Hiroshi Yano

Patent Trials and Appeals Board

Aug 15, 2019

14653390 - (D) (P.T.A.B. Aug. 15, 2019)

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.
14/653,390 06/18/2015 Hiroshi YANO P48082 6821
52123 7590 08/15/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
WANG, MICHAEL H
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/15/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROSHI YANO
____________

Appeal 2019-000019
Application 14/653,390
Technology Center 3600
_______________

Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–6 and 8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Panasonic Intellectual Property Management Co., Ltd. (“Appellant”), the
applicant as provided for under 37 C.F.R. § 1.46, is also identified as the real
party in interest. Appeal Br. 3.
2 Appeal is taken from the Non-Final Office Action dated Dec. 13, 2017.
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Application 14/653,390

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below as the sole independent claim on appeal, is
exemplary of the subject matter on appeal.
1. A hydroponics apparatus configured to grow a plant body
having a taproot and lateral roots, comprising:
a supporting portion configured to support the plant body;
a taproot feeding portion configured to feed the taproot by
spraying a liquid onto the taproot;
a lateral root feeding portion configured to feed the lateral roots
by soaking the lateral roots in the liquid; and
a controller configured to adjust at least one of a cycle and a
length of time of spray by the taproot feeding portion,
wherein the controller limits an amount of liquid sprayed onto
the taproot to an amount needed for the taproot.

THE REJECTIONS3
I. Claims 1–4 and 6–8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Julien (US 4,976,064; issued Dec. 11, 1990) and Ein-Gedi
(EP 0 052 264 A1; published May 26, 1982).
II. Claims 5 and 6 stand rejected under U.S.C. § 103(a) as
unpatentable over Julien, Ein-Gedi, and Azoulay (US 8,516,742 B1; issued
Aug. 27, 2013).

ANALYSIS
Rejection I
Regarding claim 1, the Examiner finds that Julien discloses a
hydroponics apparatus comprising a supporting portion (i.e., plantholder 6),

3 The Examiner concludes claims 7 and 9 recite allowable subject matter.
Non-Final Act. 6.
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a taproot feeding portion (i.e., injection orifices 11), and a lateral root
feeding portion (i.e., “roots 7 are immersed in the nutrient solution 2”),
wherein each portion is configured as claimed. Non-Final Act. 2–3
(citations omitted). The Examiner determines that Julien’s tank 1 “can be
configured to grow a plant body having a taproot by putting the taproot
within plantholder 6.” Id. at 2. In other words, the Examiner determines
that because the claimed structure of Julien’s hydrophonic culture device is
the same structure as the claimed hydrophonic apparatus, and plant bodies
having a taproot and lateral roots are known, Julien’s hydrophonic culture
device would be capable of feeding the taproot by liquid sprayed by
injection orifices 11 and feeding the lateral roots by soaking in nutrient
solution 2, when a plant body having a taproot and lateral roots is placed in
Julien’s plantholder 6. See, e.g., Julien, Fig. 1; see Spec. ¶ 6 (defining a
taproot as “a main root” and lateral roots as “branch” or “secondary roots”).4
The Examiner determines that Julien does not disclose a controller
configured to adjust at least one of a cycle and a length of time of spray by
the taproot feeding portion, wherein the controller limits an amount of liquid
sprayed onto the taproot to an amount needed for the taproot, and the
Examiner relies on Ein-Gedi for teaching that: (i) “the rate of release of
make-up nutrient material into the solution may be controllable in
accordance with [a] specific requirement” (id. at 3 (citing Ein-Gedi 9:5–7));
and (ii) “[a]erating device 6 is electrically connected to control means 14

4 See Ans. 5–6 (finding that “Julien discloses a distinction between the parts
of the plant within plantholder 6 (via spray trajectories 12) and the parts of
the plant hanging below plantholder 6 (which is immersed in nutrient
solution 2”)).
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[and can be] switched on and off and the rate of their operation can be
controlled” (id. (citing Ein-Gedi 10:21–27)). See also Ans. 5 (finding that
“[a] controller that turns an aerating device on and off creates a cycle, and
the amount of time the aerating device is turned on comprises a length of
time of spray”). The Examiner reasons that it would have been obvious “to
modify Julien using the teachings from Ein-Gedi in order to better mimic a
natural feeding cycle for the plant and to avoid oversaturating the plant.”
Non-Final Act. 3.
As an initial matter, Appellant correctly argues that the claim
limitation requiring a controller to be configured to make adjustments to the
cycle and spray time by the taproot feeding portion, is “not simply intended
use.” Appeal Br. 9. In other words, the Examiner must make a finding,
which is supported by a preponderance of the evidence, that the prior art or
the knowledge of a person of ordinary skill in the art renders obvious a
controller configured to adjust at least one of a cycle of a length of time of
spray by the taproot feeding portion, as claimed.
Notwithstanding, we agree with the Examiner that the claim
limitations regarding the placement of a plant body with a taproot and lateral
roots within supporting and taproot feeding portions recite the use of the
apparatus. To this point, Appellant submits that “Julien merely discloses a
water supply device to supply water to a plant in which there is no
distinction concerning main roots [(i.e., a taproot)] and lateral roots.”
Appeal Br. 10. Although Appellant is correct in that Julien does not
distinguish between a taproot and lateral roots, Appellant’s argument does
not apprise us of error in the Examiner’s determination, as set forth supra,
that Julien’s tank 1 is capable of feeding a plant body having a taproot and
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lateral roots, as claimed, when a plant body is placed in Julien’s
plantholder 6, such that the plant body’s taproot could be held within
Julien’s plantholder 6 and the plant body’s lateral roots could extend into
nutrient solution 2 in the bottom of tank 1.5 Where all the structural
elements of a claim exist in a prior art product, and that prior art product is
capable of satisfying all functional or intended use limitations, the claimed
invention is nothing more than an unpatentable new use for an old product.
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Appellant further argues that “Ein-Gedi merely discloses the ‘aerating
means forming a uniform mist,’” which “settles into the solution” to provide
“fresh oxygen . . . in even distribution.” Appeal Br. 9 (citing Ein-Gedi 6:6–
9); see also Reply Br. 5. Appellant relies on the positioning of Ein-Gedi’s
plant, which is “almost entirely at an upper corner of the vessel and is mostly
concealed by the conical portion 18 of the holder 5,” as evidence that Ein-
Gedi’s controller is not configured to adjust at least one of a cycle and a
length of time of spray, as claimed. Id. (citing Ein-Gedi, Figs. 1, 3).
Appellant further submits that Ein-Gedi’s plant body is “not even provided
with a taproot.” Appeal Br. 10. Therefore, Appellant concludes that “there
is simply no proper reasoning for the purported controller of Ein-Gedi to
adjust at least one of a cycle and length of time of spray by the taproot
feeding portion, and the controller limiting an amount of liquid sprayed onto
the taproot to an amount needed for the taproot,” as required by claim 1. Id.
at 10.

5 See Ein-Gedi 3:15–17 (disclosing that “[i]nside the vessel[,] the solution is
kept shallow so that only a fraction of the roots dips into the solution”).
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Ein-Gedi discloses that “[a]erating device 6 is electrically connected
to control means 14 . . . by which the aerating device can be switched on and
off and the rate of their operation can be controlled.” Ein-Gedi 10:21–25;
see also 12:3–4 (“aerating device 6 may operate continuously or
intermittently as may be required”). Ein-Gedi recognizes that “control of the
operation of the aerating means may be of significance, for example in order
to be able to produce at the initial stage of rooting a denser mist than at
subsequent stages.” Id. at 9:13–16. Thus, Ein-Gedi discloses adjusting the
length of time of spray according to a desirable program for plant growth.
As discussed supra, the Examiner relies on Julien for disclosing a device
structured so as to be capable of spraying a taproot. See also Ans. 4 (“Ein-
Gedi is relied upon to provide a teaching for a controller that adjusts the
cycle and length of time of the spray,” and “the hydroponics apparatus of
Julien [is relied on for] be[ing] configur[able] to grow a plant body having a
tap root by placing the taproot within plantholder 6”). Thus, Appellant’s
argument does not apprise us of error in the Examiner’s reasoning that it
would have been obvious to adjust the length of spray time for a feeding
portion for spraying a taproot, such that a desired amount of liquid is
sprayed onto the taproot, for example, “to better mimic a natural feeding
cycle for the plant,” as set forth supra.
To the extent Appellant argues that Ein-Gedi does not disclose that
the controller limits an amount of liquid sprayed onto a taproot in an
amount needed for the taproot, the Examiner relies on Julien, the recitations
of intent to use in the claim, and that it is well known that plant bodies have
a taproot and lateral roots. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
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teachings of a combination of references. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, the Specification discloses that the controller limits such an
amount based on a setting made in advance (perhaps manually) and certainly
does not require the controller to determine such a setting automatically.
See, e.g., Spec. ¶ 43 (“controller 3 limits the amount of liquid 13a sprayed
onto the taproot 101 to the amount needed for the taproot 101” and “[f]or the
purpose of realizing this, the cycle and the length of time of spray by the
taproot feeding portion 13 are set in advance”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant does not present arguments for the dependent claims
apart from the arguments presented for independent claim 1 supra, and
therefore, for essentially the same reasons as presented supra, we also
sustain the Examiner’s rejections of the dependent claims 2–4 and 6–8.
Appeal Br. 11.
Rejection II
Appellant does not present arguments for dependent claim 5 apart
from the arguments presented for independent claim 1 supra, and therefore,
for essentially the same reasons as presented supra, we also sustain the
Examiner’s rejections of the dependent claim 5. Appeal Br. 11.
DECISION
The Examiner’s decision rejecting claims 1–6 and 8 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).
AFFIRMED