Ex Parte Toyama et al

Patent Trial and Appeal Board

Sep 19, 2014

12603882 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WAYNE THOMAS TOYAMA and
YOHAN SURIYAMPOLA
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Appeal 2012-008095
Application 12/603,882
Technology Center 3600
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Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒4, 6‒11, and 18‒20. App. Br. 1, 4. Claims 5, 16, and
17 have been canceled while claims 12‒15 have been withdrawn. App. Br.
4, 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to containers that are used to
grow and hold horticultural products, especially root-bearing plants to be
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transplanted by the customer.” Spec. 1:6‒7. Independent claim 1,
reproduced below, is the sole independent claim and is illustrative of the
claims on appeal:
1. A fiber pot comprising:
a continuous side wall that is closed, an open first end
and a closed second end opposite the first end;
wherein the first end is open and the second end is
closed;
said pot being made of a combination of compressed
coconut fiber and latex rubber;
wherein the second end comprises a first indentation, said
first indentation extending across the second end;
said first indentation having first and second ends;
the side wall comprises a second indentation extending
from the second end in the direction of the first end of the side
wall;
the side wall comprises a third indentation extending
from the second end in the direction of the first end of the side
wall; and
said second indentation extends from the first end of the
first indentation and said third indentation extends from the
second end of the first indentation,
wherein the second indentation and the third indentation
each extend from the second end of the side wall in the
direction of the first end of the side wall no more than one half
of the distance to the first end of the side wall,
the first indentation, the second indentation, and the third
indentation are concave when viewed from outside the fiber
pot,
the first indentation includes a groove located on an
exterior surface of the closed second end, the groove being
configured to direct folding of the closed second end towards
an interior of the fiber pot, and
the second indentation and the third indentation each
include a groove located on an exterior surface of the side wall,
the grooves being configured to direct folding of the said wall
towards an interior of the fiber pot.
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REFERENCES RELIED ON BY THE EXAMINER
Weder US 2005/0241226 A1 Nov. 3, 2005
Ouellet CA 2 647 918 June 27, 2009
THE REJECTION ON APPEAL
Claims 1‒4, 6‒11, and 18‒20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ouellet and Weder. Ans. 4.

ANALYSIS
Appellants contend that they “are separately arguing the patentability
of claims 1 and 20” (App. Br. 9) but no separate argument with respect to
claim 20 is presented (see App. Br. 9‒11 generally). Nor do Appellants
present separate arguments for dependent claims 2‒4, 6‒11, 18, and 19.
Accordingly, we select claim 1 for review with claims 2‒4, 6‒11, and 18‒20
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner primarily relies on Ouellet for disclosing the limitations
of claim 1 but acknowledges that “[n]ot disclosed are indentations in the
sidewall and second end.” Ans. 4. The Examiner relies on Weder, and
particularly Figures 23‒25 and 49 thereof, for disclosing the missing
limitations. Ans. 5. Weder Paragraph 9 (see Ans. 5) discusses a need for a
flower pot “that can be shipped and stored in a substantially flattened
condition” and based on this disclosure, the Examiner concludes that it
would have been obvious “to have modified the pot of Ouellet et al with the
indentations as taught by Weder in order to collapse the pot in order to make
more room for shipping.” Ans. 6.
Appellants initially contend that Weder does not disclose sidewall
indentations that extend “no more than one half of the distance” from the
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closed second end to the open first end of the pot as claimed. App. Br. 9, 10;
Reply Br. 6. The Examiner acknowledges that “[t]he exact distance is not
specifically disclosed by Weder” but that “it would have been an obvious
matter of design choice to make” Weder’s indentations extend as claimed.
Ans. 6, 9. The Examiner reasons that Figure 491 of Weder discloses an
integral upper portion (464) that is “free of condition modifying elements
such as score lines” and that therefore, “Weder teaches that the indentations
extend from the second end of the sidewall towards the first end of the
sidewall but not all the way to the first end.” Ans. 9. Because Weder Figure
49 discloses an indentation that terminates part-way between the second
(closed) and first (open) ends of the pot, the Examiner concludes that the
actual extent of the indentation is a matter of “design choice.” Ans. 6, 9.
This is because (a) Appellants “ha[ve] not disclosed that the indentations
extending no more than half way solves any stated problem or is for any
particular purpose;” and (b) “it appears that the invention would perform
equally well with the indentations of Weder that do not extend all the way
from the second end to the first end.” Ans. 9.
Appellants contend that “Weder does not provide any motivation,”
and that it would not be obvious to make Weder’s score lines extend “no
more than one half of the distance” to the open end as claimed because “by
doing so, it would be difficult for the container 460 to collapse in the same
manner as the container 200.” App. Br. 10; Reply Br. 7. These assertions
are not persuasive in view of Weder’s contrary disclosure in Paragraph 159

1 The Examiner identifies Weder Paragraph 159 which states that the
container depicted in Figure 49 “is similar in construction to and collapses in
the same manner as the container 200 described in detail with reference to
FIGS. 23-25.” Ans. 5, 9.
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(see Ans. 5, 9) that “container 460 is similar in construction to and collapses
in the same manner as the container 200” (emphasis added). We
additionally note the similarity between the collapsing of Weder’s pot as
depicted in Figure 25 and the collapsing of Appellants’ pot as depicted in
Figures 6 and 7. Both pots are compressed inwardly and fold at existing
indentations. Other than the extent of the indentations, Appellants do not
persuasively explain how their pot folds or operates differently from
Weder’s pot. Based on the record presented, Appellants’ contentions are not
persuasive of Examiner error in relying upon a rationale of “design choice”
(Ans. 6, 9) for concluding that the extent of the indentations is obvious.
Appellants also contend that Weder fails to disclose indentations that
“are concave” wherein “each include[s] a groove to direct folding towards
an interior of the fiber pot, as required by claim 1.” App. Br. 9; see also
App. Br. 10 and Reply Br. 4, 5. Regarding the “concave” limitation,
Appellants acknowledge Weder’s disclosure of indentations being either
“pleats, folds, perforations, creases, . . . a V-shaped or U-shaped member,”
or the like. App. Br. 10 referencing Weder ¶ 74; see also Ans. 5, 6, 8, 9.
However, Appellants contend that Weder discloses such structure “without
considering the restriction of folding direction.” App. Br. 10; see also Reply
Br. 5. More specifically, Appellants address Weder’s indentation 208
explaining that part of this indentation is used to fold “the side wall
outwardly” while another part is used to “direct[] the folding inwardly.”
App. Br. 10 –11. Hence, according to Appellants, Weder’s indentations
provide “no restriction about the direction of folding.” App. Br. 11, see also
App. Br. 10.
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The Examiner responds that “the claim is an apparatus claim, not a
method claim, and therefore only requires that the structure be capable of
folding inwardly.” Ans. 10. In view of Weder’s disclosure in Paragraph 74,
the Examiner finds that Weder teaches similarly shaped indentations that are
“capable of folding inwardly.” Ans. 10; see also Ans. 5, 6, 8, 9. The
Examiner also references Weder Figure 25 that illustrates bottom and side
portions of Weder’s pot being folded inwardly along bottom and side
indentations.2 Ans. 10. Appellants do not persuasively indicate how Weder
fails to disclose structure corresponding to a “concave” groove as claimed.
See also Reply Br. 5. Additionally, Appellants’ acknowledge that, with
respect to Weder Figure 25, “the portion between the score lines 208, 210
and 214 can be folded inwardly” (note that this identified portion
incorporates a part of sidewall 206). Reply Br. 5. Accordingly, Appellants
do not persuasively indicate how Weder fails to disclose inwardly folding of
both the bottom as well as sidewall portions along their respective grooves
as claimed. In short, Appellants fail to indicate how Weder’s folding as
depicted in Figure 25 differs from Appellants’ folding as depicted in Figures
6, 7. Accordingly, Appellants’ contentions are not persuasive of Examiner
error.
Appellants also contend that one advantage of their device over
Weder “is that the arrangement of indentations in claim 1 eliminates the
necessity of the two score lines 210 of Weder with retention of the ability to

2 Weder Figure 25 illustrates bottom 212 folding inwardly along line 214.
This Figure (along with Figures 23 and 24) also illustrates lines 208 and 210
on sidewall 206. Upon folding along lines 208, 210, and 214, a part of
sidewall 206 between line 210 and bottom 212 is also folded inwardly. See
Weder ¶¶ 111‒114 and Figs. 23‒25.
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fully fold the fiber pot.” App. Br. 11; see also Reply Br. 5. In other words,
Appellants contend that the invention recited in claim 1 “allow[s] for the
folding of the fiber pot in a predetermined manner, resulting in the fully
compressed fiber pot” and “without the cooperation of adjacent score lines.”
App. Br. 11; Reply Br. 5, 6. However, as stated supra, Appellants do not
indicate how Weder’s pot fails to be capable of being folded in a
predetermined manner along the indentations and further, the use of an
additional fold line (210) in Weder is not precluded by Appellants’ claim
language (see Appellants’ employment of the open-ended transition
“comprising”).
In summary, we sustain the Examiner’s rejection of claims 1‒4, 6‒11,
and 18‒20 as being obvious over Ouellet and Weder.

DECISION
The Examiner’s rejections of claims 1‒4, 6‒11, and 18‒20 are
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)(1)(iv).

AFFIRMED

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