to McCalister would necessitate further modification to include clay materials (id. at 7), Appellant does not elaborate on why that would have discouraged a skilled artisan from making such modifications. Appeal 2013-005727 Application 12/815,822 8 DECISION The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is REVERSED. The Examiner’s decision rejecting claims 1, 2, 4–13, and 15–20 under 35 U.S.C. § 102(b) as anticipated by McCalister is AFFIRMED. The Examiner’s decision rejecting claims 3 and 14 under 35 U.S.C. § 103(a) as unpatentable over McCalister and Fowler 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). AFFIRMED hh Copy with citationCopy as parenthetical citation