TROPICANA PRODUCTS, INC.Download PDFPatent Trials and Appeals BoardOct 16, 20202020000393 (P.T.A.B. Oct. 16, 2020) Copy Citation 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. 13/724,689 12/21/2012 James H. Keithly CTROP.3745 6731 110933 7590 10/16/2020 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 10/16/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES H. KEITHLY ____________ Appeal 2020-000393 Application 13/724,689 Technology Center 3600 ____________ Before LINDA E. HORNER, STEFAN STAICOVICI, and FREDERICK C. LANEY, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1. Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Feb. 6, 2019, hereinafter “Final 1 This is Appellant’s second appeal before the Patent Trial and Appeal Board. In the first appeal (2017-011390, Decision mailed November 1, 2018) (hereafter “Decision,”), the rejection under 35 U.S.C. § 101 was affirmed, whereas the rejections under 35 U.S.C. § 103(a) were reversed. Pursuant to 37 C.F.R. § 41.50(b), we entered a new ground of rejection under 35 U.S.C. § 103(a). Decision, 11–13. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Tropicana Products, Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed June 20, 2019, hereinafter “Appeal Br.”). Appeal Br. 2. Appeal 2020-000393 Application 13/724,689 2 Act.”) rejecting claims 8–16, 25, 27, 29 and 31.3 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM IN PART. INVENTION Appellant’s invention relates “to containers and soil blends for growing plants.” Spec. para. 2. Claims 8 and 22 are independent. Claim 8 is illustrative of the claimed invention and reads as follows: 8. An assembly comprising: a container and a soil medium; wherein the container comprises: a sidewall defining an internal cavity having an outermost peripheral dimension, a top having an opening providing access to the cavity and a bottom, with a depth defined between the top and the bottom, the cavity configured to hold the soil medium and a plant growing in the soil medium, wherein the outermost peripheral dimension of the sidewall has a width of about 4.0 to 6.0 inches and the depth is about 12.0 inches to 14.0 inches; and a plurality of air pruning holes defined within the sidewall and extending through the sidewall, the air pruning holes being dispersed across the sidewall; wherein the soil medium comprises soil components and additives; wherein the soil components comprise: 32 to 48% peatmoss, 3 Claims 1–7, 17–21, 23, 24, 26, 28, 30, and 32 are canceled and claim 22 is withdrawn. Appeal Br. 2. Appeal 2020-000393 Application 13/724,689 3 24 to 36% Coconut coir, and 24 to 36% Cypress bark sawdust; wherein the additives comprise: 4.5 to 5.5 lb. dolomite limestone per finished yard, 4.5 to 5.5 lb. gypsum per finished yard, 3.6 to 4.4 lb. micronutrients per finished yard, 16.65 to 20.35 lb. humic acid per finished yard, and 9 to 11 lb. slow-release NPK supplement per finished yard; wherein the soil medium at least partially fills the cavity. REJECTIONS I. The Examiner rejects claims 8–16, 25, 27, 29 and 31 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.4 II. The Examiner rejects claims 16, 27, and 31 under 35 U.S.C. § 112, second paragraph, as being indefinite.5 III. The Examiner rejects claims 25 and 29 under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim from which they depend.6 4 The rejection is moot as to claims 17, 26, 28, 30, and 32 because these claims are canceled. See footnote 3. 5 The rejection is moot as to claims 28 and 32 because these claims are canceled. See footnote 3. 6 The rejection is moot as to claims 26 and 30 because these claims are canceled. See footnote 3. Appeal 2020-000393 Application 13/724,689 4 IV. The Examiner rejects claims 8–16, 25, 27, 29 and 31 under 35 U.S.C. § 103(a) as being unpatentable over Lawton,7 AAPA,8 Rubin,9 and Detweiler.10,11 ANALYSIS Rejection I The Examiner finds that the claimed values of the soil components and additives, as per independent claims 8 and 22, are not supported by Appellant’s original disclosure. Final Act. 3. Appellant argues that paragraphs 37 and 38 of the Specification describe an embodiment in which the nominal values of the soil components and additives vary by 20% from the soil components and additives of soil blend A. Appeal Br. 6. Appellant explains that as soil blend A includes 40% peatmoss, a 20% variation can be calculated as 0.2 multiplied by 0.4, which results in 0.08 or an 8% variation above or below the 40% value. Id. Thus, according to Appellant, the Specification supports the claimed peatmoss range of 32% to 48%. Id.; see also id. at 40 (Claims App.). Appellant further notes that in a similar manner the Specification supports all of the claimed ranges of the soil components and additives recited by claims 8 and 22. Id. at 7. 7 Lawton, WO 97/21339, published June 19, 1997. 8 Appellant’s Admitted Prior Art, Spec. para. 85. See also, Spec. paras. 64, 95; Decision, 11. 9 Rubin, US 2006/0074006 A1, published Apr. 6, 2006. 10 Detweiler et al., US 2009/0120339 A1, published May 14, 2009. 11 See footnote 4. Appeal 2020-000393 Application 13/724,689 5 In response, the Examiner takes note with Appellant’s use of the terms “approximately” and “nominal” in paragraphs 37 and 38, respectively. Examiner’s Answer (dated Oct. 3, 2019, hereinafter “Ans.”) 3–5. According to the Examiner, if the values of the soil components and additives are “approximately” as described in paragraph 37, then the claimed ranges are not supported by the Specification. Id. at 4–5. The Examiner explains that if the maximum value is selected for the claimed ranges of peatmoss, Coconut coir, and Cyprus bark sawdust, the resulting soil composition does not add up to 100%, but rather 120%. Id. at 5. The Examiner also takes note with the term “nominal” because it “is known mainly for monetary calculation,” and, thus, it is not clear how it applies to a “material percentage,” such as the claimed soil components and additives. Id. at 3–4. The Examiner further contends that the Specification does not adequately describe Appellant’s calculation noted above, and, thus, a skilled artisan would not know how to make such calculations. Id. at 4. For example, the Examiner points to the Specification’s use of the term “and/or” in the sentence “[a]dditionally, the soil blend A may include variations in the soil composition and/or the additive amounts of up to 5% of the nominal values in one embodiment, up to 10% in another embodiment, and up to 20% in a further embodiment.” Id. (citing Spec. para. 38) (italics added). The Examiner explains that it is not clear whether the described variation of 5%, 10% or 20% applies to the soil composition, the additives, or both. Id. “The test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 Appeal 2020-000393 Application 13/724,689 6 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). When an explicit limitation in a claim is not present in the written description it must be shown that a person of ordinary skill would have understood that the description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Here, we agree with Appellant that a person of ordinary skill in the art would know to make the calculations described above. Reply Brief (filed Oct. 23, 2019, hereinafter “Reply Br.”) 4. Calculating a percentage (i.e., 20%) of a quantity (i.e., 40% peatmoss) to yield a range for the quantity is a simple straightforward calculation and we are not inclined to fault Appellant for not explicitly reciting the formula for such calculation in the Specification. Furthermore, the Examiner’s position that the terms “nominal,” “and/or,” and “approximately” are not supported by Appellant’s original disclosure because their meaning is not clear is untenable because such arguments “appear[] to be a belated indefiniteness rejection,” and, thus, a skilled artisan would not need to evaluate the meaning of these terms under a “written description” rejection. Reply Br. 6.12 Nonetheless, we agree with Appellant that a person of ordinary skill in the art would understand that the terms “nominal,” “and/or,” and “approximately” are used according to their ordinary and customary meanings. Id. at 3–5. Accordingly, a person of ordinary skill in the art would readily understand that “the referenced ‘nominal values’ of paragraph [0038] are the numerical quantities listed in paragraph [0037], and that the actual values for the soil medium can vary by up to 20% from the nominal values.” Id. at 3 (citing https://www.merriam- 12 A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the Specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Appeal 2020-000393 Application 13/724,689 7 webster.com/dictionary/nominal (which defines “nominal” as “approximate”)); see id. at 5. Similarly, a skilled artisan would understand that the term “and/or” as used in paragraph 38 of Appellant’s Specification means “‘variations in the soil composition and the additive amount’ or ‘variations in the soil composition or the additive amounts’ of ‘up to 20%.’” Id. at 4. Lastly, we are not persuaded by the Examiner’s position that because the claimed soil composition may not add up to 100%, the claimed ranges are not supported by Appellant’s original disclosure. See Ans. 5. As discussed supra, paragraphs 37 and 38 of Appellant’s Specification and mere application of simple calculations provide adequate support for the claimed ranges. Moreover, a person of ordinary skill in the art would readily know to choose the percentages of the soil components, i.e., peatmoss, Coconut coir, and Cyprus bark sawdust, and the additives, such that they add up to 100%. An artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, the claimed ranges of the soil components, i.e., peatmoss, Coconut coir, and Cyprus bark sawdust, and of the additives, are mere ranges from which a skilled artisan, using judgment and skill, can select the appropriate percentages/quantity such that the total adds up to 100%. After all, “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR v. Teleflex, 550 U.S. 398, 421 (2007). In conclusion, for the foregoing reasons, we find that the disclosure reasonably conveys to an artisan that the inventor had possession of the claimed subject matter. We do not sustain the rejection under 35 U.S.C. § 112, first paragraph, of claims 8–16, 25, 27, 29 and 31 as failing to comply with the written description requirement. Appeal 2020-000393 Application 13/724,689 8 Rejection II The Examiner finds that it is not clear whether the “plant” is being positively recited because in independent claim 8, from which claims 16, 27, and 31 depend, the “plant” is functionally recited. Final Act. 4. “Applying the broadest reasonable interpretation of a claim, . . . the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam). In this case, independent claim 8 requires, inter alia, an “assembly” including a “container” having a “cavity configured to hold . . . a plant.” Appeal Br. 40 (Claims App.) (emphasis added). In light of the phrase “configured to,” we agree with Appellant that independent claim 8 does not positively recite a “plant” as part of the claimed “assembly.” Appeal Br. 12. See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)) (The phrase “configured to” is generally used to mean “made to” or “constructed to” perform the claimed function.). Claim 16 recites “[t]he assembly according to claim 8, wherein the assembly comprises the plant,” claim 27 recites “[t]he assembly of claim 8 . . . wherein the assembly comprises the orange rootstock seedling,” and claim 31 recites “[t]he assembly of claim 8 . . . wherein the assembly comprises the citrus plant.” See id. at 42, 43 (Claims App.) (emphasis added). Therefore, in light of the dependency of claims 16, 27, and 31 from independent claim 8 and use of the transitional term “comprises,” it is clear that claim 16 requires a “plant,” claim 27 requires an “orange rootstock seedling,” and claim 31 requires a “citrus plant.” See Ans. 7. Appeal 2020-000393 Application 13/724,689 9 Accordingly, for the foregoing reasons, we do not find the recitations in these dependent claims unclear, and do not sustain the rejection under 35 U.S.C. § 112, second paragraph, of claims 16, 27, and 31 as being indefinite. Rejection III The Examiner finds that the limitations “wherein the plant is an orange rootstock seedling,” as per claim 25, and “wherein the plant is a citrus plant,” as per claim 29, do not further limit the subject matter of independent claim 8, from which claims 25 and 29 depend, “because the plant was not positively claimed in claim[] 8.” Final Act. 5. According to the Examiner, “further defining something that is not claimed is not further limiting the parent claim.” Id. at 5–6. Claim 25 In addition to the limitation of “the plant is an orange rootstock seedling,” claim 25 further recites “wherein the container and the soil medium are configured for growing the orange rootstock seedling in the soil medium.” See Appeal Br. 42 (Claims App.). Thus, as independent claim 8, from which claim 25 depends, recites an “assembly” including a “container” having a “cavity configured to hold the soil medium and a plant growing in the soil medium,” Appellant is correct that “the assembly of claim 25 is further limited because the container and soil medium are configured for growing” a specific type of plant, namely, “an orange rootstock seedling.” Id. at 18 (emphasis added). In other words, the limitation “the container and the soil medium are configured for growing the orange rootstock seedling in the soil medium” of claim 25 further limits the limitation “the container . . . configured to hold the soil medium and a plant growing in the soil medium” Appeal 2020-000393 Application 13/724,689 10 of claim 8, from which claim 25 depends. Therefore, we do not sustain the rejection under 35 U.S.C. § 112, fourth paragraph, of claim 25 as being of improper dependent form for failing to further limit the subject matter of the claim from which they depend. Claim 29 Appellant argues that “the Examiner has failed to describe a proper legal basis for the rejection” because “the ‘configured to’ clause should be given limiting effect,” and, moreover, the Examiner’s rejection is illogical because “one ‘configured to’ clause can include limitations that are not included in another ‘configured to’ clause.” Appeal Br. 18–19. According to Appellant, “the assembly of claim 29 is further limited as the cavity is configured to hold a citrus plant.” Id. at 19. We are not persuaded by Appellant’s arguments because the language of claim 29 does not further limit the scope of claim 8 as these claims recite non-overlapping subject matter. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291 (Fed. Cir. 2006). (“In other words, claim 6 does not narrow the scope of claim 2; instead, the two claims deal with non-overlapping subject matter.”). More specifically, in contrast to claim 25, claim 29 does not include a limitation in which the container and soil medium are configured for growing a specific type of plant, namely, “a citrus plant.” See Appeal Br. 43 (Claims App.). Rather, claim 29 merely recites “wherein the plant is a citrus plant,” which does not further narrow claim 29 because parent claim 8 does not positively recite a “plant” as part of the claimed “assembly.” See Ans. 9. Therefore, as claim 29 recites certain subject matter that does not overlap with the subject matter of its parent claim 8, claim 29 fails to satisfy Appeal 2020-000393 Application 13/724,689 11 35 U.S.C. § 112, fourth paragraph. See Pfizer, 457 F.3d at 1291. As such, we sustain the rejection under 35 U.S.C. § 112, fourth paragraph, of claim 29 as being of improper dependent form for failing to further limit the subject matter of the claim from which they depend. Rejection IV The Examiner finds that the combined teachings of Lawton, AAPA, Rubin, and Detweiler disclose most of the limitations of independent claims 8 and 22, but do not disclose the claimed ranges of the soil components and additives of the soil medium. Final Act. 6–9 (citing Lawton, Fig. 1; AAPA, Spec. para. 85; Decision, 12; Rubin, paras. 32, 33; Detweiler, paras. 144, 148, 153). Nonetheless, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to have reached the claimed ranges of the soil components and additives of the soil medium by routine experimentation as these values are not critical or present unexpected results. Id. at 9–10 (citing In re Aller, 220 F.2d 454 (CCPA 1955)). According to the Examiner, Appellant has not set forth evidence of unexpected results, and, moreover, because the claimed ranges are not supported by Appellant’s original disclosure, “the result effective variable rationale would be obvious.” Ans. 10. Appellant argues that the Examiner has “failed to explain how the cited references demonstrate that the claimed component percentages and additive amounts are result-effective variables such that it would be obvious to arrive at the claimed component percentages and additive amounts by optimization or routine experimentation.” Appeal Br. 34. According to Appellant, “whether the values or ranges are critical or unexpected results is Appeal 2020-000393 Application 13/724,689 12 legally irrelevant and cannot remedy the Examiner's failure to establish the claimed features are result-effective variables.” Id. We disagree with the Examiner’s statement that “appellant claimed numerous ranges for the soil components and additives but have no support in the original specification as stated in the above comments [and] [t]hus, based on this, the result-effective variables are not unexpected.” Ans. 20. Per our discussion supra in Rejection I, we find the claimed ranges of the soil components and additives of the soil medium, as recited in independent claims 8 and 22, are sufficiently supported by Appellant’s original disclosure. As such, the factual underpinning for the Examiner’s position lacks support and the Examiner has not shown otherwise that the claimed soil components and additives were known result-effective variables. We appreciate the Examiner’s position that it is not inventive to discover optimum or workable ranges by routine experimentation. See Final Act. 9–10. However, as discussed in our Decision, optimization is premised on the optimized variable being a “result-effective variable.” Decision, 12 (citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977)). Here, the Examiner has not sufficiently shown that the specific recited values of the soil components and additives of the claimed soil medium achieve a recognized result; and, thus, has not shown by a preponderance of the evidence that the claimed ranges are result effective. Furthermore, optimization in Aller is premised on the general conditions of a claim being disclosed in the prior art. See Aller, 220 F.2d at 456. The Federal Circuit has provided guidance on whether the “general conditions” of the claim are disclosed and states that “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage Appeal 2020-000393 Application 13/724,689 13 ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). In Peterson, the Federal Circuit concluded that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” Peterson, 315 F.3d at 1330. Similarly, the Federal Circuit found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Here, the Examiner has not established that the prior art relies on any particular amounts of Coconut coir, Cypress bark sawdust, dolomite limestone, gypsum, micronutrients, humic acid, and nitrogen- phosphorous-potassium (NHK) supplement. See Ans. 22–23 (citing Spec paras. 55, 64). For example, although AAPA describes a standard citrus nursery soil mixture containing 78% or 70% Canadian peatmoss, 12% or 20% composted pinebark, and 10% perlite, AAPA but does not include many of the other recited components. Spec. paras. 55, 65. Furthermore, even though we appreciate that Rubin discloses a soil medium including peatmoss, Coconut coir, and sawdust and one more additives, such as limestone, micronutrients, and fertilizer, whereas Detweiler discloses a plant growing medium containing dolomite limestone, gypsum, humic acid, and slow-release NPK supplement, we note the Examiner did not make any findings regarding the quantitative amounts (percentage) of each component. See Final Act. 8–9 (citing Rubin, paras. 32, 33; Detweiler, paras. 42, 144, 148, 153, 240, 241, 234). As such, the Examiner has not established that the general conditions of independent claims 8 and 22 are disclosed in the prior Appeal 2020-000393 Application 13/724,689 14 art. Therefore, Appellant is under no obligation to establish the criticality of the claimed ranges. Lastly, even though the claimed soil components and additives are known in the prior art, this does not mean that every soil medium composition is obvious to try, without evidence or reasoning tending to demonstrate the obviousness of the particularly claimed ranges. Therefore, the Examiner does not adequately explain why a person having ordinary skill in the art would have chosen the claimed ranges for the soil components and additives of the soil medium of Lawton, as modified by AAPA, Rubin, and Detweiler. In conclusion, for the foregoing reasons, we do not sustain the rejection under under 35 U.S.C. § 103(a) claims 8–16, 25, 27, 29 and 31 as unpatentable over Lawton, AAPA, Rubin, and Detweiler. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 8–16, 25, 27, 29, 31 112(a) Written Description 8–16, 25, 27, 29, 31 16, 27, 31 112(b) Indefiniteness 16, 27, 31 25, 29 112(d) Improper Dependent Form 29 25 8–16, 25, 27, 29, 31 103(a) Lawton, AAPA, Rubin, Detweiler 8–16, 25, 27, 29, 31 Overall Outcome 29 8–16, 25, 27, 31 Appeal 2020-000393 Application 13/724,689 15 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 IN PART Copy with citationCopy as parenthetical citation