Ex Parte Hertlein

Patent Trial and Appeal Board

Jun 14, 2016

12500013 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/500,013
34442 7590
Patricia M, Costanzo
Pats Pending
P.O. BOX 368
FILING DATE
0710912009
06/16/2016
East Aurora, NY 14052
FIRST NAMED INVENTOR
Kay Lynn Hertlein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HertleinK_CIP 1 05 1515
EXAMINER
HA YES, KRISTEN C
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
law@patcostanzo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAY LYNN HERTLEIN
Appeal2014-004557
Application 12/500,013 1
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kay Lynn Hertlein (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1--4 and 11-15.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellant, the real party in interest is the inventor, Kay
Lynn Hertlein. Appeal Br. 3 (filed Sept. 10, 2013).
2 The sole rejection against claim 19, under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn by the Examiner. See
Ans. 3 (transmitted Dec. 16, 2013). Accordingly, we do not address claim
19.
Appeal2014-004557
Application 12/500,013
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention relates to "a plant supporting device having a
telescoping plant support pole." Spec. i-f 1.
Claims 1 and 19 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A plant support comprising:
a device that supports a plant, its stems and its root mass,
said device including:
a slidably telescoping pole consisting of two or
more concentric sections repeatedly extensible or compressible
by the sliding of its overlapping sections to heights of between
about 2 to 8 feet without removing the plant it is supporting,
said pole reasonably attached to a planar base
having a diameter that is repeatedly increasable and decreasable
m size.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1--4 and 11-15 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
II. The Examiner rejected claims 1-3 and 11-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Grunnah (US 7,377,073
B2, iss. May 27, 2008) and Boucher (US 6,702,239 B2, iss.
Mar. 9, 2004).
2
Appeal2014-004557
Application 12/500,013
ANALYSIS
Rejection I
The Examiner finds that the limitation "its overlapping section" in
claim 1 lacks antecedent basis. See Non-Final Act. 3 (transmitted May 8,
2013). Additionally, the Examiner finds that in view of the use of the term
"attachable" in claim 1, it is "unclear if the applicant is positively claiming
the base, as it is only previously functionally claimed." See id. 3
The Specification does not assign or suggest a particular definition to
the term "telescoping" and, therefore, it is appropriate to consult a general
dictionary definition of the word for guidance in determining the ordinary
and customary meaning of the claim term as viewed by a person of ordinary
skill in the art. See Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed.
Cir. 2010). An ordinary and customary meaning of the term "telescoping" is
"having parts that telescope," that is, having parts that "become forced
together lengthwise with one part entering another as the result of collision."
Merriam Webster's Collegiate Dictionary (1 Oth ed. 1997). Accordingly, as a
"telescoping pole" includes "overlapping sections" as part of its telescoping
nature, we agree with Appellant "that there is no antecedent problem." Br.
18. A person of ordinary skill in the art would readily understand that a
"telescoping pole" has "overlapping sections" in order to telescope.
Next, we note that independent claim 1 recites "said pole releasably
attachable to a planar base." See Br. 22 (emphasis added). As the term
3 Although the Examiner does not refer to claim 1 in the body of the
rejection, nonetheless, as the disputed term "attachable" appears in
independent claim 1, which is stated in the heading of the rejection, we view
the Examiner's omission as a mere typographical error.
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Appeal2014-004557
Application 12/500,013
"attachable" is an adjective, it serves as a modifier of the term "pole,"
thereby describing a quality of the "pole," namely, the capability of the
claimed telescoping pole to be attached to "a planar base having a diameter
that is repeatedly increasable and decreasable in size." Therefore, in a first
instance, we agree with the Examiner, that a skilled artisan would reasonably
understand the term "attachable" as merely reciting the capability of being
attached, as opposed to the term "attached" which describes the structure of
the pole itself. See Non-Final Act. 3.
However, claim 1 is also amenable to Appellant's interpretation where
the "plant support" of claim 1 includes both a "telescoping pole" and a
"planar base." See Br. 19. For example, we first note that claims 2--4 and
15, which depend from claim 1, further limit the "planar base." See id. at
22-23. Secondly, Appellant's Specification states that, "[t]he plant support
according to the principles of the present invention constitutes a plant
support pole that is securely, detachably attached to a pole-support base
part." Spec. i-f 8 (emphasis added). Furthermore, Appellant's Specification
states that, "[t]o use the growing plant support, the perimeter size-adjustable
base with the support pole detachably attached is placed in the bottom of an
otherwise empty flower pot." Spec. i-f 10 (emphasis added). Hence, a skilled
artisan would also reasonably understand independent claim 1 as positively
reciting a "planar base" as the second component of the claimed "plant
support."
As such, "if a claim is amenable to two or more plausible claim
constructions," as in this case, "the US PTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim ... indefinite." Ex parte Miyazaki, 89
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Appeal2014-004557
Application 12/500,013
USPQ2d 1207, 1211 (BP Al 2008) (precedential). Therefore, because
independent claim 1 is amenable to two plausible claim constructions, as
discussed supra, we sustain the rejection of claims 1--4 and 11-15 under 35
U.S.C. § 112, second paragraph, as being indefinite.
Rejection II
Having determined that claims 1--4 and 11-15 are indefinite, we do
not reach a decision on the merits of the rejection of these claims under 35
U.S.C. § 103(a), because to do so would require speculation as to the scope
of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding
that the Board erred in affirming a rejection of indefinite claims under 35
U.S.C. § 103(a), because the rejection was based on speculative assumptions
as to the meaning of the claims).
SUMMARY
The Examiner's decision to reject claims 1--4 and 11-15 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)(l )(iv).
AFFIRMED
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