Ex Parte Hirafuji et al

Board of Patent Appeals and Interferences

Oct 7, 2009

10423674 (B.P.A.I. Oct. 7, 2009)

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.
10/423,674 04/24/2003 Masayuki Hirafuji KIYO-39 9491
7590 10/08/2009
Curtis L. Harrington & Associates
Suite 250
6300 State University Drive
Long Beach, CA 90815
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
10/08/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MASAYUKI HIRAFUJI, TOKIHIRO FUKATSU,
KEI TANAKA, and KEIKO IBARAKI
__________

Appeal 2008-004482
Application 10/423,674
Technology Center 3600
__________

Decided: October 7, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a planter
for use in a low-gravity environment. The Examiner has rejected the claims
as being obvious and including new matter. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

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Application 10/423,674

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STATEMENT OF THE CASE
The Specification discloses a “micro gravity environmental control
apparatus . . . , such as a plant cultivating apparatus” (Spec. 1). The
apparatus comprises
a chamber 2 provided with an air supply hole 21, and an air
suction pipe 3 arranged in the vicinity of a lower end portion
within the chamber 2. By employing the structure mentioned
above, it is possible to control without making materials housed
within the chamber 2 flown in all directions under a micro
gravity environment such as in a space ship.
(Id. at 8.)
Claims 47-54 are pending and on appeal. Claim 47 is the only
independent claim and reads as follows:
47. A plant cultivating apparatus used under micro gravity
environment comprising:
a chamber for housing soil consisting of grains and cultivating a plant;
an air suction pipe arranged in the vicinity of a lower end portion
within the chamber;
air sucking means communicated and connected with the air suction
pipe and used for sucking the air in said soil within the chamber out of the
chamber to prevent said grains of said soil from flying away in said
chamber;
a liquid supplying pipe arranged above the air suction pipe and at a
position wholly buried into the soil and used for dispersing liquid into the
soil;
liquid supplying means communicated and connected with the liquid
supplying pipe and used for supplying liquid into the liquid supplying pipe;
wherein size of said grains becomes larger from a surface layer of said
soil toward a lower layer so that an air gap gets gradually larger from a
surface layer toward a lower layer.

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NEW MATTER
Issue
The Examiner has rejected claims 47-54 under 35 U.S.C. § 112, first
paragraph, on the basis that “‘soil consisting of grains’ is not supported in
the specification because at page 13, lines 17-23, of the specification the
‘soil’ appears to contain ‘grains’ and ‘fibrous material such as moss, rock
wool or the like’” (Ans. 4).
Appellants contend that “[s]imply because soil can contain a number
of elements is no reason to suggest that a claim is not supported because it
includes, or has only ‘grains’. . . . The moss and rock wool are additional
elements which may either be found in or on particulate arranged as a soil.”
(Appeal Br. 18-19.)
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in finding that the Specification lacks an adequate
description of “soil consisting of grains,” as recited in claim 47?
Findings of Fact
1. The Specification states that the
soil is housed so as to form such a layer that an air gap becomes
gradually larger from a surface layer toward a lower layer, such
as an order of the soil of fine grains, the soil of middle level of
grains, fibrous materials such as moss, rock wool or the like,
and stones from the surface layer, whereby it is possible to
prevent the air suction pipe 3 from being clogged.
(Spec. 13.)
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Application 10/423,674

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Principles of Law
“In order to satisfy the written description requirement, the disclosure
as originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. See id.
Analysis
The Specification describes the disclosed device as including soil
arranged so that the “air gap becomes gradually larger” from the surface to
the bottom, to prevent the air suction pipe from getting clogged. The
Specification states that an example (“such as”) of an appropriate
arrangement would be layers, from the surface, of fine-grained soil, middle-
grained soil, fibrous material, and stones. The Specification does not,
however, state that the fibrous material is required to produce the desired
gradient in air gap size. The Examiner has not pointed to sufficient evidence
to support a finding that those skilled in the art would not recognize a
description of “soil consisting of grains” in the Specification’s disclosure.
Conclusion of Law
Appellants have shown that the Examiner erred in finding that the
Specification lacks an adequate description of “soil consisting of grains,” as
recited in claim 47.
Appeal 2008-004482
Application 10/423,674

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OBVIOUSNESS
Issue
The Examiner has rejected claims 47-54 under 35 U.S.C. § 103(a) as
obvious in view of Riechmann,1 Bracey,2 and Blok3 (Ans. 4). The Examiner
finds that Riechmann discloses a plant cultivation apparatus comprising “an
air suction pipe . . . (3c of Fig. 1 in that the top portion of 3c is in the
chamber); air sucking means (1 of Fig. 1) . . . ; a liquid supplying pipe (3b of
Fig. 1) arranged above the air suction pipe and at least at a position buried
into the soil (see Fig. 1) . . . ; [and] liquid supplying means (3a of Fig. 1)”
(Ans. 5).
The Examiner finds that Bracey discloses soil consisting of grains and
Blok discloses a liquid supplying pipe wholly buried in the soil (id.). The
Examiner concludes that it would have been obvious “to modify the
apparatus of Riechmann by having the soil consist[ ] of grains and layered as
disclosed by Bracey so as to modulate the amount of water the soil will hold
and . . . to have the liquid pipe wholly buried into the soil so as to more
thoroughly water the soil” (id.).
Appellants contend that “the apparatuses of Riechmann and Blok
comprise WATER CIRCULATION SYSTEM, and do not comprise any air
circulation system. Bracey’s apparatus does not comprise any circulation
system.” (Appeal Br. 24.) Appellants contend that “[i]f the references are
combinable, which applicant seriously questions, such a combination would

1 Riechmann, U.S. Patent 4,754,571, issued July 5, 1988.
2 Bracey, U.S. Patent 3,067,543, issued Dec. 11, 1962.
3 Blok, EP 0300536, published Jan. 25, 1989.
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be merely a combination of gravity operating systems with one phase liquid
pumping. The combination of the three references (if permissible) will lack
. . . Gaseous flow.” (Id. at 28.)
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in concluding that the references teach or suggest
the air suction and liquid supplying elements required by claim 47?
Additional Findings of Fact
2. Riechmann discloses a terrarium/aquarium combination
(Riechmann, col. 1, ll. 5-6).
3. Riechmann’s Figure 1 is reproduced below:

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The figure shows a schematic diagram of Riechmann’s combination
terrarium/aquarium (id. at col. 1, ll. 65-66).
4. Reichmann describes the functioning of the terrarium/aquarium as
follows:
Water is pumped via a pump 1, through a filter 2 . . . and
through a suitable conduit such as plastic tubing 3a to a heater
10, and then by another conduit 3b to the top of the
terrarium. . . . [T]he water trickles down and empties into
aquarium 24. . . .
. . . A filter plate 4a is provided beneath the terrarium substrate
7, and the space beneath it defines a reservoir 9. Another filter
plate 4b is provided in the aquarium section 24, defining an
undergravel filter 9a. . . . Conduits 3c and 3d . . . join to form
another conduit 3e which leads to pump motor 1, thereby
completing the water circulation.
(Id. at col. 2, ll. 16-49.)
Principles of Law
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. [I]t can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
“The test of obviousness vel non is statutory. It requires that one
compare the claim’s ‘subject matter as a whole’ with the prior art ‘to which
said subject matter pertains.’” In re Ochiai, 71 F.3d 1565, 1569 (Fed. Cir.
1995) (quoting 35 U.S.C. § 103). Section 103 requires “a searching
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comparison of the claimed invention – including all its limitations – with the
teaching of the prior art.” Id. at 1572.
Analysis
Riechmann discloses a combination terrarium/aquarium that includes
a water circulation system that collects water from the bottom of the
aquarium and terrarium sections, filters and heats the water, and returns the
water to the top of the terrarium. The Examiner finds that this system meets
the air suction and liquid supplying elements of the claims because “the
system of Riechmann, Bracey, and Blok can be used with air because both
air and water/liquids are fluids which would act the same in this system. In
the alternative, there would be air in the fluid/liquid/water of the system of
Riechmann, Bracey, and Blok when used in a gravity environment” (Ans. 8).
We do not agree with the Examiner’s reasoning. Claim 47 requires
“an air suction pipe” with an “air sucking means” connected to it, and “a
liquid supplying pipe” with a “liquid supplying means” connected to it. That
is, the claimed apparatus requires a system for sucking air out of the
chamber and a system of supplying liquid to the chamber.
Riechmann, however, has only a single fluid circulating system, so
whatever fluid is sucked out of the bottom of the chamber in Riechmann’s
apparatus is supplied at the top of the terrarium. The Examiner asserts that
Riechmann’s system could circulate air as well as water, but even assuming
that is the case, the system would still circulate only air; it would lack the
liquid supplying system required by the claims.
The Examiner’s alternative rationale is that Riechmann’s water-
circulating system would contain air (and therefore presumably would suck
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out and supply both air and water). The Examiner, however, has pointed to
no evidence in the record to support his position that Riechmann’s water-
circulation system would inherently contain air. In any event, the claims
require an “air sucking means” and a “liquid supplying means” as separate
elements, and Riechmann’s circulation system includes only a single water
pump.
Conclusion of Law
Appellants have shown that the Examiner erred in concluding that the
references teach or suggest the air suction and liquid supplying elements
required by claim 47.
SUMMARY
We reverse the rejection of claims 47-54 under 35 U.S.C. § 112, first
paragraph, and the rejection of claims 47-54 under 35 U.S.C. § 103.

REVERSED

lp
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