Ex parte Perez

Board of Patent Appeals and Interferences

May 20, 1998

08458689 (B.P.A.I. May. 20, 1998)

Application for patent filed June 2, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSE L. PEREZ
____________
Appeal No. 97-1476
Application No. 08/458,6891
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appeal No. 97-1476
Application No. 08/458,689
We REVERSE.
Appeal No. 97-1476 Page 3
Application No. 08/458,689
In determining the teachings of Takahisa, we will rely2
on the translation provided to the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a hanging plant
apparatus. An understanding of the invention can be derived
from a reading of exemplary claims 1, 8 and 14 (the
independent claims on appeal), which appear in the appendix to
the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Maasbach 4,109,442 Aug. 29,
1978
O'Sullivan 4,556,184 Dec. 3,
1985
Lyon 4,965,963 Oct.
30, 1990
Takahisa 56-9525 (Japan) Jan. 31, 19812
Green 2,147,484 (Gr. Britain) May
15, 1985
Hawkins 94/09614 (WIPO) May 11, 1994
Claims 1 through 13 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
Appeal No. 97-1476 Page 4
Application No. 08/458,689
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hawkins in view of Maasbach.
Claims 2 through 6, 9 and 10 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hawkins in view of
Maasbach and Takahisa.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hawkins in view of Maasbach and O'Sullivan.
Claims 11 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hawkins in view of Maasbach,
Takahisa and Lyon.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hawkins in view of Maasbach and Green.
Appeal No. 97-1476 Page 5
Application No. 08/458,689
Claims 15 through 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hawkins in view of Maasbach, Green
and Takahisa.
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hawkins in view of Maasbach, Green and
O'Sullivan.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 11, mailed November 18, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 10, filed July 15, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 97-1476 Page 6
Application No. 08/458,689
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We do not sustain the rejection of claims 1 through 13
under 35 U.S.C. § 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
The examiner determined (answer, p. 3) that
[i]n claims 11-13, the references to "said receptacle"
and the positive recitation of a structural limitation
associated therewith (in this case, a wick) is confusing
in that the preamble of each claim is directed to a
"hanging plant container apparatus" and not a combination
of an apparatus and a receptacle per se. . . . It is not
clear whether Applicant is attempting to claim the
combination or merely the subcombination.
We do not agree. As correctly pointed out by the
appellant (brief, pp. 4-5), claims 1-10 are clearly directly
Appeal No. 97-1476 Page 7
Application No. 08/458,689
to the subcombination of the apparatus as shown in Figure 1
for use with an unclaimed plant receptacle. The mere fact
that claims 11-13 recite further details of the unclaimed
plant receptacle with which the claimed apparatus is intended
to be used does not render the claims indefinite. Thus, it is
our determination that claims 1 through 13 do define the metes
and bounds of the claimed invention with a reasonable degree
of precision and particularity. Accordingly, the decision of
the examiner to reject claims 1 through 13 under 35 U.S.C. §
112, second paragraph, is reversed.
The obviousness issue
We do not sustain the rejection of claims 1 through 20
under 35 U.S.C. § 103.
The examiner determined (answer, pp. 4-5 and 7) that
Hawkins failed to teach the drawstring means as recited in
independent claims 1 and 14 and the drawing means as recited
in independent claim 8. The examiner then concluded that it
would have been obvious to one having ordinary skill in the
art to modify Hawkins to have a drawstring based upon
Appeal No. 97-1476 Page 8
Application No. 08/458,689
Maasbach's teachings of utilizing cord 2 to easily tighten the
bag 6 to the shrub 15 as shown in Figure 6.
We agree with the appellant's argument (brief, pp. 6-8)
that there is no teaching, suggestion or motivation for
combining Maasbach's teaching with Hawkins's plant receptacle
absent impressible hindsight.
Furthermore, it is our view that cord 2 of Maasbach or
the string-like member 2 of Takahisa are not equivalent to the
cable ties disclosed by the appellant. In order to meet a
"means-plus-function" limitation, the prior art must (1)
perform the identical function recited in the means limitation
and
(2) perform that function using the structure disclosed in the
specification or an equivalent structure. Cf. Carroll Touch
Inc. v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27
USPQ2d 1836, 1840 (Fed. Cir. 1994); Valmont Indus. Inc. v.
Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454
(Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580,
12 USPQ2d 1382, 1386 (Fed. Cir. 1989). In this case, the
Appeal No. 97-1476 Page 9
Application No. 08/458,689
structure disclosed in the specification (pp. 2-3) for
performing the function of the "drawstring means" (claims 1
and 14) and the "drawing means" (claim 8) consists of two
plastic cable ties 10 of the type well known in the
electronics art, shown in detail in Figure 4. As shown in
Figure 1, the bottom hem 3 provides access to the cable ties
10 at two locations. In addition, the appellant discloses
that when the cable ties 10 are pulled tight around a pot 11,
they cannot be released without cutting the cable ties. Thus,
the tightened cable ties become relatively permanently secured
to the pot 11. The cord 2 of Maasbach and the string-like
member 2 of Takahisa both consist of a single member
accessible at a single location. In addition, the cord 2 of
Maasbach and the string-like member 2 of Takahisa both are
easily tightened and untightened. Accordingly, it is our view
that the cord 2 of Maasbach and the string-like member 2 of
Takahisa are not an equivalent structure to the two cable ties
10 disclosed by the appellant. Thus, even if it were obvious
to replace Hawkins' lower wire 156 engaged behind flange 154
of the ring 152 (which is permanently connected to dish 122)
with a drawstring as taught by either Maasbach or Takahisa,
Appeal No. 97-1476 Page 10
Application No. 08/458,689
the resulting apparatus would not render the hanging plant
container apparatus of the appealed claims unpatentable under
35 U.S.C. § 103.
We have also reviewed the Lyon, Green and O'Sullivan
references additionally applied in the rejection of some of
the appealed claims but find nothing therein which makes up
for the deficiencies of the applied prior art discussed above.
For the reasons set forth above, the decision of the
examiner to reject claims 1 through 20 under 35 U.S.C. § 103
is reversed.
Appeal No. 97-1476 Page 11
Application No. 08/458,689
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 13 under 35 U.S.C. § 112, second paragraph,
and the decision of the examiner to reject claims 1 through 20
under
35 U.S.C. § 103 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1476 Page 12
Application No. 08/458,689
ALVIN S. BLUM
2350 DEL MAR PLACE
FORT LAUDERDALE, FL 33301
APPEAL NO. 97-1476 - JUDGE NASE
APPLICATION NO. 08/458,689
APJ NASE
APJ MEISTER
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 08 May 98
FINAL TYPED:
3 MAN CONF.
Mail copy of translation with decision