Ex Parte CastleberryDownload PDFPatent Trial and Appeal BoardMar 6, 201310670531 (P.T.A.B. Mar. 6, 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. 10/670,531 09/26/2003 Wayne Castleberry X-9425 6510 7590 03/06/2013 John S. Hale GIPPLE & HALE 6665-A Old Dominion Drive McLean, VA 22101 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 03/06/2013 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 WAYNE CASTLEBERRY ________________ Appeal 2010-000309 Application 10/670,531 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, REMY J. VANOPHEM and RICHARD E. RICE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000309 Application 10/670,531 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-23, 25 and 26. Br. 2. Claim 24 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to the use of urethane foams in grower applications.” Spec. 1.1 Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A horticultural growing medium comprising: a flexible diphenylmethane diisocyanate foam material without filler material having a cation exchange capacity ranging from about 1.0 to about 1.5, said horticultural growing medium being capable of supporting plant growth. REFERENCES RELIED ON BY THE EXAMINER Pruitt US 3,373,009 Mar 12, 1968 Heller US 4,469,502 Sep. 4, 1984 THE REJECTION ON APPEAL Claims 1-23, 25 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pruitt and Heller. Ans. 3. ANALYSIS Appellant argues all the claims together and interweaves arguments directed to some claim limitations into arguments made with respect to other 1Appellant’s Specification does not provide line or paragraph numbering. Accordingly, reference will only be made to the page number. Appeal 2010-000309 Application 10/670,531 3 claim limitations. Accordingly, we will address as best we can the various arguments made by Appellant. The Examiner relies on Pruitt for teaching the limitations of all the claims with the exception that the Examiner relies on Heller for teaching “diphenylmethane diisocyanate material as the preferred foam material.” Ans. 3 referencing Heller 6:42-68. The Examiner specifically relies on the primary reference to Pruitt for teaching “a flexible diisocyanate foam material without filler material” such that Pruitt’s “growing medium [is] capable of supporting plant growth.” Ans. 3 referencing Pruitt 8:23-27. The Examiner finds that it would have been obvious “to select diphenylmethane diisocyanate as taught by Heller et al. as the preferred diisocyanate foam material in Pruitt et al.’s growing medium, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for [its] intended use” and “as a matter of obvious choice.” Ans. 3-4. Appellant initially contends that “[o]ne distinction between the foam growth medium of the instant invention and the prior art is its ability to support plant growth without use of adjuvants or fillers.” Br. 8. We wish to note that there is a clear distinction between the claim terms “growing medium” and “foam material.” Each claim on appeal recites a growing medium “comprising” (i.e. including but not limited to) a foam material; and each claim further recites that it is the growing medium, not the foam material, that is “capable of supporting plant growth.” Further, with the exception of claim 26, it is the foam material that is recited as being without filler, not the growing medium that is without filler (claim 26 is silent regarding either substance being without filler). See also Ans. 11, 13. This Appeal 2010-000309 Application 10/670,531 4 is consistent with Appellant’s Specification which discusses growing plants “when fertilizer is added to water and poured into the foam material.” Spec. 8. Appellant further asserts that “it was an unexpected and unpredictable result that diphenylmethane diisocyanate foam by itself would produce a viable unfilled growth media” (italics added). Br. 11. However, none of the claims on appeal are directed to this foam material “by itself” providing a growth media (i.e., all independent claims recite a growing medium “comprising” the foam material), nor do any of the claims require the growth media to be “unfilled” as asserted. Appellant’s assertions are not commensurate in scope to that which is claimed and as such are not persuasive. Appellant also contends that “[t]he instant invention does not contain filler materials and is sterile.” Br. 9. Addressing the matter of “filler materials” first (a discussion of “sterile” will follow); Appellant’s Specification states that what is needed is “a foam which does not incorporate filler materials such as peat, ground scrap foam, or other filler materials.” Spec. 3. One might also benefit from Appellant’s discussion of U.S. Patent No. 6,479,433 and Appellant’s statement therein as to what “filler materials may be.2” Spec. 3. Further, Appellant contends in the Appeal Brief that “[p]reviously known growth media utilizing foam also require fillers, as for example soil, perlite, vermiculite, limestone, and the like.” Br. 9. Even presuming a broad interpretation of the claim term “filler 2 “The filler materials may be earth, sand, pear moss, saw dust, manure, compost limestone, coir, ground foam, gypsum, peat, ground scrap foam, or other materials and is not formed from a prepolymer slurry containing water and aggregate material.” Spec. 3. A discussion of “prepolymer slurry containing water and aggregate material” precedes this discussion of “filler materials” in Appellant’s Specification. Appeal 2010-000309 Application 10/670,531 5 material,” the Examiner nevertheless correctly indicates “that only the foam material is without fillers” and that “Pruitt’s foam material, itself, does not have any fillers; it is the whole growing medium that has additives and not within the foam itself.” Ans. 11. This is consistent with the Examiner’s prior reference to Pruitt 8:23-27 where Pruitt’s diisocyanate foam material is discussed and the Examiner notes “that there is no filler listed” therein. Ans. 3. Appellant does not repudiate the Examiner’s findings on this point nor does Appellant identify which suitable diisocyanate listed by Pruitt and identified by the Examiner (see Ans. 3 and Pruitt 8:23-27, see also Pruitt 3:33-36) are, in fact, filler material. Instead, Appellant contends that “[t]he absence of any particular statement does not substantiate the truth of its opposite.” Br. 10. Appellant’s contention does not persuade us of error in the Examiner’s stated findings. Appellant further contends that Pruitt does indeed disclose filler material and specifically identifies such filler material in twelve of Pruitt’s thirteen Examples. Br. 9, see also Pruitt 12:31 to 17:60. However, the Examples identified by Appellant discuss the contents of Pruitt’s growing medium and not Pruitt’s foam material. More specifically, Pruitt identifies the “integral plant growth media of the present invention” and that the “following examples illustrate the invention.” Pruitt 12:5-30. Appellant’s contention is not persuasive. Appellant additionally contends that Pruitt “in fact requires filler material in order to be operative” and discusses Pruitt’s “‘nutrient charged foam matrix’” where a polyester resin and a nutrient mixture “are mixed together” and also where the foam permits root growth and also “’contact with the nutrients imbedded therein.’” App. Br. 10 referencing Pruitt Appeal 2010-000309 Application 10/670,531 6 3:43-46 and 8:35-42. Appellant again appears to focus on Pruitt’s growth media and not the contents of the foam itself. Appellant is also ignoring Pruitt’s express statement that “‘foam’ and ‘foamed polymer’ as herein employed refer to foam as is known in the plastics art. It is meant to refer to a foam structure which is stable, water-insoluble and not shortlived.” Pruitt 3:33-36. We are reminded once again that Appellant also teaches adding fertilizer and water (i.e., nutrients) to a foam material to obtain a growing medium. See. Spec. 8. Accordingly, Appellant’s contention is not persuasive. Turning now to Appellant’s previous assertion regarding the sterility of the claimed device (Br. 9, see also 12), Appellant’s Specification provides guidance that “[t]he term substantially sterile is used in a horticultural sense and not as a medical term meaning the mateiral [sic] is free from plant disease, microbes, fungus, insects, disease, algae and animal life.” Spec. 7. By the same token, Pruitt states that “[t]he plant matrixes prepared as above described are free from fungi, nematodes, insects and other plant infesting insects and require no fumigation or sterilization.” Pruitt 11:70-72, see also Ans. 14-15. We are thus not persuaded that these similar teachings in Pruitt fail to teach this claim limitation directed to the foam material being sterile. Appellant also presents arguments regarding the Examiner’s reliance on Heller by addressing Heller’s “‘mineral fertilizers embedded in polyurethanes.’” Br. 11, see also12. However, we agree with the Examiner’s statement that “Heller was relied on for [teaching] diphenylmethane diisocyanate foam material and nothing more.” Ans. 14, see also 3. As such, Appellant’s argument does not address the Examiner’s rejection. Appeal 2010-000309 Application 10/670,531 7 Appellant also addresses the limitation directed to a cation exchange capacity (C.E.C.) “ranging from about 1.0 to about 1.5.” Br. 11. However, the Examiner finds that Pruitt teaches a range that encompasses this claimed range in Table 1 and Appellant provides no indication that the claimed range achieves an unexpected result. Ans. 3, 14. Regarding any unexpected result, we are instructed that “[i]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . [do] not suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed.Cir.1984). Appellant further addresses the limitations directed to pore size and porosity contending that neither of the references discloses the claimed numerical values. The Examiner acknowledges that Pruitt is silent regarding “the specific amount or size of pore” but finds that through “routine testing,” it would have been obvious to arrive at these claimed values “depending on the plant’s root formation.” Ans. 15. In reply, Appellant contends that it is not obvious “how to obtain air water ratios without the use of fillers” and further that “when one puts additives in foam, pore size is exceptionally difficult to control.” Br. 13. We note Appellant’s focus on the addition of filler to the foam (an argument that has previously been addressed and found wanting) and not the Examiner’s rejection that the claimed values could be achieved via routine testing. Nor does Appellant provide persuasive evidence that an unexpected result is achieved by the claimed values. Appellant summarizes the contentions made by asserting that “[t]he present invention uses a unique foam with unexpected properties that support plant growth.” Br. 14. However, Appellant does not dispute that the particular chemical composition of the claimed foam is well known and taught by Heller (see Ans. 11) and Appellant further does not provide Appeal 2010-000309 Application 10/670,531 8 evidence that the Examiner’s selection of Heller’s particular foam material could not be used in Pruitt’s growing medium (see Ans. 3-4). We have considered Appellant’s arguments made in the Appeal Brief but do not find these arguments persuasive. Based on the record presented, we are not persuaded the Examiner erred in making the stated findings or in rejecting the claims over Pruitt and Heller and accordingly, we sustain the rejection of claims 1-23, 25 and 26. DECISION The rejection of claims 1-23, 25 and 26 is affirmed. AFFIRMED mp Copy with citationCopy as parenthetical citation