Ex Parte Shepardson

Board of Patent Appeals and Interferences

Sep 22, 2009

10954673 (B.P.A.I. Sep. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HEATHER ANN SHEPARDSON
____________________

Appeal 2009-010639
Application 10/954,673
Technology Center 3600
____________________

Decided: September 22, 2009
____________________

Before: WILLIAM F. PATE, III, STEVEN D.A. MCCARTHY and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
9 and 19-22. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-010639
Application 10/954,673

2
The claims are directed to an apparatus for delivering water to a plant
supported in a receptacle and a kit for assembling that apparatus. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1. A kit for an apparatus for delivering water to a plant
supported in a receptacle, the kit comprising:
a water-tight reservoir having a base, at least one wall
joined to said base, and an open top, said reservoir including a
recess formed therein adjacent the joint between said wall and
said base;
an outlet port disposed in the recess and passing from the
interior to the exterior of said reservoir;
a conduit having a first end for attaching to said outlet
port and a second end;
means for retaining said second end of said conduit
within the receptacle when said reservoir is spaced apart from
the receptacle; and
a lid for said reservoir.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Mattson US 1,453,401 May 1, 1923
Munoz US 5,157,868 Oct. 27, 1992
Main US 6,497,071 B1 Dec. 24, 2002

Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Munoz and Mattson. Ans. 3.
Claims 4-6 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Munoz, Mattson and Main. Ans. 4, 5
Appeal 2009-010639
Application 10/954,673

3
Claims 7-9 and 20-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Munoz, Mattson and Applicant’s Admitted Prior
Art on page 9 of the Specification (hereinafter “AAPA”). Ans. 5, 7.

OPINION
The failure of Appellant to separately argue claims 20 and 21
constitutes a waiver of any argument that the Board must consider relating to
the patentability of claims 20 and 21. Accordingly, the Examiner’s rejection
of claims 20 and 21 is summarily affirmed. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claims 1 and 22, Appellant contends that the Examiner has
failed to establish a prima facie case of obviousness because the combination
of Munoz and Mattson or Munoz, Mattson, and AAPA, does not teach or
suggest an outlet port disposed in a recess formed in the reservoir. App. Br.
11-12, 13. We agree.
A determination of obviousness involves two steps. The first is
construing the claim, a question of law. The second is a comparison of the
construed claim to the prior art. This comparison process involves fact-
finding. Key Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709, 714
(Fed. Cir. 1998) (citations omitted). All words in a claim must be considered
in judging the obviousness of the claimed subject matter. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). The PTO applies to verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
Appeal 2009-010639
Application 10/954,673

4
applicant’s specification. See In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997).
When describing the embodiment depicted in Figures 1-7 of the
Specification, Appellant has employed the term “opening 30” to describe the
structure in which the port 32 is located. Spec. 7:10-8:3; fig. 2. In contrast,
Appellant uses the term “recess 110” to describe the structure in which the
port 112 is located in the embodiment depicted in Figures 8 and 9. Spec.
13:3-4, 14-15; fig. 9. This recess is structurally different from the opening
depicted in the embodiment depicted in Figures 1-7. See Ans. 10. From
Appellant’s usage it is clear that the term “recess” should be interpreted to
require a setback surface of the reservoir and not simply an opening in the
reservoir such as Mattson’s opening 11. Mattson, col. 1, ll. 50-56. Reading a
claim in light of the specification, to thereby interpret limitations explicitly
recited in the claim, is a quite different thing from reading limitations of the
specification into a claim, to thereby narrow the scope of the claim by
implicitly adding disclosed limitations which have no express basis in the
claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Since the Examiner improperly interpreted the term “recess” to
include the opening 11 of Mattson, and since neither Munoz, Main nor
AAPA cure this deficiency, we must conclude that the Examiner erred in
determining that the subject matter of claim 1-4, 7-9 and 22 would have
been obvious to one having ordinary skill in the art.
Regarding claim 19, Appellant contends that the Examiner erred by
determining that Main’s glue is a “means for removably attaching the
ornament to the lid.” We agree.
Appeal 2009-010639
Application 10/954,673

5
In order for a prior art element to meet a section 112, paragraph 6
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a section 112, paragraph 6 equivalent. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may be
“equivalent” for purposes of section 112, paragraph 6 if they perform the
identical function, in substantially the same way, with substantially the same
result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.
Cir. 2000).
The structures in Appellant’s Specification corresponding to the
claimed means are “wires or ties 66 and 68” or “a hook and loop type
fastener 130.” Spec. 11:13-20; 13:11-13. We agree with the Examiner that
Main’s glue, like Appellant’s structures, can function to removably attach
the ornament to the lid. Unlike Main’s glue, however, Appellant’s wires and
hook-and-loop-type fastener rely upon a mechanical bond in order to
perform this function and not a chemical bond. This results in the ability to
attach, detach and reattach the ornament and lid without any substantial
degradation to the ornament, the lid or the attachment structures themselves.
Thus, while Main’s glue may perform the same function, it does not do so in
substantially the same way, with substantially the same result. Since the
Examiner improperly interpreted the term “means for removably attaching
the ornament to the lid” to include Main’s glue, and since neither Munoz nor
Mattson, as applied by the Examiner, cure this deficiency, we must conclude
that the Examiner erred in determining that the subject matter of independent
claim 19, and dependent claims 5 and 6, would have been obvious to one
having ordinary skill in the art.

Appeal 2009-010639
Application 10/954,673

6
DECISION
For the above reasons, the Examiner’s rejections of claims 1-9, 19 and
22 are reversed and the Examiner’s rejection of claims 20 and 21 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-IN-PART

mls

HOLLAND & HART, LLP
P.O BOX 8749
DENVER, CO 80201