Ex Parte RiceDownload PDFPatent Trial and Appeal BoardAug 23, 201311586367 (P.T.A.B. Aug. 23, 2013) 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. 11/586,367 10/25/2006 Frank Rice 288903-00267-1 8975 7590 08/23/2013 David C. Jenkins Eckert Seamans Cherin & Mellott, LLC 44th Floor 600 Grant Street Pittsburgh, PA 15219 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 08/23/2013 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 FRANK RICE ____________ Appeal 2011-002822 Application 11/586,367 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and GEORGE R. HOSKINS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002822 Application 11/586,367 2 STATEMENT OF THE CASE Frank Rice (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claim 1 as unpatentable over Rinkovsky (US 4,702,390, issued Oct. 27, 1987) and Bennick (US 4,016,676, issued Apr. 12, 1977) and claim 2 as unpatentable over Rinkovsky, Bennick, and Holt (US 4,047,329, issued Sep. 13, 1977). Claims 3-20 have been withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellant’s invention relates to “a three-layered planter having an outer layer of polyurethane, a central fiberglass layer, and an inner resin layer.” Spec. 1, ll. 12-14 and fig. 1A. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A planter comprising: a body having a base and a depending sidewall, said body having at least three layers, an outer layer, a central layer, and an inner layer; said outer layer being polyurethane foam; said central layer being fiberglass, said fiberglass bonded to said polyurethane foam; and said inner layer being polyester resin, said polyester resin applied to, and cured upon, said fiberglass. SUMMARY OF DECISION We REVERSE. Appeal 2011-002822 Application 11/586,367 3 ANALYSIS The Examiner found that although Rinkovsky fails to disclose that the outer layer is polyurethane foam, as called for by claim 1, nonetheless, Bennick discloses “a multilayered planter using polyurethane foam [20] as a layer.” Ans. 4 (citing to Bennick, col. 4, ll. 17-56). The Examiner concluded that, “it would have been obvious to one of ordinary skill in the art to take the device of Rinkovsky and add the polyurethane foam layer of Bennick, so as to allow for the device to be made more durable.” Id. According to the Examiner, the device of Rinkovsky and Bennick is “more durable in that the inner layers would be protected from the elements by the outer polyurethane layer and the outer polyurethane layer itself would be more protected from the elements in that it would not be susceptible to rust such as a metal outer layer.” Ans. 6. As an additional reason to modify the plant holder of Rinkovsky with the teachings of Bennick, the Examiner looks “in the Bennick reference itself as where the polyurethane layer is used for aesthetic reasons to give the planter the appearance of a piece of earth.” Id. Appellant argues that, because Rinkovsky specifically discloses that the outer metallic layer can be brass or chrome or that the metal can plated, painted, or covered with enamel, the Examiner has failed to provide an adequate reasoning with rational underpinning to modify the plant holder of Rinkovsky with the teachings of Bennick. Reply Br. 4-5; see also Rinkovsky, col. 2, ll. 15-20. At the outset, we agree with Appellant that, “[b]rass, chrome, or protected steel are not prone to rust.” Reply Br. 4. As such, the reason proffered by the Examiner to modify the teachings of Rinkovsky, i.e., to Appeal 2011-002822 Application 11/586,367 4 provide for the plant holder to be more durable to rust, appears to be already adequately performed by the outer layer of Rinkovsky. Furthermore, we note that the Examiner has not provided any findings that Rinkovsky recognized a problem with rust. With respect to the Examiner’s additional reasoning to support the combination of Rinkovsky and Bennick, namely, for aesthetic reasons, we note that it is not the polyurethane foam layer of Bennick that provides the aesthetics of a piece of earth, as the Examiner proposes, but rather a thin layer of earthen material 10 that bonds to polyurethane foam filler material 20. See Bennick, col. 3, ll. 14-27 and fig. 4. Moreover, even assuming arguendo that sufficient reason were to exist to combine the teachings of Rinkovsky and Bennick in the manner proposed by the Examiner, the result would not be the structure required by independent claim 1, because the outer layer of the resulting plant holder would be an earthen layer rather than a polyurethane foam layer. In conclusion, since the Examiner does not provide any support for the allegation that the inclusion of an outer polyurethane foam layer to the planter of Rinkovsky would serve to provide for improved rust resistance and aesthetic appearance, the Examiner’s articulated reason for combination is not supported by a preponderance of the evidence of the record before us. We thus agree with Appellant that, “the Examiner’s reasons supporting the combination, durability and to provide natural appearance, are incorrect.” Reply Br. 4. Without a persuasive articulated reasoning based on rational underpinnings for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds Appeal 2011-002822 Application 11/586,367 5 [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Hence, for the foregoing reasons, we do not sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Rinkovsky and Bennick. Lastly, we note that that the addition of Holt’s teachings does not remedy the deficiencies of the Examiner’s proposed combination of Rinkovsky and Bennick. Therefore, for the same reasons as presented supra, we likewise do not sustain the rejection of claim 2 over the combined teachings of Rinkovsky, Bennick, and Holt. SUMMARY The Examiner’s decision to reject claims 1 and 2 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation