2020005198 (P.T.A.B. Mar. 26, 2021)

Skyscraper Farm LLC

Patent Trials and Appeals BoardMar 26, 2021

2020005198 (P.T.A.B. Mar. 26, 2021)

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. 15/378,927 12/14/2016 Lawrence Marek SKY-001/121321-5001 5791 23517 7590 03/26/2021 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20004 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 03/26/2021 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAWRENCE MAREK and NICKOLAS STARLING Appeal 2020-005198 Application 15/378,927 Technology Center 3600 Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as is SKYSCRAPER FARM LLC. Appeal Br. 2. Appeal 2020-005198 Application 15/378,927 2 CLAIMED SUBJECT MATTER The claims are directed to a vertical farm. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device comprising: a spiral building having greenhouse enclosures mounted thereon, wherein said greenhouse enclosures include a growing tray having an interior growing area and at least one slanted glass surface having a reflective surface, the at least one slanted glass surface disposed above the growing tray and orientated to be perpendicular to light rays of the sun when the sun is at an equinox position, and wherein the reflective surface of the at least one slanted glass surface is disposed on an interior surface of the at least one slanted glass surface towards the interior growing area, thus reflecting light admitted through the at least one slanted glass surface and directing the light to parts of the interior growing area. Appeal Br. 14. (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hassle US 2013/0104453 A1 May 2, 2013 Kitagawa US 2016/0192607 A1 July 7, 2016 Andrew Nusca, Should cities be self-sufficient? An argument for vertical urban farms, Zdnet.com (Jan. 24, 2011), WWW.zdnet.com/article/should- cities-be-self-sufficient-an-argument-for-vertical-urban-farms (hereinafter, “Nusca”) REJECTION Claims 1–5 are rejected under 35 U.S.C. § 103 as being unpatentable over Nusca, Hassle, and Kitagawa. Final Act. 2. Appeal 2020-005198 Application 15/378,927 3 OPINION The Examiner finds that Nusca discloses many of the elements recited in claim 1, but relies on Hassle to disclose a spiral building and on Kitagawa to disclose the use of a reflective material on an inner surface of a building to reflect light into the interior of the greenhouse. See Final Act. 2–4; Ans. 8. Appellant argues that the proposed combination of Nusca and Kitagawa would not result in a reflective surface arranged as recited in the last paragraph of claim 1, and that the Examiner resorted to impermissible hindsight in arriving at the proposed combination of teachings of these references. Appeal Br. 8–10. For the reasons below, we reverse, pro forma, the rejection of claim 1 as unpatentable over Nusca, Hassle, and Kitagawa and enter a NEW GROUND OF REJECTION of claims 1–5 as indefinite. See In re Steele, 305 F.2d 859, 862, (CCPA 1962) (holding that the Examiner and the Board were wrong in relying on what, at best, were speculative assumptions as to the meaning of the claims and in basing a rejection under 35 U.S.C. § 103 thereon). Claims 1–4 Surface Claim 1 recites “greenhouse enclosures [that] include a growing tray having an interior growing area and at least one slanted glass surface having a reflective surface.” Appeal Br. 14 (Claims App.). Claim 1 further recites, “the reflective surface of the at least one slanted glass surface is disposed on an interior surface of the at least one slanted glass surface.” Id. It is unclear what the word “surface” means in these limitations because one recited surface (the slanted glass surface) is required to have another surface (the reflective surface). In particular, it is unclear whether Appellant intends the Appeal 2020-005198 Application 15/378,927 4 word “surface” to mean “a sheet of glass” or merely a face of the glass component.2 The Specification provides no definition or helpful context regarding this inquiry and introduces the word “surface” as follows, “[t]he slanted surface of the glass 102 over the growing trays 104 will be oriented toward the perpendicular rays of the sun at the equinox.” Spec. 1 (emphasis added). Thus, in this sentence of the Specification, the word “surface” is used to mean an exposed face of a piece of glass. However, the Specification goes on to state, “[t]he angle of this surface 102 will vary depending on the position of the farm north or south of the equator,” and “[t]he glazing in selected portions of the exterior 112 will be reversed from its normal orientation and the reflective surfaces 108 will be on the inside, thus reflecting the light admitted through the glass 102 and directing it to parts of the interior growing area 110 that would normally not get natural light.” Id. (emphasis added). Thus, reference number 102 is used to describe both a surface and an entire glass component. For the reasons discussed above, we determine the scope of claim 1 is unclear. Reflecting Light Admitted Through the at Least One Slanted Glass Surface Additionally, claim 1 recites (i) “the reflective surface of the at least one slanted glass surface is disposed on an interior surface of the at least one slanted glass surface,” and (ii) “the reflective surface of the at least one slanted glass surface . . . reflect[s] light admitted through the at least one 2 The American Heritage online dictionary defines a surface as “[t]he outer or the topmost boundary of an object” or “[a] material layer constituting such a boundary.” https://www.ahdictionary.com/word/search.html?q=surface. Appeal 2020-005198 Application 15/378,927 5 slanted glass surface and direct[s] the light to parts of the interior growing area.” Appeal Br. 14 (Claims App.) (emphasis added). It is unclear how light admitted through a slanted glass surface can be reflected to the parts of the growing area by a reflective surface “of” the same slanted glass surface. In other words, the last paragraph of claim 1 appears to require either (a) light to pass through a first slanted glass surface and then be reflected by a reflective surface of a different (second) slanted glass surface, or (b) light admitted through the at least one glass surface to be refracted by a refractive material such that it is directed to parts of the growing area. Neither possible interpretation, however, is consistent with the actual language used in this limitation, which requires the same reflective surface to both admit and reflect the same light. Consequently, claim 1 and the claims depending therefrom are unclear for this additional reason. Accordingly, we enter a NEW GROUND OF REJECTION of claim 1 and claims 2–4 depending therefrom as indefinite. Claim 5 Independent claim 5 recites a plurality of slanted glass surfaces each disposed at least partially above one of the plurality of growing trays at an angle determined by the location of the spiral building relative to the Equator, the at least one slanted glass surface having a reflective surface disposed on an inside surface of the plurality of slanted glass surfaces, wherein the reflective surface is configured to reflect light within the interior growing area. Appeal Br. 14 (Claims App.) (emphases added). Appeal 2020-005198 Application 15/378,927 6 Surfaces Similar to claim 1, claim 5 requires a surface (slanted glass surface) to have another surface (a reflective surface). As is the case with claim 1, it is unclear in claim 5 whether the slanted glass surface is intended to refer to a glass component or just a face of a glass component. At Least One Additionally, claim 5 requires “the at least one slanted glass surface” (i.e., one or more surfaces) to have a reflective surface (one surface), which is disposed on an inside surface of the plurality of glass surfaces (multiple surfaces). Thus, claim 5 is internally inconsistent in the number of surfaces recited and in their relation to other surfaces. Accordingly, we determine that claim 5 is unclear for this additional reason. Therefore, we enter a NEW GROUND OF REJECTION of claim 5 as indefinite. CONCLUSION The Examiner’s decision to reject claims 1–5 is reversed, and we enter a new ground of rejection of claims 1–5 under 35 U.S.C. § 112(b) as indefinite. More specifically, Appeal 2020-005198 Application 15/378,927 7 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–5 103 Nusca, Should, An, Hassle, Kitagawa 1–5 1–5 112(b) Indefiniteness 1–5 Overall Outcome 1–5 1–5 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Appeal 2020-005198 Application 15/378,927 8 REVERSED; 37 C.F.R. § 41.50(b).