Ex Parte VAN DER SCHAAF et al

Patent Trial and Appeal Board

Aug 24, 2016

11756784 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111756,784 06/01/2007
23460 7590 08/26/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Tjerk Pier VAN DER SCHAAF
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.
258820 1460
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TJERK PIER VAN DER SCHAAF,
EWALD GROENEWOUD, and PAUL THOMAS DIRK HERMAN
Appeal2014-001565
Application 11/756,784
Technology Center 3600
Before JAMESON LEE, JONI Y. CHANG, and
JUSTIN T. ARBES, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11, which constitute all the claims pending in
this application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ). 1
We reverse.
1 This Decision refers to Appellants' Appeal Brief ("App. Br.," filed Sept. 3,
2013), Examiner's Answer ("Ans.," mailed Sept. 25, 2013), Appellants'
Reply Brief ("Reply Br.," filed Nov. 14, 2013), and Final Office Action
("Final Act.," mailed Mar. 29, 2013).
Appeal2014-001565
Application 11/756,784
The subject matter of the Application is directed to "use of a sachet
made from water-permeable filter paper for administering a preparation,
such as a food, and/or conditioning agent and/or disinfectant and/or biocide
and/or growth inhibitor for microorganisms, to cut flowers which are
standing in water." Spec. i-f 13. The Specification states that it is
advantageous if the closed bag of the sachet is made from filter material
which, "when it takes up water, becomes transparent or translucent," to
make it possible, "by visual inspection, to determine whether the sachet is
still active." Id. i-f 10.
CLAIMED SUBJECT MATTER
Of all the claims on appeal, claim 1 is independent and is reproduced
below. Each of claims 2-11 depends, directly or indirectly, from claim 1,
which is reproduced below.
1. A method of providing a preparation to cut flowers,
said method combining the steps of:
providing liquid water,
providing a sachet, said sachet comprising
a closed bag which is formed from
water-permeable material, and
a solid substance is contained in the bag, said
solid substance being water-soluble, the water-
soluble solid substance being a preparation for cut
flowers,
providing a container adapted to hold and maintain liquid
water, as opposed to allowing water to pass through the
container,
combining said liquid water and said sachet in said
container such that the water-permeable material becomes
2
Appeal2014-001565
Application 11/756,784
transparent or translucent when saturated with said liquid water
such that said solid substance is visible and may be observed
through the liquid water and the material, and
placing said cut flowers in said container in contact with
said liquid water, said container containing said liquid water and
said sachet.
PERTINENT APPLICATION DISCLOSURE
Figures 1 and 2 are reproduced below.
F!G. 1
10 \
~ y , __ ,. \
\
\
I
Figure 1 illustrates a rectangular sachet according to the disclosed invention.
Spec. i-f 23. Figure 2 illustrates sachet 1 placed in bucket 10 containing cut
flowers 12 standing in water 11. Id. i-f 24. Sachet 1 comprises bag 2 made of
water-permeable filter paper. Id. i-f 20. Bag 2 is comprised of rectangular
upper panel 4 and rectangular lower panel 5, which are joined together at
their periphery, by means such as adhesive bond. Id. Preparation 3 contains
3
Appeal2014-001565
Application 11/756,784
food and/or disinfectant, and/or a biocide, and may be in powder or granules
or some other form. Id. Upper panel 4 may be printed with text, such as
instructions, e.g., "put sachet without opening in 2 liters of water." Id. i-f 21.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is listed as follows:
Zetterquist
Chien
Hartmann
Weder
EP '944
us 4,167,832
us 5,974,730
us 5,698,004
US 6,484,442 B 1
EP 0 405 944 Al
REJECTIONS
Sept. 18, 1979
Nov. 2, 1999
Dec. 16, 1997
Nov. 26, 2002
(parent
applications filed
Dec. 13, 1999 and
Mar. 12, 1998)
Jan.2, 1991
Claims 1-5 and 11 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Zetterquist and EP '944. Final Act. 2-5.
Claims 6 and 7 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Zetterquist, EP '944, and Weder. Id. at 5.
Claims 8 and 9 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Zetterquist, EP '944, and Chien. Id. at 5---6.
Claim 10 was finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Zetterquist, EP '944, and Hartmann. Id. at 6-7.
4
Appeal2014-001565
Application 11/756,784
ISSUES
Have Appellants shown that the Examiner erred in concluding that
claims 1-5 and 11 would have been obvious over Zetterquist and EP '944?
Have Appellants shown that the Examiner erred in concluding that
claims 6 and 7 would have been obvious over Zetterquist, EP '944, and
Weder?
Have Appellants shown that the Examiner erred in concluding that
claims 8 and 9 would have been obvious over Zetterquist, EP '944, and
Chien?
Have Appellants shown that the Examiner erred in concluding that
claim 10 would have been obvious over Zetterquist, EP '944, and
Hartmann?
ANALYSIS
A. Rejection of Claims 1-5 and 11under35 U.S.C. § 103(a) as
Unpatentable over Zetterquist and EP '944
For claim 1, the Examiner determined that Zetterquist discloses all
limitations, except the requirement of a sachet comprising a closed bag and a
solid substance, and also the further requirement that the bag is formed from
water-permeable material that becomes transparent or translucent when
saturated with water. Final Act. 2-3. For those features, the Examiner
relied on EP '944.
Zetterquist
Figures 2--4 of Zetterquist are reproduced below.
5
Appeal2014-001565
Application 11/756,784
Fig.2
( r
~~~::;;"
Fig.3
Figure 2 illustrates a strip according to Zetterquist that may be fastened to
the lower end of a stem in a bouquet. Zetterquist, 2:61---63. Figure 3
illustrates many strips placed on a common carrier ribbon. Id. at 2:64---65.
Figure 4 illustrates a perspective view of a bouquet of flowers on which a
strip according to Zetterquist has been mounted. Id. at 2:66-68.
Each rectangular strip unit 1 a has a front surface provided with
coating 4 containing at least a bactericidal compound. Id. at 3:8-11. A layer
5 of non-water-soluble or low-water-soluble self-adhesive substance is
applied to the back surface of strip 1 a. Id. at 3: 17-19. In use, strip 1 a is
fastened to the lower end of one or more stems in a bouquet, such that the
self-adhesive substance at each end of layer 5 will be made to contact each
other. Id. at 3 :25-29. When a customer buys a bouquet of flowers, the
florist attaches strip unit la to the bouquet. Id. at 3:30-33. The strips,
shown in Figure 3, may be placed on common carrier ribbon 8 with layer 5
facing the carrier ribbon, and the individual strips may be easily removed
from adjacent strips and the carrier ribbon. Id. at 3:61---66. Also in use, the
6
Appeal2014-001565
Application 11/756,784
bouquet together with strip unit 1 a attached to one or more flower stems are
immersed in water. Id. at 4:20-64. Zetterquist discloses no sachet.
EP '944
EP '944 discloses a fertilizing device comprising a water-permeable
sachet holding a sustained-release fertilizer composition. EP '944, 1 :37--40.
Figure 1 of EP '944 is reproduced below:
Fig. 1.
Figure 1 depicts a perspective view of a preferred embodiment of the
fertilizing device of EP '944. Id. at 2:51-55. EP '944 describes:
A fertilizer device comprises a rectangular sachet
(1) made from two sheets of biodegradable tea-bag scrim (2, 3)
which have been heat-sealed together. The sachet encapsulates
30g of the sustained release fertilizer composition FI COTE (UK
Registered Trade Mark)( 4). Less than 50% of the space inside
the sachet is occupied.
In use, the sachet is buried in the growing medium
adjacent to a plant or plants (for example a group of plants in a
window box) to be fertilized, and provides nutrients to the plant
or plants over a period of approximately four months as water
(for example rain water) percolates into and out of the sachet.
Id. at 3:1-14. EP '944 further describes: "the sachet preferably comprises
paper material (most preferably perforated), for example tea-bag scrim." Id.
at 2:26-28.
7
Appeal2014-001565
Application 11/756,784
The Examiner reasoned that "it would have been obvious to one of
ordinary skill in the art to take the method of Zetterquist et al. and add the
sachet of the European patent [EP '944], so as to allow for preparation
material to be better protected." Final Act. 3. Citing column 2, lines 20-30
of EP '944, the Examiner also determined that the water-permeable material
used in EP '944 becomes transparent or translucent when saturated with
water. Id. In the Examiner's Answer, it is further explained "[t]he rejection
of the transparent/translucent material when wet was made using the
European patent disclosing a well known material that becomes transparent
when wet." Ans. 3. The Examiner additionally stated that it was well
known in the art that "tea bag paper/material becomes translucent or
transparent when wet." Id. at 2. The Examiner reiterated that tea bag paper
was well known in the art "to become transparent and translucent when
wet." Id. at 3.
In the alternative, the Examiner determined that paragraphs 3 and 5 of
Appellants' Specification acknowledge that it was known in the art that tea
bag paper has a transparency or translucency characteristic as required by
the claims. Final Act. 7.
Alleged Admission and
Officially Noticed Fact
With regard to the Examiner's finding that the material used in
EP '944 to form the sachet becomes transparent or translucent when wet,
Appellants argue that paragraphs 3 and 5 of their Specification do not
acknowledge that tea bag paper always becomes transparent or translucent
when made wet. App. Br. 5. The argument is persuasive. There is no such
admission or acknowledgment in these portions of the Specification cited by
8
Appeal2014-001565
Application 11/756,784
the Examiner. Thus, the finding is unsupported by Appellants' alleged
admission.
Appellants also argue that there is "no mention" or "any indication" in
EP '944 that the material it uses to form the sachet "will become transparent
or translucent when saturated with water." App. Br. 4. It is true that there is
no mention in EP '944 that the material it uses to form the sachet becomes
transparent or translucent when wet. However, we disagree that there is "no
indication" in EP '944 that the material it uses for the sachet will become
transparent or translucent when saturated with water.
EP '944, as noted by the Examiner, describes that the sachet
preferably is formed of perforated paper material, "for example tea-bag
scrim." EP '944, 2:26-28 (emphasis added). The Examiner determined that
it was well known in the art that that tea bag paper "becomes translucent or
transparent when wet." Ans. 2. The Examiner was, in effect, taking official
notice of a fact. The Examiner may take official notice of facts which are
capable of such instant and unquestionable demonstration as to defy dispute.
See In re Ahlert, 424 F.2d 1088, 1091(CCPA1970); In re Knapp, 296 F.2d
230 (CCP A 1961 ). Appellants had full opportunity in the Reply to challenge
the officially noticed fact. Appellants did not, however, submit any
evidence to make that rebuttal. Instead, Appellants argue that not all tea bag
paper inherently and necessarily becomes transparent or translucent when
wet. Reply Br. 2. The argument is misplaced. The Examiner did not find
that "all" tea bag paper inherently or necessarily would become transparent
or translucent when wet. The Examiner's finding, reasonably read, simply is
that commonly available tea bag paper at the time of the effective filing date
of Appellants' application had the characteristic that it became transparent or
9
Appeal2014-001565
Application 11/756,784
translucent when wet. Viewed in that light, the otlicially noticed fact is
capable of such instant and unquestionable demonstration as to defy dispute.
Appellants have not shown error in the Examiner's finding in that regard.
Reasoning to Combine Teachings
of Zetterquist and EP '944
Appellants argue that Zetterquist teaches away from using the sachet
of EP '944 instead of the strips of Zetterquist to contain the bactericidal
coating (citing Zetterquist, 1 :42-50), (1) because Zetterquist teaches that its
strips should be tolerable of wet stems, and (2) because Zetterquist teaches
that its strips are preferably non-absorptive. App. Br. 7. Appellants note
that EP '944 describes that its sachet material "must be readily wetted." Id.
(citing EP '944, 2:20-21). These teach-away arguments are unpersuasive.
Zetterquist does not teach that its strips are made of material that
tolerates wet stems. The cited portion of Zetterquist states "said [adhesive]
substance being tolerable by wet as well as dry stems of flowers even during
prolonged contact." Zetterquist, 1:45--47. Thus, what is conveyed is that the
adhesive is tolerated by the flowers, not that the strip does not get wet
readily. Also, although Zetterquist does describe the paper or cardboard
making up the strip as "preferably being non-absorptive," id. at 1 :42--46, that
is not an indication that the strip cannot be made of water absorptive
material.
A less preferred embodiment is, nonetheless, still an option and
cannot be equated to an arrangement that is recognized as not likely to work.
It is not a "teaching away" of significance unless one with ordinary skill in
the art would have understood the teaching as conveying that the method or
10
Appeal2014-001565
Application 11/756,784
structural configuration at issue reasonably cannot be expected to achieve
what it is required to achieve according to the claimed invention. See, e.g.,
Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
("Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant's invention." (citing In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994)).
Furthermore, the Examiner has proposed to "add" the sachet of EP
'944 to the method of Zetterquist, and not to replace the strips of Zetterquist
entirely. Final Act. 3. The absorptiveness of the sachet in EP '944 does not
affect the preferred non-absorptiveness of the strip units of Zetterquist.
To support an obviousness rejection, there has to be an articulated
reasoning with rational underpinnings to support a reason to combine
teachings. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellants
argue that the Examiner did not provide reasoning with rational
underpinnings to add the sachet of EP '944 to the method of Zetterquist.
App. Br. 6-7. For the reasons discussed below, we agree.
The Examiner determined that it would have been obvious to one with
ordinary skill in the art to add the sachet of EP'944 to the method of
Zetterquist "to allow for preparation material to be better protected." Final
Act. 3. Appellants correctly state that Zetterquist provides no indication that
coating layer 4 needs protection. App. Br. 6. Moreover, in Zetterquist,
manual handling of each strip with coating layer 4 is necessary and required,
to fasten the strip to one or more flower stems in a bouquet. Zetterquist,
3:25-33. Placing a strip within a closed sachet effectively renders the strip
unattachable to one or more flower stems by fastening as described in
11
Appeal2014-001565
Application 11/756,784
Zetterquist. Manually fastening the strip to one or more flower stems is key
to Zetterquist's disclosed method of using the strips to preserve cut flowers
in water. We agree with Appellants that the Examiner's stated reasoning
lacks rational underpinnings.
Appellants also argue that the combination as proposed by the
Examiner leads to a device that is inoperable for its intended purpose. App.
Br. 6-7. We are aware of no authority that every purpose for a prior art
reference must be preserved in applying the reference to support a rejection,
and Appellants have cited none. A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Here, however,
the Examiner has proposed to use the strips of Zetterquist in a manner not
consistent with their usage as disclosed in Zetterquist, eliminating the
disclosed advantages for their use, without articulating a sufficient reason for
such change. Thus, the Examiner's reasoning lacks rational underpinnings.
For the reasons discussed above, we do not sustain the Examiner's
obviousness rejection of claim 1, under 35 U.S.C. § 103(a), as unpatentable
over Zetterquist and EP '944. We also do not sustain the rejection of claims
2-5 and 11, each of which depends, directly or indirectly, from claim 1. The
Examiner's reasoning for rejecting claims 2-5 and 11 suffers from the same
deficiency we discussed above in the context of claim 1.
12
Appeal2014-001565
Application 11/756,784
B. Rejection of Claims 6 and 7 under 35 U.S.C. § 103(a)
as Unpatentable over Zetterquist, EP '944, and Weder
Claim 6 depends from claim 1, and claim 7 depends from claim 6. As
applied by the Examiner, Weder does not cure the deficiencies of the
Examiner's proposed combination of Zetterquist and EP '944. Accordingly,
this rejection of claims 6 and 7 cannot be sustained.
C. Rejection of Claims 8 and 9 under 35 U.S.C. § 103(a)
as Unpatentable over Zetterquist, EP '944, and Chien
Claim 8 depends from claim 1, and claim 9 depends from claim 8. As
applied by the Examiner, Chien does not cure the deficiencies of the
Examiner's proposed combination of Zetterquist and EP '944. Accordingly,
this rejection of claims 8 and 9 cannot be sustained.
D. Rejection of Claim 10 under 35 U.S.C. § 103(a)
as Unpatentable over Zetterquist, EP '944, and Hartmann
Claim 10 depends from claim 1. As applied by the Examiner,
Hartmann does not cure the deficiencies of the Examiner's proposed
combination of Zetterquist and EP '944. Accordingly, this rejection of
claim 10 cannot be sustained.
13
Appeal2014-001565
Application 11/756,784
CONCLUSION
Appellants have shown error in the Examiner's conclusion that
claims 1-5 and 11 are unpatentable as obvious over Zetterquist and EP '944.
Appellants have shown error in the Examiner's conclusion that
claims 6 and 7 are unpatentable as obvious over Zetterquist, EP '944, and
Weder.
Appellants have shown error in the Examiner's conclusion that
claims 8 and 9 are unpatentable as obvious over Zetterquist, EP '944, and
Chien.
Appellants have shown error in the Examiner's conclusion that
claim 10 is unpatentable as obvious over Zetterquist, EP '944, and
Hartmann.
DECISION
The rejection of claims 1-5 and 11under35 U.S.C. § 103(a) as
obvious over Zetterquist and EP '944 is reversed.
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as obvious
over Zetterquist, EP '944, and Weder is reversed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as obvious
over Zetterquist, EP '944, and Chien is reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as obvious over
Zetterquist, EP '944, and Hartmann is reversed.
REVERSED
14