A.I. INNOVATIONS N.V.

Patent Trials and Appeals BoardSep 2, 2021

2021002107 (P.T.A.B. Sep. 2, 2021)

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. 15/143,359 04/29/2016 Rodney Ruskin 82076 7247 23363 7590 09/02/2021 Lewis Roca Rothgerber Christie LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER TSANG, LISA L ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 09/02/2021 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): PLPrivatePair@lrrc.com pto@lewisroca.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RODNEY RUSKIN and SHMUEL SCHUPAK ____________ Appeal 2021-002107 Application 15/143,359 Technology Center 3600 ____________ Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and WILLAM A. CAPP, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 2, 7–14, and 18–22.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies A.I. INNOVATIONS N.V. as the real party in interest. Appeal Br. 1. 2 Claim 4 is cancelled, and claims 3, 5, 6, and 15–17 are withdrawn from consideration. Appeal 2021-002107 Application 15/143,359 2 CLAIMS [The] invention relates to slow-release materials and a process for controlling the diffusion rate at which a slow-release material diffuses from a substrate or a carrier, and more particularly, to drip irrigation devices having a controlled release rate of a herbicide that inhibits root growth by incorporating a layer of barrier material between the herbicide and the wall of the drip irrigation tube to reduce the movement of the herbicide through the wall of the pipe. Spec. ¶ 2. Independent claim 1, reproduced below, is illustrative. 1. A subsurface drip irrigation device comprising: a tube having a first layer having a releasable herbicide compounded in the first layer or on an inside surface of the first layer, and a second barrier layer adjacent and around the first layer along an entirety of the tube; a plurality of outlets extending through the first layer and the second barrier layer of the tube in a spaced relationship along a length of the tube; and a plurality of drippers positioned on an inside surface of the tube in a spaced relationship such that a dripper of the plurality of drippers is positioned over an outlet of the plurality of outlets, wherein the plurality of drippers each have an inlet for receipt of water flowing through a flow path within the tube, and wherein the second barrier layer prevents outward movement of released herbicide from the first layer directly into surrounding soil and directs the released herbicide into the flow path for exiting the drip irrigation device with the water through the plurality of drippers and the plurality of outlets in the tube to prevent root intrusion into the device. Appeal Br. 17 (Claims App.). Appeal 2021-002107 Application 15/143,359 3 REJECTION Claims 1, 2, 7–14, and 18–223 are rejected under 35 U.S.C. § 103 as being unpatentable over Ruskin (US 6,821,928 B2, issued Nov. 23, 2004) (hereinafter, “Ruskin”), Mavrakis (US 2007/0194149 A1, published Aug. 23, 2007) (hereinafter, “Mavrakis”), and Ruskin US 2013/0192132 A1, published Aug. 1, 2013) (hereinafter, “Ruskin II”). ANALYSIS Claims 1, 2, and 7–12 are directed to a subsurface drip irrigation device. As for claim 1, the Examiner finds that Ruskin discloses a subsurface drip irrigation device comprising a tube (conduit 12) having a first layer (inner liner 22 of supply line 20) and a second layer (outer layer of supply line 20), a plurality of outlets (discharge ports 14) extending through the first and second layers, and a plurality of drippers (emitters 16). Final Act. 3 (citing Ruskin, Figs. 8, 10). The Examiner finds that Ruskin does not disclose: (1) the first layer has a releasable herbicide compounded in the first layer or on an inside surface of the first layer, as claimed, but instead, discloses that the drippers each have an herbicide compounded in the drippers or on an inside surface of the drippers, and (2) the second layer is a barrier layer that prevents outward movement of released herbicide from the first layer directly into surrounding soil and directs the released herbicide into the flow path. Id. at 4 (citing Ruskin, Figs. 8, 10). 3 The rejection heading omits claims 19–22; however, the body of the rejection addresses these claims. Final Act. 3, 10–11. Accordingly, we will consider claims 19–22. Appeal 2021-002107 Application 15/143,359 4 We disagree with the Examiner’s finding that Ruskin does not disclose “a tube having a first layer having a releasable herbicide compounded in the first layer or on an inside surface of the first layer,” as recited in claim 1. We construe the phrase “compounded in the first layer or on an inside surface of the first layer” to mean “compounded in the first layer” or “compounded on an inside surface of the first layer.” Appellant indicates that Figures 3 and 4 and paragraphs 19 and 21 of the Specification support the phrase “or on an inside surface.” See Appeal Br. 2. Appellant contends that Figure 3 shows “a first layer (e.g., an inner layer 44) ha[ving] a releasable herbicide compounded (e.g., a continuous bead 48 of a bioactive material) on an inside surface of the first layer.” Id. at 7 (emphasis added). Figure 3 shows that bead 48 is on the inside surface of inner layer 44. Paragraph 21 discloses that bead 48 can be formed by combining the bioactive material with a polymeric binder, and that bead 48 can be bonded to the inside surface of inner layer 44. Ruskin discloses that in the drip irrigation device shown in Figure 8, “the drip irrigation emitter 16 is installed in a multi-layer supply line 20 having an inner liner 22.” See Ruskin col. 10, ll. 29–31, Fig. 8. Emitter 16 is adjacent to and in contact with inner liner 22 and contains an herbicide. See id. Fig. 8. We determine that this embodiment discloses herbicide compounded on an inside surface of inner layer 22. The embodiment shown in Figure 10 of Ruskin likewise discloses herbicide compounded on an inside surface of inner liner 22. The Examiner finds that Mavrakis discloses a subsurface drip irrigation tube and that it was known in the art to have a releasable herbicide compounded in the tube. Final Act. 4 (citing Mavrakis ¶ 9, Fig. 3). We Appeal 2021-002107 Application 15/143,359 5 agree. The Examiner also finds that Ruskin, as modified by Mavrakis, does not expressly teach which layer the releasable herbicide is compounded in. Id. at 5. However, because Ruskin discloses “a tube having a first layer having a releasable herbicide compounded . . . on an inside surface of the first layer,” it is unnecessary that Mavrakis discloses “a tube having a first layer having a releasable herbicide compounded in the first layer.” For this reason, we do not rely on Mavrakis in the rejection of claim 1, or claim 13 as discussed below. The Examiner finds that Ruskin II is directed to a subsurface irrigation device and teaches a structure having a first layer (herbicide- containing material 102) with a releasable herbicide compounded in the first layer or on an inside surface of the first layer, and a second barrier layer (barrier material 104) adjacent to the first layer, which prevents outward movement of released herbicide from the first layer. Final Act. 5 (citing Ruskin II ¶¶ 48, 59, 68, 70, 71, Figs. 4, 18). The Examiner explains that Ruskin II also discloses a multi-layer structure having “herbicide-containing material” 36 that forms a first layer of material with herbicide compounded therein. Ans. 4 (citing Ruskin II ¶¶ 48–49). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to make Ruskin’s second layer (outer layer of supply line 20) a barrier layer that prevents outward movement of released herbicide into surrounding soil, and directs the released herbicide into the flow path for exiting the drip irrigation device with the water through the drippers and the outlets in the tube to prevent root intrusion into the device, as taught by Ruskin II, “to prevent unnecessary release of herbicide to areas of the soil that do not need it or to oversaturate Appeal 2021-002107 Application 15/143,359 6 areas of the soil immediately adjacent the device . . . and to provide a longer- lasting irrigation device.” Final Act. at 5–6 (citing Ruskin II ¶¶ 70, 74). Appellant contests the rejection of claim 1 based on two arguments. First, Appellant contends that that the applied combination does not disclose or suggest “a second barrier layer” as recited. Appeal Br 5. According to Appellant, “Ruskin, without an outer barrier layer, allowed herbicide to flow directly from the first layer to the surrounding soil thereby allowing the supply of herbicide to be quickly depleted and therefore unavailable for exiting the device through the outlets allowing root intrusion to clog the device and render it inoperable.” Id. at 9 (emphasis added). Appellant acknowledges that Ruskin II discloses a barrier material. Appeal Br. 10. However, Appellant contends that “Ruskin II does not disclose ‘a second barrier layer adjacent and around the first layer along an entirety of the drip irrigation tube . . . wherein the second barrier layer prevents outward movement of released herbicide from the first layer directly into surrounding soil,’” as claimed. Id. According to Appellant, Ruskin II does not disclose the use of a barrier layer for a tubular subsurface drip irrigation device having a first layer such that a barrier layer extends along an entirety of the tube. Ruskin II is directed to a polymeric sheet, and not a tube, having spaced apart nodules or disks containing a[n] herbicide. Id. (emphasis added). These contentions are unpersuasive. First, Appellant’s contention that “Ruskin, without an outer barrier layer, allowed herbicide to flow directly from the first layer to the surrounding soil,” is not supported by evidence. Appeal Br. 9 (emphasis added). Ruskin does not appear to expressly disclose that the outer layer of the drip irrigation device is impermeable to herbicide flow. However, Appellant also does not identify in Ruskin any Appeal 2021-002107 Application 15/143,359 7 disclosure that herbicide flows, or any suggestion that it would necessarily flow, directly from the inner liner to the surrounding soil. As Appellant does not identify any evidence of record that persuasively supports its contention that such herbicide flow would occur in Ruskin, this argument lacks sufficient evidentiary support. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010) (“Unsupported attorney argument . . . is an inadequate substitute for record evidence.”). Second, the Examiner points out that “Ruskin II teaches that the second barrier layer ‘encompasses the entire exposed outer surface of the herbicide-containing component 102 of the co-extrusion’” (Ans. 4–5 (citing Ruskin II ¶ 109)), and that Ruskin’s second layer encompasses the entire exposed outer surface of the first layer (id. at 5 (citing Ruskin Figs. 8, 10)). The Examiner explains that Ruskin II teaches that the second barrier layer prevents outward movement of released herbicide from the first layer (herbicide-containing material 102) directly into surrounding soil and directs the released herbicide into a flow path, i.e., the layer not covered by barrier layer 104 or the bottom layer (barrier layer 110). Id. (citing Ruskin II ¶¶ 70– 71, 112). The Examiner explains that the proposed modification of Ruskin in view of Ruskin II merely modifies the material of Ruskin’s second layer. Ans. 5. Accordingly, the Examiner’s proposed combination of Ruskin and Ruskin II replaces (substitutes) one known material (i.e., the material of Ruskin’s outer layer) with a known, alternative material (i.e., the material of the barrier layer of Ruskin). According to the “simple substitution” rationale, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in Appeal 2021-002107 Application 15/143,359 8 the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. Appellant does not show persuasively that an ordinarily skilled artisan would have lacked the requisite skill to achieve the proposed substitution of materials, or that the result of the substitution would have been unpredictable. Even if Appellant is correct that Ruskin II fails to disclose the use of a barrier layer for a tubular subsurface drip irrigation device, the Examiner does not rely on Ruskin II as teaching a tubular device or a barrier layer that extends along an entirety of the tube. Appeal Br. 10–11. Rather, the Examiner relies on Ruskin as teaching a subsurface drip irrigation device comprising a tube. Ans. 10. Further, the Patent Office need not “seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. The Examiner does not propose to bodily incorporate the barrier layer configuration of Ruskin II into Ruskin, but rather, proposes modifying the outer layer of Ruskin’s tubular structure using Ruskin II’s barrier layer material. Accordingly, Appellant’s first argument is unpersuasive. Second, Appellant contends that the combination of Ruskin and Mavrakis is based on hindsight. Appeal Br. 13. As the rejection of claim 1 does not rely on any teachings of Mavrakis, this argument is unpersuasive. Appeal 2021-002107 Application 15/143,359 9 Thus, we determine that claim 1 is unpatentable over Ruskin and Ruskin II. Claims 13, 14, and 18–22 are directed to a method for delivering an herbicide contained within a subsurface drip irrigation system. Appellant acknowledges that claim 13 recites limitations similar to those discussed above for claim 1. Appeal Br. 15, 18–19 (Claims App.). Accordingly, we determine that claim 13 is also unpatentable over Ruskin and Ruskin II for reasons similar to those for claim 1. Because the rejection of claims 1 and 13 discussed above does not rely on Mavrakis, we do not sustain the Examiner’s rejection of claims 1, 2, 7–14, and 18–22 over Ruskin, Mavrakis, and Ruskin II. We instead enter a new ground of rejection under 37 C.F.R. § 41.50(b) with respect to claims 1 and 13 as being unpatentable under 35 U.S.C. § 103(a) over Ruskin and Ruskin II. We leave it to the Examiner to determine the appropriateness of any additional obviousness rejections of the dependent claims based on this combination of references alone or in view of one or more additional references. CONCLUSION We reverse the rejection of claims 1, 2, 7–14, 18–22 and enter a new ground of rejection of claims 1 and 13. Appeal 2021-002107 Application 15/143,359 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 1, 2, 7–14, 18–22 103 Ruskin, Mavrakis, Ruskin II 1, 2, 7–14, 18–22 1, 134 103 Ruskin, Ruskin II 1, 13 Overall Outcome 1, 2, 7–14, 18–22 1, 13 FINALITY OF DECISION AND RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground[s] of rejection [are] binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground[s] of rejection designated in the decision. Should the examiner reject 4 We do not reach the rejection of claims 2, 7–12, 14, and 18–22. Appeal 2021-002107 Application 15/143,359 11 the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground[s] of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground[s] of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019, June 2020). 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) (2019). REVERSED; 37 C.F.R. § 41.50(b)