Ex Parte Searle et al

Board of Patent Appeals and Interferences

Jul 28, 2006

10669157 (B.P.A.I. Jul. 28, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RANCE W. SEARLE and MARTY G. HANSON
____________

Appeal No. 2006-1428
Application No. 10/669,157
Technology Center [3600]
____________

ON BRIEF
____________

Before BAHR, LEVY, and FETTING, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 4, 5, 7-10 and 13-24, which are all of
the claims pending in this application.

We REVERSE.
BACKGROUND
The appellants' invention relates to container gardening
and a planter (specification, page 1).
Claim 1 is representative of the invention, and is
reproduced as follows:
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A planter for high-density growth of plants comprising:

(a) a first bottom;

(b) a first front wall, a first back wall, and first and
second side walls disposed on said first bottom such that said
first bottom, first front wall, first back wall, and first and
second side walls define a first cavity for receiving a plant
growth medium for supporting roots of said plants, wherein said
first front wall and first and second side walls comprise a
plurality of holes configured for permitting stems of said plants
to extend therethrough, and wherein the first bottom, first front
wall, or first back wall comprises at least one drain hole for
permitting liquids to drain therethrough; and

(c) a first flange disposed on said first side wall
configured for permitting attachment of a second bottom, a second
front wall, and a second back wall thereto, and a second flange
disposed on said second side wall configured for permitting
attachment of a third bottom, a third front wall, and a third
back wall thereto.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rolfe et al. (Rolfe) 4,287,997 Sep. 8, 1981 U 9217076A Khoury May 29, 1991 A (Australian Patent)
Claims 1, 2, 4, 5, 7-10 and 13-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Khoury in view of
Rolfe.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the answer (mailed October 14,
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2005) for the examiner's complete reasoning in support of the
rejection, and to the brief (filed August 8, 2005) and reply
brief (filed December 21, 2005) for the appellants’ arguments
thereagainst.
Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and
arguments in rebuttal set forth in the examiner's answer. Upon
consideration of the record before us, we make the determinations
which follow.
We begin with claim 1. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a factual
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basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
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1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (final rejection, page 2) is that

Khoury is silent on a first flange disposed
on the first side wall configured for
permitting attachment of a second bottom, a
second front wall, and a second back wall
thereto, and a second flanqe disposed on said
second side wall configured for permitting
attachment of a third bottom, a third front
wall, and a third back wall thereto.

To overcome this deficiency of Khoury, the examiner turns
to Rolfe for a teaching of a flange on a side wall for attaching
additional receptacles. The examiner adds that it would have
been obvious to add an additional receptacle as a mere
duplication of a known element for a multiple effect performing
the same intended function.
Appellants' position (brief, page 13) is that Khoury is not
directed to a planter, but rather is directed to a crate. It is
argued (brief, page 14) that Rolfe fails to teach or suggest
securing or locking together a third container to the two other
containers. Appellants further assert (brief, page 15) that
Rolfe is non-analogous art because Rolfe is directed to shipping
freight, whereas appellants are growing plants in containers.
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Appellants add (brief, page 16) that “[a] person of ordinary
skill in the art of planters would not reasonably look to the art
of freight containers to solve the problem of making planters of
a selected length." It is additionally asserted (brief, page 17)
that the shipping container of Rolfe is not reasonably pertinent
to the problem with which the present inventors were involved.
The examiner responds (answer, page 3) that the crate of
Khoury is capable of being used as a planter, and that the
intended use of the crate does not structurally distinguish the
claimed invention from the prior art. The examiner additionally
asserts (answer, page 4) that Rolfe is analogous prior art
because it is related to the same field, i.e., containers. It is
argued (answer, page 5) that Rolfe teaches flanges on the top and
bottom of the container that facilitate attaching and stacking.
The examiner (id.) relies upon elements 11, 12 and 13 of Rolfe as
teaching flanges on walls of the container that enable attaching
multiple containers together at different locations around the
first container (i.e. top, side, or bottom).
In the reply brief, appellants argue (reply brief, page 6)
to the effect that the examiner’s rejection is based on the
inappropriate use of hindsight, and that the enclosed container
of Rolfe would be inappropriate for use in a planter because the
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enclosed container would not permit sunlight to reach the plants
and would not permit water to drain from the soil.
From our review of the references, we note at the outset
that the agricultural product container of Khoury could be used
as a planter because it is a container for agricultural products
that contains numerous holes 48. In addition, we find Rolfe
to be analogous art because it is directed to the problem of
connecting together two containers. From the disclosure of Rolfe
of using flange 31 and channel 30 for connecting another
container to the first container, we find that an artisan would
have been motivated to connect containers together in view of the
combined teachings of Khoury and Rolfe.
We additionally agree with the examiner that to add a third
container would have been an obvious duplication of elements to
an artisan. However, it is at this point that we part company
with the examiner. Claim 1 requires that the flanges configured
for permitting attachment to second and third back wall, bottom
wall are disposed on the sidewalls. From our review of Rolfe, we
find that the channel 30 and flange 31 are mounted on a sidewall,
but that the flange and channel do not connect to the bottom
wall, back wall and front wall, but rather to the sidewall of
another container. The support members 11-13 on the bottom of
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the container do attach to the top of a lower placed container.
However, these support members 11-13, or the similar support
members on the top of the container, are not part of the flange
disposed on the sidewall. Thus, even if the teachings of the
references were combined as advanced by the examiner, the
resultant structure would not meet the language of claim 1.
Thus, we agree with appellant (reply brief, page 2) that
“[i]t is not clear what the combination of Khoury and Rolfe leads
to, but it is not the presently claimed planter."
From all of the above, we find that the combined teachings
of Khoury and Rolfe would not have suggested to an artisan all
of the limitations of claim 1. Accordingly, the rejection of
claim 1, and claims 2, 4, 5, 7-10 and 13-15, dependent therefrom,
under 35 U.S.C. § 103(a) is reversed.
The other independent claims 16 and 23 contain a similar
limitation. Accordingly, the rejection of claims 16 and 23,
along with dependent claims 17-22 and 24 under 35 U.S.C. § 103(a)
is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1-, 2, 4, 5, 7-10 and 13-24 under 35 U.S.C. § 103 is reversed.

REVERSED

JENNIFER D. BAHR )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
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ALAN J. HOWARTH
P.O. BOX 1909
SANDY UT 84091-1909

SL/jrg
Comment [jvn1]: Type address
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