TROPICANA PRODUCTS, INC.

Patent Trials and Appeals Board

Oct 16, 2020

13724689 - (D) (P.T.A.B. Oct. 16, 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.
13/724,689 12/21/2012 James H. Keithly CTROP.3745 6731
110933 7590 10/16/2020
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
10/16/2020 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 JAMES H. KEITHLY
____________

Appeal 2020-000393
Application 13/724,689
Technology Center 3600
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1.
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Feb. 6, 2019, hereinafter “Final

1 This is Appellant’s second appeal before the Patent Trial and Appeal
Board. In the first appeal (2017-011390, Decision mailed November 1,
2018) (hereafter “Decision,”), the rejection under 35 U.S.C. § 101 was
affirmed, whereas the rejections under 35 U.S.C. § 103(a) were reversed.
Pursuant to 37 C.F.R. § 41.50(b), we entered a new ground of rejection
under 35 U.S.C. § 103(a). Decision, 11–13.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Tropicana Products, Inc. is identified as the real party in
interest in Appellant’s Appeal Brief (filed June 20, 2019, hereinafter
“Appeal Br.”). Appeal Br. 2.
Appeal 2020-000393
Application 13/724,689
2

Act.”) rejecting claims 8–16, 25, 27, 29 and 31.3 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM IN PART.

INVENTION
Appellant’s invention relates “to containers and soil blends for
growing plants.” Spec. para. 2.
Claims 8 and 22 are independent. Claim 8 is illustrative of the claimed
invention and reads as follows:
8. An assembly comprising:
a container and a soil medium; wherein the
container comprises:
a sidewall defining an internal cavity having
an outermost peripheral dimension, a top having an
opening providing access to the cavity and a
bottom, with a depth defined between the top and
the bottom, the cavity configured to hold the soil
medium and a plant growing in the soil medium,
wherein the outermost peripheral dimension of the
sidewall has a width of about 4.0 to 6.0 inches and
the depth is about 12.0 inches to 14.0 inches; and
a plurality of air pruning holes defined
within the sidewall and extending through the
sidewall, the air pruning holes being dispersed
across the sidewall;
wherein the soil medium comprises soil
components and additives; wherein the soil
components comprise:
32 to 48% peatmoss,

3 Claims 1–7, 17–21, 23, 24, 26, 28, 30, and 32 are canceled and claim 22 is
withdrawn. Appeal Br. 2.
Appeal 2020-000393
Application 13/724,689
3

24 to 36% Coconut coir, and
24 to 36% Cypress bark sawdust;
wherein the additives comprise:
4.5 to 5.5 lb. dolomite limestone per
finished yard,
4.5 to 5.5 lb. gypsum per finished
yard,
3.6 to 4.4 lb. micronutrients per
finished yard,
16.65 to 20.35 lb. humic acid per
finished yard, and
9 to 11 lb. slow-release NPK
supplement per finished yard;
wherein the soil medium at least partially fills the
cavity.

REJECTIONS

I. The Examiner rejects claims 8–16, 25, 27, 29 and 31 under 35
U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.4
II. The Examiner rejects claims 16, 27, and 31 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.5
III. The Examiner rejects claims 25 and 29 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form for
failing to further limit the subject matter of the claim from
which they depend.6

4 The rejection is moot as to claims 17, 26, 28, 30, and 32 because these
claims are canceled. See footnote 3.
5 The rejection is moot as to claims 28 and 32 because these claims are
canceled. See footnote 3.
6 The rejection is moot as to claims 26 and 30 because these claims are
canceled. See footnote 3.
Appeal 2020-000393
Application 13/724,689
4

IV. The Examiner rejects claims 8–16, 25, 27, 29 and 31 under 35
U.S.C. § 103(a) as being unpatentable over Lawton,7 AAPA,8
Rubin,9 and Detweiler.10,11

ANALYSIS
Rejection I
The Examiner finds that the claimed values of the soil components
and additives, as per independent claims 8 and 22, are not supported by
Appellant’s original disclosure. Final Act. 3.
Appellant argues that paragraphs 37 and 38 of the Specification
describe an embodiment in which the nominal values of the soil components
and additives vary by 20% from the soil components and additives of soil
blend A. Appeal Br. 6. Appellant explains that as soil blend A includes
40% peatmoss, a 20% variation can be calculated as 0.2 multiplied by 0.4,
which results in 0.08 or an 8% variation above or below the 40% value. Id.
Thus, according to Appellant, the Specification supports the claimed
peatmoss range of 32% to 48%. Id.; see also id. at 40 (Claims App.).
Appellant further notes that in a similar manner the Specification supports
all of the claimed ranges of the soil components and additives recited by
claims 8 and 22. Id. at 7.

7 Lawton, WO 97/21339, published June 19, 1997.
8 Appellant’s Admitted Prior Art, Spec. para. 85. See also, Spec. paras. 64,
95; Decision, 11.
9 Rubin, US 2006/0074006 A1, published Apr. 6, 2006.
10 Detweiler et al., US 2009/0120339 A1, published May 14, 2009.
11 See footnote 4.
Appeal 2020-000393
Application 13/724,689
5

In response, the Examiner takes note with Appellant’s use of the terms
“approximately” and “nominal” in paragraphs 37 and 38, respectively.
Examiner’s Answer (dated Oct. 3, 2019, hereinafter “Ans.”) 3–5. According
to the Examiner, if the values of the soil components and additives are
“approximately” as described in paragraph 37, then the claimed ranges are
not supported by the Specification. Id. at 4–5. The Examiner explains that
if the maximum value is selected for the claimed ranges of peatmoss,
Coconut coir, and Cyprus bark sawdust, the resulting soil composition does
not add up to 100%, but rather 120%. Id. at 5. The Examiner also takes
note with the term “nominal” because it “is known mainly for monetary
calculation,” and, thus, it is not clear how it applies to a “material
percentage,” such as the claimed soil components and additives. Id. at 3–4.
The Examiner further contends that the Specification does not
adequately describe Appellant’s calculation noted above, and, thus, a skilled
artisan would not know how to make such calculations. Id. at 4. For
example, the Examiner points to the Specification’s use of the term “and/or”
in the sentence “[a]dditionally, the soil blend A may include variations in the
soil composition and/or the additive amounts of up to 5% of the nominal
values in one embodiment, up to 10% in another embodiment, and up to
20% in a further embodiment.” Id. (citing Spec. para. 38) (italics added).
The Examiner explains that it is not clear whether the described variation of
5%, 10% or 20% applies to the soil composition, the additives, or both. Id.
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
Appeal 2020-000393
Application 13/724,689
6

F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). When an explicit limitation in
a claim is not present in the written description it must be shown that a
person of ordinary skill would have understood that the description requires
that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Here,
we agree with Appellant that a person of ordinary skill in the art would
know to make the calculations described above. Reply Brief (filed Oct. 23,
2019, hereinafter “Reply Br.”) 4. Calculating a percentage (i.e., 20%) of a
quantity (i.e., 40% peatmoss) to yield a range for the quantity is a simple
straightforward calculation and we are not inclined to fault Appellant for not
explicitly reciting the formula for such calculation in the Specification.
Furthermore, the Examiner’s position that the terms “nominal,”
“and/or,” and “approximately” are not supported by Appellant’s original
disclosure because their meaning is not clear is untenable because such
arguments “appear[] to be a belated indefiniteness rejection,” and, thus, a
skilled artisan would not need to evaluate the meaning of these terms under a
“written description” rejection. Reply Br. 6.12 Nonetheless, we agree with
Appellant that a person of ordinary skill in the art would understand that the
terms “nominal,” “and/or,” and “approximately” are used according to their
ordinary and customary meanings. Id. at 3–5. Accordingly, a person of
ordinary skill in the art would readily understand that “the referenced
‘nominal values’ of paragraph [0038] are the numerical quantities listed in
paragraph [0037], and that the actual values for the soil medium can vary by
up to 20% from the nominal values.” Id. at 3 (citing https://www.merriam-

12 A claim is properly rejected as indefinite if, after applying the broadest
reasonable interpretation in light of the Specification, the metes and bounds
of a claim are not clear because the claim contains words or phrases whose
meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
Appeal 2020-000393
Application 13/724,689
7

webster.com/dictionary/nominal (which defines “nominal” as
“approximate”)); see id. at 5. Similarly, a skilled artisan would understand
that the term “and/or” as used in paragraph 38 of Appellant’s Specification
means “‘variations in the soil composition and the additive amount’ or
‘variations in the soil composition or the additive amounts’ of ‘up to 20%.’”
Id. at 4.
Lastly, we are not persuaded by the Examiner’s position that because
the claimed soil composition may not add up to 100%, the claimed ranges
are not supported by Appellant’s original disclosure. See Ans. 5. As
discussed supra, paragraphs 37 and 38 of Appellant’s Specification and
mere application of simple calculations provide adequate support for the
claimed ranges. Moreover, a person of ordinary skill in the art would readily
know to choose the percentages of the soil components, i.e., peatmoss,
Coconut coir, and Cyprus bark sawdust, and the additives, such that they add
up to 100%. An artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962). Here, the claimed ranges of the soil components, i.e.,
peatmoss, Coconut coir, and Cyprus bark sawdust, and of the additives, are
mere ranges from which a skilled artisan, using judgment and skill, can
select the appropriate percentages/quantity such that the total adds up to
100%. After all, “a person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR v. Teleflex, 550 U.S. 398, 421 (2007).
In conclusion, for the foregoing reasons, we find that the disclosure
reasonably conveys to an artisan that the inventor had possession of the
claimed subject matter. We do not sustain the rejection under 35 U.S.C.
§ 112, first paragraph, of claims 8–16, 25, 27, 29 and 31 as failing to comply
with the written description requirement.
Appeal 2020-000393
Application 13/724,689
8

Rejection II
The Examiner finds that it is not clear whether the “plant” is being
positively recited because in independent claim 8, from which claims 16, 27,
and 31 depend, the “plant” is functionally recited. Final Act. 4.
“Applying the broadest reasonable interpretation of a claim, . . . the
Office establishes a prima facie case of indefiniteness with a rejection
explaining how the metes and bounds of a pending claim are not clear
because the claim contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam). In this case,
independent claim 8 requires, inter alia, an “assembly” including a
“container” having a “cavity configured to hold . . . a plant.” Appeal Br. 40
(Claims App.) (emphasis added). In light of the phrase “configured to,” we
agree with Appellant that independent claim 8 does not positively recite a
“plant” as part of the claimed “assembly.” Appeal Br. 12. See In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc.
v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)) (The
phrase “configured to” is generally used to mean “made to” or “constructed
to” perform the claimed function.).
Claim 16 recites “[t]he assembly according to claim 8, wherein the
assembly comprises the plant,” claim 27 recites “[t]he assembly of claim 8
. . . wherein the assembly comprises the orange rootstock seedling,” and
claim 31 recites “[t]he assembly of claim 8 . . . wherein the assembly
comprises the citrus plant.” See id. at 42, 43 (Claims App.) (emphasis
added). Therefore, in light of the dependency of claims 16, 27, and 31 from
independent claim 8 and use of the transitional term “comprises,” it is clear
that claim 16 requires a “plant,” claim 27 requires an “orange rootstock
seedling,” and claim 31 requires a “citrus plant.” See Ans. 7.
Appeal 2020-000393
Application 13/724,689
9

Accordingly, for the foregoing reasons, we do not find the recitations
in these dependent claims unclear, and do not sustain the rejection under 35
U.S.C. § 112, second paragraph, of claims 16, 27, and 31 as being indefinite.

Rejection III
The Examiner finds that the limitations “wherein the plant is an
orange rootstock seedling,” as per claim 25, and “wherein the plant is a
citrus plant,” as per claim 29, do not further limit the subject matter of
independent claim 8, from which claims 25 and 29 depend, “because the
plant was not positively claimed in claim[] 8.” Final Act. 5. According to
the Examiner, “further defining something that is not claimed is not further
limiting the parent claim.” Id. at 5–6.

Claim 25
In addition to the limitation of “the plant is an orange rootstock
seedling,” claim 25 further recites “wherein the container and the soil
medium are configured for growing the orange rootstock seedling in the soil
medium.” See Appeal Br. 42 (Claims App.). Thus, as independent claim 8,
from which claim 25 depends, recites an “assembly” including a “container”
having a “cavity configured to hold the soil medium and a plant growing in
the soil medium,” Appellant is correct that “the assembly of claim 25 is
further limited because the container and soil medium are configured for
growing” a specific type of plant, namely, “an orange rootstock seedling.”
Id. at 18 (emphasis added). In other words, the limitation “the container and
the soil medium are configured for growing the orange rootstock seedling in
the soil medium” of claim 25 further limits the limitation “the container . . .
configured to hold the soil medium and a plant growing in the soil medium”
Appeal 2020-000393
Application 13/724,689
10

of claim 8, from which claim 25 depends. Therefore, we do not sustain the
rejection under 35 U.S.C. § 112, fourth paragraph, of claim 25 as being of
improper dependent form for failing to further limit the subject matter of the
claim from which they depend.

Claim 29
Appellant argues that “the Examiner has failed to describe a proper
legal basis for the rejection” because “the ‘configured to’ clause should be
given limiting effect,” and, moreover, the Examiner’s rejection is illogical
because “one ‘configured to’ clause can include limitations that are not
included in another ‘configured to’ clause.” Appeal Br. 18–19. According
to Appellant, “the assembly of claim 29 is further limited as the cavity is
configured to hold a citrus plant.” Id. at 19.
We are not persuaded by Appellant’s arguments because the language
of claim 29 does not further limit the scope of claim 8 as these claims recite
non-overlapping subject matter. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457
F.3d 1284, 1291 (Fed. Cir. 2006). (“In other words, claim 6 does not narrow
the scope of claim 2; instead, the two claims deal with non-overlapping
subject matter.”). More specifically, in contrast to claim 25, claim 29 does
not include a limitation in which the container and soil medium are
configured for growing a specific type of plant, namely, “a citrus plant.” See
Appeal Br. 43 (Claims App.). Rather, claim 29 merely recites “wherein the
plant is a citrus plant,” which does not further narrow claim 29 because
parent claim 8 does not positively recite a “plant” as part of the claimed
“assembly.” See Ans. 9.
Therefore, as claim 29 recites certain subject matter that does not
overlap with the subject matter of its parent claim 8, claim 29 fails to satisfy
Appeal 2020-000393
Application 13/724,689
11

35 U.S.C. § 112, fourth paragraph. See Pfizer, 457 F.3d at 1291. As such,
we sustain the rejection under 35 U.S.C. § 112, fourth paragraph, of claim
29 as being of improper dependent form for failing to further limit the
subject matter of the claim from which they depend.

Rejection IV
The Examiner finds that the combined teachings of Lawton, AAPA,
Rubin, and Detweiler disclose most of the limitations of independent claims
8 and 22, but do not disclose the claimed ranges of the soil components and
additives of the soil medium. Final Act. 6–9 (citing Lawton, Fig. 1; AAPA,
Spec. para. 85; Decision, 12; Rubin, paras. 32, 33; Detweiler, paras. 144,
148, 153). Nonetheless, the Examiner determines that it would have been
obvious for a person of ordinary skill in the art to have reached the claimed
ranges of the soil components and additives of the soil medium by routine
experimentation as these values are not critical or present unexpected results.
Id. at 9–10 (citing In re Aller, 220 F.2d 454 (CCPA 1955)). According to
the Examiner, Appellant has not set forth evidence of unexpected results,
and, moreover, because the claimed ranges are not supported by Appellant’s
original disclosure, “the result effective variable rationale would be
obvious.” Ans. 10.
Appellant argues that the Examiner has “failed to explain how the
cited references demonstrate that the claimed component percentages and
additive amounts are result-effective variables such that it would be obvious
to arrive at the claimed component percentages and additive amounts by
optimization or routine experimentation.” Appeal Br. 34. According to
Appellant, “whether the values or ranges are critical or unexpected results is
Appeal 2020-000393
Application 13/724,689
12

legally irrelevant and cannot remedy the Examiner's failure to establish the
claimed features are result-effective variables.” Id.
We disagree with the Examiner’s statement that “appellant claimed
numerous ranges for the soil components and additives but have no support
in the original specification as stated in the above comments [and] [t]hus,
based on this, the result-effective variables are not unexpected.” Ans. 20.
Per our discussion supra in Rejection I, we find the claimed ranges of the
soil components and additives of the soil medium, as recited in independent
claims 8 and 22, are sufficiently supported by Appellant’s original
disclosure. As such, the factual underpinning for the Examiner’s position
lacks support and the Examiner has not shown otherwise that the claimed
soil components and additives were known result-effective variables.
We appreciate the Examiner’s position that it is not inventive to
discover optimum or workable ranges by routine experimentation. See Final
Act. 9–10. However, as discussed in our Decision, optimization is premised
on the optimized variable being a “result-effective variable.” Decision, 12
(citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977)). Here, the Examiner
has not sufficiently shown that the specific recited values of the soil
components and additives of the claimed soil medium achieve a recognized
result; and, thus, has not shown by a preponderance of the evidence that the
claimed ranges are result effective.
Furthermore, optimization in Aller is premised on the general
conditions of a claim being disclosed in the prior art. See Aller, 220 F.2d at
456. The Federal Circuit has provided guidance on whether the “general
conditions” of the claim are disclosed and states that “[t]he normal desire of
scientists or artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed set of percentage
Appeal 2020-000393
Application 13/724,689
13

ranges is the optimum combination of percentages.” In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003). In Peterson, the Federal Circuit
concluded that “a prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness.” Peterson, 315 F.3d at 1330. Similarly, the Federal
Circuit found that a prima facie case of obviousness exists where the
claimed ranges or amounts do not overlap with the prior art but are merely
close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985). Here, the Examiner has not established that the prior art
relies on any particular amounts of Coconut coir, Cypress bark sawdust,
dolomite limestone, gypsum, micronutrients, humic acid, and nitrogen-
phosphorous-potassium (NHK) supplement. See Ans. 22–23 (citing Spec
paras. 55, 64).
For example, although AAPA describes a standard citrus nursery soil
mixture containing 78% or 70% Canadian peatmoss, 12% or 20%
composted pinebark, and 10% perlite, AAPA but does not include many of
the other recited components. Spec. paras. 55, 65. Furthermore, even
though we appreciate that Rubin discloses a soil medium including
peatmoss, Coconut coir, and sawdust and one more additives, such as
limestone, micronutrients, and fertilizer, whereas Detweiler discloses a plant
growing medium containing dolomite limestone, gypsum, humic acid, and
slow-release NPK supplement, we note the Examiner did not make any
findings regarding the quantitative amounts (percentage) of each component.
See Final Act. 8–9 (citing Rubin, paras. 32, 33; Detweiler, paras. 42, 144,
148, 153, 240, 241, 234). As such, the Examiner has not established that the
general conditions of independent claims 8 and 22 are disclosed in the prior
Appeal 2020-000393
Application 13/724,689
14

art. Therefore, Appellant is under no obligation to establish the criticality of
the claimed ranges.
Lastly, even though the claimed soil components and additives are
known in the prior art, this does not mean that every soil medium
composition is obvious to try, without evidence or reasoning tending to
demonstrate the obviousness of the particularly claimed ranges. Therefore,
the Examiner does not adequately explain why a person having ordinary
skill in the art would have chosen the claimed ranges for the soil components
and additives of the soil medium of Lawton, as modified by AAPA, Rubin,
and Detweiler.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under under 35 U.S.C. § 103(a) claims 8–16, 25, 27, 29 and 31 as
unpatentable over Lawton, AAPA, Rubin, and Detweiler.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
8–16, 25, 27,
29, 31
112(a) Written
Description
8–16, 25,
27, 29, 31
16, 27, 31 112(b) Indefiniteness 16, 27, 31
25, 29 112(d) Improper
Dependent
Form
29 25
8–16, 25, 27,
29, 31
103(a) Lawton,
AAPA, Rubin,
Detweiler
8–16, 25,
27, 29, 31
Overall
Outcome
29 8–16, 25,
27, 31

Appeal 2020-000393
Application 13/724,689
15

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)(1)(iv).

AFFIRMED IN PART