2018005805 (P.T.A.B. Jul. 1, 2020)

Robert Conrad

Patent Trials and Appeals BoardJul 1, 2020

2018005805 (P.T.A.B. Jul. 1, 2020)

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. 13/076,791 03/31/2011 Robert Conrad T12095.A 4422 20450 7590 07/01/2020 ALAN J. HOWARTH P.O. BOX 1909 SANDY, UT 84091-1909 EXAMINER BARLOW, MONICA L ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 07/01/2020 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 PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT CONRAD Appeal 2018-005805 Application 13/076,791 Technology Center 3600 Before MICHAEL J. FITZPATRICK, ANNETTE R. REIMERS, and NATHAN A. ENGELS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 38 and 40–57. Claims 1–37 and 39 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ball Horticultural Company. Appeal Brief (“Appeal Br.”) 2, filed Jan. 2, 2018. Appeal 2018-005805 Application 13/076,791 2 CLAIMED SUBJECT MATTER The claims are directed to cast pellets for planting seeds. Claim 38, reproduced below, is illustrative of the claimed subject matter: 38. A method of making a water-soluble cast pellet configured for planting and germinating plant seeds, the method comprising: (a) placing in a mold a mixture of one or more germinable plant seeds and a setable, water-soluble thermoplastic casting substance in a liquid state, wherein the setable, water-soluble thermoplastic casting substance comprises polyethylene glycol; (b) causing the casting substance to set to a solid state to result in the cast pellet configured for planting and germinating plant seeds; and (c) removing the cast pellet configured for planting and germinating plant seeds from the mold. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Garabedian US 3,651,772 Mar. 28, 1972 Kouno US 4,808,430 Feb. 28, 1989 McPherson US 2006/0032120 A1 Feb. 16, 2006 Legro US 2006/0150489 A1 July 13, 2006 Liste2 DE 10 2004 040 726 A1 Feb. 23, 2006 REJECTIONS I. Claims 38, 40–43, 46–52, 54, and 56 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste and Kouno. 2 The English translation for this reference has been provided by Appellant. See Liste 1 (“The information that follows was taken from the documents submitted by the Applicant.”); see also Appeal Br. 7 n.1. All citations to the Liste reference in this decision are to the “Commissioned Translation” provided by Appellant. See id. Appeal 2018-005805 Application 13/076,791 3 II. Claims 44 and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Kouno, and Applicant’s Admitted Prior Art (“AAPA”).3 III. Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Kouno, and McPherson. IV. Claims 55 and 57 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Kouno, and Legro. V. Claims 38, 40–43, 46–52, 54, and 56 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste and Garabedian. VI. Claims 44 and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Garabedian, and AAPA. VII. Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Garabedian, and McPherson. VIII. Claims 55 and 57 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liste, Garabedian, and Legro. ANALYSIS Obviousness over Liste and Kouno Claims 38, 40–43, 46–52, 54, and 56 Claim 38 requires, among other things, “a setable, water-soluble thermoplastic casting substance in a liquid state, wherein the setable water- soluble thermoplastic casting substance comprises polyethylene glycol.” Appeal Br. 23 (Claims App.). The Examiner finds that “Liste discloses 3 The Examiner cites to paragraphs two through four of Appellant’s Specification as being indicative of Applicant’s Admitted Prior Art (“AAPA”). Non-Final Office Action (“Non-Final Act.”) 6, dated Aug. 2, 2017. Appeal 2018-005805 Application 13/076,791 4 polylactic acid which is a water-soluble thermoplastic casting substance,” and that “it would have been obvious [to a skilled artisan] to use another known equivalent water-soluble thermoplastic casting substance such as polyethylene glycol.” Ans. 4; see also Non-Final Act. 3–4 (citing Liste ¶ 11).4 The Examiner also finds that a skilled artisan “would recognize both polyethylene glycol and polylactic acid to . . . be water-soluble[,] . . . thermoplastic[,] and . . . functional equivalents that would yield predictable results.” Ans. 5; see also Non-Final Act. 4. Appellant contends that the Examiner “recognized the deficiency of the combination Liste and K[ou]no in not disclosing polyethylene glycol in the casting substance” and attempted to gloss over this failing by stating “it would have been an obvious substitution of functional equivalent to substitute the polylactic acid with polyethylene glycol or use both polylactic acid with polyethylene glycol, since both are known water- soluble, biodegradable thermoplastics, since a simple substitution of one known element for another would obtain predictable results.” Appeal Br. 11 (citing Non-Final Act. 5). However, according to Appellant, the Examiner does “not cite a reference disclosing any of these allegations.” Id. In the Answer, the Examiner states that “Appellant has, up to th[is] point, failed to previously specifically request a cited reference to support the [E]xaminer’s allegation[] that polyethylene glycol and polylactic acid are functional equivalents.” Ans. 4–5. However, “[a]n examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai- Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). In any event, even after 4 Examiner’s Answer (“Ans.”), dated Mar. 20, 2018. Appeal 2018-005805 Application 13/076,791 5 Appellant’s Appeal Brief “request,” the Examiner does not provide Appellant with a cited reference to support the proposition that polyethylene glycol and polylactic acid are functional equivalents. See id. Rather, the Examiner merely reiterates findings similar to those made in the Non-Final Office Action, namely, that a skilled artisan would recognize that polyethylene glycol and polylactic acid are both “water-soluble[,] . . . thermoplastic[,] and . . . functional equivalents that would yield predictable results” and that a skilled artisan “could have combined the elements as claimed by known methods with no change in their respective functions.” Ans. 5; see also Non-Final Act. 3–4. In this case, we agree with Appellant that the Examiner’s finding that the polylactic acid of Liste is “functional[ly] equivalent” to the claimed polyethylene glycol is based on “unsupported” evidence. See Reply Br. 4; see also Appeal Br. 11.5 Stated differently, the Examiner does not provide sufficient evidence or technical reasoning to support the finding that the polylactic acid of Liste is “functional[ly] equivalent” to the claimed polyethylene glycol. See Non-Final Act. 3–4; see also Ans. 4–5. As such, the Examiner fails to establish by a preponderance of the evidence that polylactic acid and polyethylene glycol are “known equivalent water-soluble thermoplastic casting substance[s].” See Ans. 4–5; see also Non-Final Act. 4. For these reasons, we do not sustain the Examiner’s rejection of claims 38, 40–43, 46–52, 54, and 56 over Liste and Kouno. 5 Reply Brief (“Reply Br.”), filed May 21, 2018. Appeal 2018-005805 Application 13/076,791 6 Obviousness over Liste, Kouno, and any of AAPA, McPherson, or Legro Claims 44, 45, 53, 55, and 57 Claims 44, 45, 53, and 55 ultimately depend from claim 38. See Appeal Br. 23–25 (Claims App.). Independent claim 57 is directed to a method of making a water-soluble cast pellet and, similar to independent claim 38, requires “a setable, water-soluble thermoplastic casting substance in a liquid state, wherein the setable water-soluble thermoplastic casting substance comprises polyethylene glycol.” Appeal Br. 23, 26 (Claims App.). The Examiner does not rely on the teachings of AAPA, McPherson, or Legro to remedy the deficiencies discussed above. See Non-Final Act. 5– 7. Accordingly, for reasons similar to those discussed above for claim 38 in view of Liste and Kouno, we do not sustain the Examiner’s obviousness rejections of claims 44, 45, 53, 55, and 57 over the various cited prior art references. Obviousness over Liste and Garabedian Claims 38, 40–43, 46–52, 54, and 56 The Examiner relies on the same unsupported findings as those discussed above in the rejection of claim 38 over Liste and Kouno. See Non-Final Act. 8–9. The Examiner does not rely on the teachings of Garabedian to remedy the deficiencies of Liste. See id. Accordingly, for reasons similar to those discussed above in view of Liste and Kouno, we do not sustain the Examiner’s rejection of claims 38, 40–43, 46–52, 54, and 56 over Liste and Garabedian. Appeal 2018-005805 Application 13/076,791 7 Obviousness over Liste, Garabedian, and any of AAPA, McPherson, and Legro Claims 44, 45, 53, 55, and 57 Claims 44, 45, 53, and 55 ultimately depend from claim 38. See Appeal Br. 23–25 (Claims App.). Independent claim 57 is directed to a method of making a water-soluble cast pellet and, similar to independent claim 38, requires “a setable, water-soluble thermoplastic casting substance in a liquid state, wherein the setable water-soluble thermoplastic casting substance comprises polyethylene glycol.” Appeal Br. 23, 26 (Claims App.). The Examiner relies on the same unsupported findings as those discussed above in the rejection of claim 38 over Liste and Garabedian. See Non-Final Act. 11–13. The Examiner does not rely on the teachings of AAPA, McPherson, or Legro to remedy the deficiencies of Liste. See id. Accordingly, for reasons similar to those discussed above for claim 38 in view of Liste and Garabedian, we do not sustain the Examiner’s obviousness rejections of claims 44, 45, 53, 55, and 57 over the various cited prior art references. Appeal 2018-005805 Application 13/076,791 8 DECISION SUMMARY Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 38, 40–43, 46–52, 54, 56 103(a) Liste, Kouno 38, 40–43, 46–52, 54, 56 44, 45 103(a) Liste, Kouno, AAPA 44, 45 53 103(a) Liste, Kouno, McPherson 53 55, 57 103(a) Liste, Kouno, Legro 55, 57 38, 40–43, 46–52, 54, 56 103(a) Liste, Garabedian 38, 40–43, 46–52, 54, 56 44, 45 103(a) Liste, Garabedian, AAPA 44, 45 53 103(a) Liste, Garabedian, McPherson 53 55, 57 103(a) Liste, Garabedian, Legro 55, 57 Overall Outcome 38, 40–57 REVERSED