Ex Parte Rice

Patent Trial and Appeal Board

Aug 23, 2013

11586367 (P.T.A.B. Aug. 23, 2013)

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.
11/586,367 10/25/2006 Frank Rice 288903-00267-1 8975
7590 08/23/2013
David C. Jenkins
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
08/23/2013 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 FRANK RICE
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Appeal 2011-002822
Application 11/586,367
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002822
Application 11/586,367

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STATEMENT OF THE CASE
Frank Rice (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claim 1 as
unpatentable over Rinkovsky (US 4,702,390, issued Oct. 27, 1987) and
Bennick (US 4,016,676, issued Apr. 12, 1977) and claim 2 as unpatentable
over Rinkovsky, Bennick, and Holt (US 4,047,329, issued Sep. 13, 1977).
Claims 3-20 have been withdrawn. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “a three-layered planter having an
outer layer of polyurethane, a central fiberglass layer, and an inner resin
layer.” Spec. 1, ll. 12-14 and fig. 1A.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A planter comprising:
a body having a base and a depending
sidewall, said body having at least three layers, an
outer layer, a central layer, and an inner layer;
said outer layer being polyurethane foam;
said central layer being fiberglass, said
fiberglass bonded to said polyurethane foam; and
said inner layer being polyester resin, said
polyester resin applied to, and cured upon, said
fiberglass.

SUMMARY OF DECISION
We REVERSE.

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Application 11/586,367

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ANALYSIS
The Examiner found that although Rinkovsky fails to disclose that the
outer layer is polyurethane foam, as called for by claim 1, nonetheless,
Bennick discloses “a multilayered planter using polyurethane foam [20] as a
layer.” Ans. 4 (citing to Bennick, col. 4, ll. 17-56). The Examiner
concluded that, “it would have been obvious to one of ordinary skill in the
art to take the device of Rinkovsky and add the polyurethane foam layer of
Bennick, so as to allow for the device to be made more durable.” Id.
According to the Examiner, the device of Rinkovsky and Bennick is “more
durable in that the inner layers would be protected from the elements by the
outer polyurethane layer and the outer polyurethane layer itself would be
more protected from the elements in that it would not be susceptible to rust
such as a metal outer layer.” Ans. 6. As an additional reason to modify the
plant holder of Rinkovsky with the teachings of Bennick, the Examiner
looks “in the Bennick reference itself as where the polyurethane layer is
used for aesthetic reasons to give the planter the appearance of a piece of
earth.” Id.
Appellant argues that, because Rinkovsky specifically discloses that
the outer metallic layer can be brass or chrome or that the metal can plated,
painted, or covered with enamel, the Examiner has failed to provide an
adequate reasoning with rational underpinning to modify the plant holder of
Rinkovsky with the teachings of Bennick. Reply Br. 4-5; see also
Rinkovsky, col. 2, ll. 15-20.
At the outset, we agree with Appellant that, “[b]rass, chrome, or
protected steel are not prone to rust.” Reply Br. 4. As such, the reason
proffered by the Examiner to modify the teachings of Rinkovsky, i.e., to
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Application 11/586,367

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provide for the plant holder to be more durable to rust, appears to be already
adequately performed by the outer layer of Rinkovsky. Furthermore, we
note that the Examiner has not provided any findings that Rinkovsky
recognized a problem with rust.
With respect to the Examiner’s additional reasoning to support the
combination of Rinkovsky and Bennick, namely, for aesthetic reasons, we
note that it is not the polyurethane foam layer of Bennick that provides the
aesthetics of a piece of earth, as the Examiner proposes, but rather a thin
layer of earthen material 10 that bonds to polyurethane foam filler material
20. See Bennick, col. 3, ll. 14-27 and fig. 4. Moreover, even assuming
arguendo that sufficient reason were to exist to combine the teachings of
Rinkovsky and Bennick in the manner proposed by the Examiner, the result
would not be the structure required by independent claim 1, because the
outer layer of the resulting plant holder would be an earthen layer rather than
a polyurethane foam layer.
In conclusion, since the Examiner does not provide any support for
the allegation that the inclusion of an outer polyurethane foam layer to the
planter of Rinkovsky would serve to provide for improved rust resistance
and aesthetic appearance, the Examiner’s articulated reason for combination
is not supported by a preponderance of the evidence of the record before us.
We thus agree with Appellant that, “the Examiner’s reasons supporting the
combination, durability and to provide natural appearance, are incorrect.”
Reply Br. 4. Without a persuasive articulated reasoning based on rational
underpinnings for modifying the reference as proposed, the Examiner’s
rejection appears to be the result of hindsight analysis. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
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[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Hence, for the foregoing reasons, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Rinkovsky and
Bennick.
Lastly, we note that that the addition of Holt’s teachings does not
remedy the deficiencies of the Examiner’s proposed combination of
Rinkovsky and Bennick. Therefore, for the same reasons as presented
supra, we likewise do not sustain the rejection of claim 2 over the combined
teachings of Rinkovsky, Bennick, and Holt.

SUMMARY
The Examiner’s decision to reject claims 1 and 2 is reversed.

REVERSED

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