Ex Parte Jones et al

Patent Trials and Appeals Board

Feb 25, 2019

13160902 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/160,902 06/15/2011 Lee C. Jones
21917 7590 02/27/2019
MCHALE & SLAVIN, P.A.
2855 PGA BL VD
PALM BEACH GARDENS, FL 33410
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.
3686U.001 4286
EXAMINER
PHAM, THANH T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE C. JONES and DAVID CARSON1
Appeal2017-006052
Application 13/160,902
Technology Center 3600
Before STEVEN D.A. MCCARTHY, BENJAMIN D. M. WOOD, and
NATHAN A. ENGELS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party in interest is Jardin Holdings I, LLC.
App. Br. 3.
Appeal2017-006052
Application 13/160,902
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § I34(a) from a rejection of claims
1, 5-7, 9, 11-17, and 29-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a grow bag system with an integrated
irrigation tube. Sole independent claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A grow bag system comprising:
a grow bag, said grow bag sized and shaped to contain a
growth medium for plants, said grow bag having a top panel for
enclosing a top surface of said growth medium, said top panel
including a bottom surface, an irrigation tube secured to said
bottom surface and extending between said top panel and said
growth medium, said irrigation tube including a first end, a
second end and a middle portion, said first end of said irrigation
tube constructed and arranged for connection to a water supply,
said middle portion of said irrigation tube sized for transferring
water at a predetermined rate, said middle portion including at
least one aperture for transferring said water to said growth
medium at a second predetermined rate, said second end
constructed and arranged to include a plug member to prevent
said water from traversing through said second end;
whereby said grow bag is a self-contained unit suitable
for accepting a propagative portion of a plant within said
growth medium for growth of a portion of said plant within said
grow bag and a portion of said plant outside of said grow bag;
characterized in that the middle portion of the irrigation
tube is secured to the bottom surface of the top panel.
Prewer
Nalbandian et al.
Ticktin
REFERENCES
us 4,291,499
US 2002/0017055 Al
US 2004/0134438 Al
2
Sept. 29, 1981
Feb. 14,2002
July 15, 2004
Appeal2017-006052
Application 13/160,902
Stachnik
Ewerszumrode
Byles
Joaquin
Wilde
Kokai2
US 2005/0166451 Al
US 2007/0267414 Al
US 7,407,340 B2
US 2011/0094154 Al
GB 2 267 205 A
JP 2000-69854 A
REJECTIONS
Aug.4,2005
Nov. 22, 2007
Aug. 5,2008
Apr. 28, 2011
Dec. 1, 1993
July 3, 2000
Claims 5-7, 9, 11-14, and 30-32 are rejected under 35 U.S.C. § 112
(pre-AIA), second paragraph, 3 as indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as the
invention.
Claims 1 and 17 are rejected under pre-AIA 35 U.S.C. I02(e)4 as
anticipated by Joaquin.
Claim 1 is rejected under pre-AIA 35 U.S.C. I02(b) as anticipated by
Wilde.
Claims 15 and 16 are rejected under pre-AIA 35 U.S.C. I03(a) as
unpatentable over Wilde and Nalbandian.
2 Although the published application is owned by Kyodo Shiko KK, and the
first named inventor is Tokita Yoshiaki, we will follow Appellants and the
Examiner in referring to the reference as "Kokai."
3 Because the application at issue was filed before September 16, 2012, the
effective date of the amendments to 35 U.S.C. § 112 enacted by the Leahy-
Smith America Invents Act (AIA), we apply the pre-AIA version of this
section. See Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29,
§ 4(e), 125 Stat. 284,297 (2011).
4 Because the application at issue was filed before March 16, 2013, the
effective date of the AIA amendments to 35 U.S.C. §§ 102 and 103, we
apply the pre-AIA version of these sections. Pub. L. No. 112-29, § 3(n)(l),
125 Stat. at 293.
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Appeal2017-006052
Application 13/160,902
Claims 15 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Joaquin and Nalbandian.
Claims 1 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Prewer and Byles.
Claims 1, 5, 11-14, 29, and 30 are rejected under pre-AIA 35 U.S.C.
103 (a) as unpatentable over Kokai and Stachnik. 5
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable
over Kokai, Stachnik, and Ewerszumrode.
Claims 7 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Kokai, Stachnik, and Ticktin.
Claims 31 and 32 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Kokai, Stachnik, Ticktin, and Ewerszumrode.
ANALYSIS
Claims 5-7, 11-14, and 30-32-Jndefiniteness
Claim 30 depends from claim 29. Claim 29 depends from claim 1 and
additionally recites "wherein said irrigation tube is formed from a portion of
said top panel." Claim 30 additionally recites "wherein said top panel
includes a lap joint whereby a first portion of said top panel extends over a
top surface of a second portion of said top panel, said lap joint including a
pair of weldments with a space therebetween, said pair of weldments
extending substantially the length of said top panel to define said irrigation
tube." Claims 5-7, 9, 11-14, 31, and 32 ultimately depend from claim 30.
5 Although the Examiner states that only claim 1 is subject to this rejection,
Non-Final Act. 11, the Examiner discusses claims 5, 11-14, 29, and 30 in
the analysis. Id. at 13-14.
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Application 13/160,902
The Examiner determines that "[ t ]here is insufficient antecedent
basis" for the limitation "the length" in claim 30. Non-Final Act. 4.
Appellants respond that "'the length' of a physical object is an inherent
characteristic that is not insolubly ambiguous." App. Br. 12.
Under pre-AIA 35 U.S.C. § 112, second paragraph, the specification
must conclude with "one or more claims particularly pointing out and
distinctly claiming the subject matter" regarded as the invention. During
prosecution, a claim may be rejected as indefinite "when it contains words or
phrases whose meaning is unclear," MPEP § 2173.05(e), or if it is
"amenable to two or more plausible claim constructions," Ex. Parte
Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential).
"[T]he failure to provide explicit antecedent basis for terms does not
always render a claim indefinite." MPEP § 2173 .05( e ). Rather, if "the
scope of a claim would be reasonably ascertainable by those skilled in the
art, then the claim is not indefinite." Id. In particular, "[i]nherent
components of elements recited have antecedent basis in the recitation of the
[elements] themselves." Id. Here, we agree that the length of the top panel
is an inherent characteristic of the top panel. Length has been defined as
"the measure of the greatest dimension of a plane or solid figure."
https://www.dictionary.com/browse/length?s=t (last visited Feb. 14, 2019).
Thus, "length of the top panel" means the greatest dimension of the top
panel. Because the scope of claims 5-7, 11-14, and 30-32 is reasonably
ascertainable to those skilled in the art, we do not sustain the rejection of
these claims as indefinite.
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Application 13/160,902
Claims 1 and 17-Anticipated by Joaquin
The Examiner finds, inter alia, that Joaquin's irrigation tube 12
corresponds to claim 1 's irrigation tube, and the panel above irrigation tube
12 corresponds to the claimed top panel. Non-Final Act. 4 (citing Joaquin,
Fig.2). The Examiner further finds that the middle portion of Joachim's
irrigation tube 12 is secured to the bottom surface of this panel. Id.
Appellants dispute this latter finding, asserting that "all of the figures in
Joaquin show[] an irrigation tube (12) having a space between it and the
bottom surface of the top panel of the grow bag." App. Br. 14. Appellants
also refer to Joaquin's teaching that the irrigation tube can be fed through
holes in the porous tubular sock that comprises Joaquin's garden growing
system. Id. (citing Joaquin ,r 2). Appellants argue that the tube cannot be
secured to the sock if it can be fed through it. Id.
We are not persuaded that Joaquin teaches the middle portion of the
irrigation tube secured to the bottom surface of the top panel. At least
Joaquin's Figures 1, 3 and 4 depict a gap between irrigation tube 12 and the
bottom surface of Joaquin's top panel. See Joaquin, Figs. 1, 3, 4. Figure 2
appears to depict such a gap as well, although the relationship between tube
12 and the top panel of the sock is less clear in that figure. Further, we agree
that Joaquin's teaching that the irrigation tube can be fed through the sock
indicates that the tube can move relative to the interior of the sock and thus
is not secured to the sock. Therefore, we do not sustain the Examiner's
rejection of claim 1 as anticipated by Joaquin. Because claim 17 depends
from claim 1, we also do not sustain the rejection of claim 1 7.
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Application 13/160,902
Claims 15 and 16-Unpatentable over Joaquin and Nalbandian
Claims 15 and 16 depend from claim 1. This rejection relies on the
erroneous finding that Joaquin teaches the limitation in claim 1 requiring the
middle portion of the irrigation tube to be secured to the bottom surface of
the top panel. Non-Final Act. 8-9. Nalbandian is not relied on to cure this
deficiency. Id. Therefore, for the reasons discussed above, we do not
sustain this rejection.
Claim I-Anticipated by Wilde
The Examiner finds, inter alia, that Wilde discloses a grow bag with a
top panel and irrigation tube, the middle portion of the irrigation tube
secured to the bottom side of the top panel. Non-Final Act. 7 (citing Wilde,
Fig. 4); Ans. 5 ( citing Wilde, Fig. 4). Appellants counter that "Wilde
teaches a separate device for insertion into a grow bag-not an irrigation
tube that is secured to the bottom side of the top panel of the grow bag."
App. Br. 16 (citing Wilde, 6-7).
We are not persuaded that Wilde teaches the middle portion of the
irrigation tube secured to the bottom surface of the top panel. Although
Wilde's figures, particularly Figure 4, may show elongate pipe 4 adjacent to
the bottom side of the top of grow bag 7, that does not mean that the pipe is
secured to that surface. On the contrary, as Appellants point out, Wilde
teaches that pipe 4 is installed in the grow bag by inserting it through a small
incision in one end of the bag and pushing it over the surface of the growing
medium. This indicates that the pipe is not secured to the bottom surface of
the top panel because it can move relative to that surface. Therefore, we do
not sustain the rejection of claim 1 as anticipated by Wilde. Because claim
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Application 13/160,902
17 depends from claim 1, we also do not sustain the rejection of claim 17 as
anticipated by Wilde.
Claims 15 and 16-Unpatentable over Wilde and Nalbandian
This rejection relies on the erroneous finding that Wilde teaches the
middle portion of the irrigation tube being secured to the bottom surface of
the top panel. Nalbandian is not relied on to cure this deficiency. Therefore,
for the reasons discussed above, we do not sustain this rejection.
Claims 1 and 17-Unpatentable over Prewer and Byles
Appellants argue claims 1 and 17 together. App. Br. 18-20. We
select claim 1 as representative, and decide the appeal of this rejection on the
basis of claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Prewer teaches all of the limitations of
claim 1 except for the plug member placed at the second end of the irrigation
tube. Non-Final Act. 9-10 (citing Prewer, 3:20-30, 35-37, Figs. 1--4). For
that limitation, the Examiner relies on Byles. Id. at 10 ( citing Byles, 7: 54--
56). According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention to modify Prewer' s grow
bag to include Byles' plug member "to retain the supplied liquid within the
bag system for gradual absorption of medium and/or plants depending on the
type of medium and/or plants being used for optimal growth." Id.
Appellants dispute that the combination of Prewer and Byles renders
claim 1 unpatentable. Appellants first argue that "Prewer fails to disclose,
inter alia, a grow bag ... as well as a 'top panel for enclosing a growth
medium' as required by Claim 1." App. Br. 18. But Appellants do not
explain why the propagator depicted in Figures 1--4 of Prewer is not a grow
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Application 13/160,902
bag and upper elongated container 11 is not a top panel, as the Examiner
found.
Appellants also assert that Prewer does not disclose a growth medium.
Id. at 19. We disagree. As the Examiner points out, Ans. 7, Prewer teaches
that each individual seed grown in the propagator "may be contained in a
bag or sachet of soil, fertiliser and chemical nutrients to assist in the growth
of the plant." Prewer, 3:36-38. Appellants counter that this "would make
the sachets the grow bag" rather than the tubular components, in which case
Prewer's grow bags would not contain an irrigation tube. App. Br. 19. This
argument implies that claim 1 requires that the grow bag be completely or
substantially filled with growth medium; however, claim 1 contains no such
requirement. Appellants do not offer any reason why the sachet of soil,
fertilizer and chemical nutrients cannot correspond to the claimed growth
medium even though Prewer' s propagator corresponds to the claimed grow
bag.
Because Appellants have not shown that the Examiner erred in
rejecting claim 1 as unpatentable over Prewer and Byles, we sustain the
rejection.
Claims 1, 5, 11-14, 29, and 30-Unpatentable over Kokai and Stachnik
Appellants argue the claims subject to this rejection as a group. App.
Br. 20-21. We select claim 1 as representative, and decide the appeal of this
rejection on the basis ofclaim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Kokai teaches all of the limitations of claim
1, specifically finding, inter alia, that the hanging planter depicted in Figures
4(a) and 4(b) ofKokai corresponds to the claimed grow bag, and supply
channel 16a corresponds to the irrigation tube. Non-Final Act. 11-12 (citing
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Application 13/160,902
Kokai ,r,r 22, 42, 47, Fig. 4). The Examiner acknowledges, however, that
Kokai "is silent about an irrigation tube secured to said bottom surface and
extending between said top panel and said growth medium, characterized in
that the middle portion of the irrigation tube is secured to the bottom surface
of the top panel." Non-Final Act. 12. For this limitation, the Examiner
relies on Stachnik. Id. ( citing Stachnik, Fig. 2). According to the Examiner:
"[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the position of
the irrigation tube of Kokai with an irrigation tube secured to said
bottom surface and extending between said top panel and said
growth medium, characterized in that the middle portion of the
irrigation tube is secured to the bottom surface of the top panel
as taught by [Stachnik] in order to avoid exposure of the tube for
protection and/ or for creating a uniform appearance for the bag
system."
Id. at 12-13.
In response, Appellants argue that "both Kokai and Stachnik disclose
hanging plant containers with open top ends" rather than a grow bag with a
top panel. App. Br. 20. This argument is unpersuasive. First, Appellants do
not explain why Kokai's and Stachnik's plant hangers cannot be considered
grow bags. Second, Kokai' s hanging planter does not have an open end
because Kokai teaches that the perimeter of the planter is heat-sealed. Kokai
,r,r 28, 47. Third, the Examiner's rejection is based on the finding that
Kokai's planter "can be arranged vertically or horizontally" and still be
"operable for cultivation," and thus Kokai's top panel is the panel between
edges 4 and 12 of the embodiment depicted in Figure 4 of Kokai. Ans. 8.
Appellants do not expressly dispute or show error in these findings. Because
Stachnik is not relied on to teach the top panel, Appellants' assertion that
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Application 13/160,902
Stachnik does not teach that limitation is not responsive to the rejection at
lSSUe.
Appellants also argue that neither Kokai nor Stachnik teaches an
irrigation tube. App. Br. 20. But Appellants do not show error in the
Examiner's finding, Non-Final Act. 11, that Kokai's supply channel 16a
corresponds to the claimed irrigation tube. Appellants assert that Stachnik' s
water compartment "cannot release water into the grow bag," but
acknowledges that it "allows vapor to permeate the membrane" into the
grow bag. App. Br. 21. However, Stachnik is relied on for its teaching of
the position of the irrigation tube ( on the inside rather than the outside of the
grow bag), rather than the irrigation tube per se, Ans. 9, and therefore this
argument is not responsive to the rejection at issue. In any event, Stachnik's
water compartment 23 allows water vapor to pass to the plant soil in
compartment 22 to moisten the soil. Stachnik ,r 37, Fig. 2.
Because Appellants have not shown that the Examiner erred in
rejecting claims 1, 5, 11-14, 29, and 30 as unpatentable over Kokai and
Stachnik, we sustain the rejection
The Remaining Rejections
Appellants have not presented additional substantive arguments in
support of the patentability of separately rejected claims 6, 7, 9, 31, and 32.
App. Br. 22-23. Therefore, we sustain the rejections of these claims.
DECISION
For the above reasons, we reverse: (1) the rejection of claims 5-7, 9,
11-14, and 30-32 as indefinite; (2) the rejection of claims 1 and 17 as
anticipated by Joaquin; (3) the rejection of claim 1 as anticipated by Wilde;
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Application 13/160,902
(4) the rejection of claims 15 and 16 as unpatentable over Joaquin and
Nalbandian; and (5) the rejection of claims 15 and 15 as unpatentable over
Wilde and Nalbandian. We sustain: (1) the rejection of claims 1 and 1 7 as
unpatentable over Prewer and Byles; (2) the rejection of claims 1, 5, 11-14,
29, and 30 as unpatentable over Kokai and Stachnik; (3) the rejection of
claim 6 as unpatentable over Kokai, Stachnik, and Ewerszumrode; ( 4) the
rejection of claims 7 and 9 as unpatentable over Kokai, Stachnik, and
Ticktin; and (5) the rejection of claims 31 and 32 as unpatentable over
Kokai, Stachnik, Ticktin, and Ewerszumrode.
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)(l )(iv).
AFFIRMED-IN-PART
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