Ex Parte Venegas et al

Patent Trial and Appeal Board

Jun 17, 2016

10921243 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/921,243 08/18/2004
25006 7590 06/21/2016
DINSMORE & SHOHL LLP
POBOX7021
TROY, MI 48007-7021
FIRST NAMED INVENTOR
Frank Venegas JR.
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.
IDS-17002/14 8563
EXAMINER
AMIRI, NAHID
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte FRANK VENEGAS, JR. and ROBERT J. STARR
Appeal2014-005078
Application 10/921,243 1
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and
AMANDA F. WIEKERAdministrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank Venegas, Jr. and Robert Starr (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, 4, 6,
and 7. 2 We have jurisdiction over this appeal under 3 5 U.S. C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
According to Appellants, the real parties in interest are the inventors
Frank Venegas, Jr. and Robert Starr. Appeal Br. 1 (filed May 8, 2012)
2 Claims 3 and 5 are cancelled. Id.
Appeal2014-005078
Application 10/921,243
INVENTION
Appellants' invention relates to "a protective cover for a stanchion or
post that includes an upper vessel for a plant." Spec. 1, 11. 6-8.
Claims 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A sleeve for covering a post or stanchion, comprising:
a unitary, molded plastic article including an elongated lower
portion adapted to fit over a post or stanchion to be covered and an
upper vessel, the lower portion forming a continuous cylinder with a
consistent cross-sectional diameter between an open bottom and a
closed top;
the upper vessel having solid sides joined proximate to the
closed top of the lower portion and extending upwardly therefrom to
an open top; and
wherein the closed top of the elongated lower portion also
forms a bottom to the upper vessel, enabling plants, sand, or other
materials to be filled therein from above.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claim 7 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejected claims 1, 2, 4, 6, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Venanzi (US 6,345,466 Bl, iss. Feb. 12,
2002) and Lyon (US 1,538,711, iss. May 19, 1925).
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Application 10/921,243
ANALYSIS
Rejection I
The Examiner finds that the limitation "bowl-shaped" is indefinite
because, as bowls come in all shapes and sizes, it is not known what shape is
actually being claimed. Final Act. 3 (mailed Feb. 23, 2012).
In response, although Appellants initially contend that "bowl-shaped
ordinarily means 'rounded'," (see Appeal Br. 2), Appellants ultimately take
the position that according to thefreedictionary.com, the term "bowl-shaped"
means "having a concave shape with an open top like a bowl." Reply Br. 1
(filed Mar. 17, 2014).
We do not agree with Appellants' position that the term "bowl-
shaped" means "rounded," because the Examiner is correct in that "'bowls'
are known to come in all different shapes, including square." Ans. 2 (mailed
Jan. 15, 2014). Nonetheless, the Examiner appears to require that the claim
specify exactly the shape of the bowl. However, by not specifying the shape
of the bowl, the claim is merely broad, not ambiguous. See In re Johnson,
558 F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not indefiniteness). That
is to say, it is clear what the claim requires, a vessel in the shape of a bowl, 3
3 Similar to Appellants' definition, we find that an ordinary and
customary meaning of the term "bowl" is "a concave usually nearly
hemispherical vessel." Merriam Webster's Collegiate Dictionary (10th ed.
1997).
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Application 10/921,243
that is, a concave vessel; no further detail is necessary to understand the
metes and bounds of the claim.
Accordingly, we do not sustain the rejection of claim 7 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection II
The Examiner finds that Venanzi discloses a sleeve capable of
covering a post or stanchion including, inter alia, an elongated lower
portion (top cylindrical tube 2) 4 and an upper vessel (grow box 1 ). Final
Act. 4 (citing Venanzi, Fig. 1 ). The Examiner finds that Venanzi does not
disclose that its sleeve is made of molded plastic or that it is unitary, but that
Lyon discloses a flower stand that is unitary and made from plastic. Id. at 4--
5 (citing Lyon, p. 1, 11. 9-11, 93); see also Lyon, Figs. 1, 2. Moreover, the
Examiner takes the position that "use of a one-piece construction instead of
a multi-piece construction would merely be a matter of engineering design
choice." Id at 5 (citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)).
Appellants argue that the Examiner's interpretation of Venanzi
"constitutes an inconsistent dissection that renders the reference unsuitable
for its intended purpose." Appeal Br. 2 (formatting omitted). Appellants
contend that because the Examiner only relies upon the top cylindrical tube
2 and grow box 1 of Venanzi and disregards the lower portion of the device,
the "article would fall over and fail to function as a stand-up garden." Id. at
3--4; see also Reply Br. 1. Thus, according to Appellants, the Examiner's
4 Parentheticals refer to Venanzi.
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Application 10/921,243
modification of Venanzi "is chang[ing] its principle of operation, making it
unsatisfactory for its intended purpose." Appeal Br. 4.
At the outset, we agree with the Examiner that the interpretation of
Venanzi' s grow box 1 and top tube 2, as the claimed sleeve, does not
amount to a modification of Venanzi' s portable gardening system making it
unsatisfactory for its intended purpose. See Ans. 3. The purpose of
Venanzi' s portable gardening system is to allow plants to grow both "upside
down out of the bottom of the grow box as well as right side up, out of the
top, in the traditional manner." Venanzi, col. 2, 11. 38--41. Venanzi achieves
this purpose by providing grow holes 1 a in grow box 1 and not by providing
collar 3, bottom cylindrical tube 4, and base 5, as Appellants suggest. See
id., col. 3, 11. 18-20; Fig. 1. Thus, as Venanzi's grow box 1 and top tube 2
include grow holes 1 a, Venanzi' s grow box 1 and top tube 2 will function as
intended because it would allow plants to grow both upside down and right
side up.
As to Appellants' assertion that Venanzi' s portable gardening system
would fall over, we note that this is unsupported attorney argument and
cannot take the place of evidence in the record. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Moreover, as Venanzi's grow box 1 and top
tube 2 system is capable of covering a post, as called for by independent
claim 1, in contrast to Appellants' contention, Venanzi would function to
hold plants as a stand-up garden when mounted to a post. See Final Act. 4.
Appellants further argue that Venanzi teaches away from a unitary
construction because Venanzi "clearly favors a knock-down gardening
system that 'is easily assembled for use and disassembled for storage."'
Appeal Br. 4. Appellants maintain that the Examiner "is modifying the
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Application 10/921,243
reference so as to change its principle of operation, making it unsatisfactory
for its intended purpose." Id. at 5.
Although we appreciate that Venanzi favors a gardening system that
can be disassembled, as Appellants do not point to any passage in Venanzi
that "criticize[s], discredit[s] or otherwise discourage[s]" a unitary gardening
system, Venanzi does not teach away from such a system. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Although we appreciate that having a
unitary design of Venanzi' s system may eliminate the advantage of
disassembly, "[a] known or obvious [product] does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
If there are tradeoffs involved regarding features, costs, manufacturability,
or the like, such things do not necessarily prevent the proposed combination.
See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
("[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.") As such, we agree with the Examiner that the assembly and
disassembly of the gardening system of Venanzi is not a teaching away of a
unitary design, because "[t]he fact that the motivating benefit comes at the
expense of another benefit ... should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another." See
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000); see also Ans. 4. The Examiner is correct that making Venanzi's
portable gardening system unitary, as taught by Lyon, "reduce[s] the number
of parts, produce[ s] no new and unexpected results and ... function[ s]
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Application 10/921,243
equally well and predictably whether it is one piece or two." Final Act. 5.
Appellants have not shown otherwise persuasively.
We further are not persuaded by Appellants' arguments because as
noted above, the purpose of Venanzi' s portable gardening system is to allow
plants to grow both upside down and right side up. While a prior art
reference may indicate that a particular combination is undesirable for its
own purposes, the reference can nevertheless teach that combination if it
remains suitable for the claimed invention. See In re Kahn, 441F.3d977,
990 (Fed. Cir. 2006). In this case, making Venanzi's grow box 1 and top
tube 2 system unitary, as the Examiner proposes, would allow for such a
purpose regardless of whether the system of Venanzi, as modified by Lyon,
is unitary or may be disassembled because it includes grow holes la.
Appellants have not shown persuasively why making Venanzi' s grow box 1
and top tube 2 system unitary would make it unsatisfactory for its intended
purpose of allowing plants to grow both upside down as well as right side
up.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1, 2, 4, 6, and 7 under 35 U.S.C. § 103(a) as unpatentable over
Venanzi and Lyon.
SUMMARY
The Examiner's decision to reject claim 7 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is reversed.
The Examiner's decision to reject claims 1, 2, 4, 6, and 7 under
35 U.S.C. § 103(a) as being unpatentable over Venanzi and Lyon is
affirmed.
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Application 10/921,243
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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