Dunn, W. Michael.

Patent Trials and Appeals Board

Sep 27, 2019

13844649 - (R) (P.T.A.B. Sep. 27, 2019)

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.
13/844,649 03/15/2013 W. Michael Dunn 100419 5594
24225 7590 09/27/2019
Gerald T Peters
JTT Patent Services, LLC
335 Lions Garden Minase Grand River
2-15-45 Egawa
Shimamoto-cho Mishima-gun Osaka, 618-0013
JAPAN
EXAMINER
BARLOW, MORGAN T
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
cust8@jttpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte W. MICHAEL DUNN
____________________

Appeal 2019-001837
Application 13/844,649
Technology Center 3600
____________________

Before: JOHN C. KERINS, JILL D. HILL, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
W. Michael Dunn (Appellant) filed a request for rehearing on
August 21, 2019 (hereinafter “Request”), in response to our Decision on
Appeal mailed June 21, 2019 (hereinafter “Decision”), affirming the
Examiner’s rejection of the claims under 35 U.S.C. § 103.

Appeal 2019-001837
Application 13/844,649
2
ISSUES RAISED ON REQUEST FOR REHEARING
I. Did the Patent Trial and Appeal Board (“Board”) misapprehend
the proper test for analogous art?
II. Did the Board overlook the Examiner’s burden to show that one
skilled in the art would have been motivated to combine the prior art
references?
ANALYSIS
37 C.F.R. § 41.52 states in relevant parts:
(a)
(1) Appellant may file a single request for rehearing within
two months of the date of the original decision of the Board. . . .
The request for rehearing must state with particularity the point
believed to have been misapprehended or overlooked by the
Board. Arguments not raised [in the brief before the Board], and
[e]vidence not previously relied upon [in the brief and the reply
brief(s)] are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) through (a)(4) of this section. . . .
(2) Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.50(b) are permitted.
. . . .
(Emphasis added).
Appellant is required to state with particularity the point(s) believed to
have been misapprehended or overlooked by the Board. 37 C.F.R.
Appeal 2019-001837
Application 13/844,649
3
§ 41.52(a)(1). Although the Request for Rehearing does not explicitly
identify any such points, the Board has identified two points for further
consideration, based on arguments presented in the Request.
ISSUE I
Appellant argues that our finding that Krane is analogous art is
inconsistent with relevant precedent. Request 2. According to Appellant,
our “cite to In re Schreiber (Decision, page 5) is not relevant to the question
of nonanalogous art.” Id. Rather, Appellant argues, “the court cases cited
by the Appellant at footnotes 5 and 6 on page 19 of Appellant’s Appeal
Brief . . . are better authorities for purposes of determining whether [Krane]
is analogous art.” Id. The cases cited by Appellant include In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992); In re Klein, 647 F.3d 1343 (Fed. Cir.
2011); Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2014-00367; and
Ex parte Haymond, 41 U.S.P.Q.2d 1217 (BPAI 1996).
The Decision stated that “[c]onsidering Appellant’s Specification,
including the pending claims, we define the field of use as containers
capable of storing seeds and growing medium.” Decision 5–6. Because we
discerned no error in the Examiner’s finding that Krane’s container is
capable of storing seeds and growing medium, we agreed that Krane is
analogous art. Id.
Schreiber does not explicitly support a principle that, where an
intended use of a claimed apparatus is only recited in a claim preamble, the
field of the invention should be defined as an apparatus capable of
performing that intended use. Schreiber held that non-analogous art was not
a defense to an anticipation rejection (128 F.3d at 1478), and then
determined that Schreiber could not make non-analogous art arguments
Appeal 2019-001837
Application 13/844,649
4
against an oil dispenser when his Specification acknowledged that “the prior
art pertinent to his invention include[d] patents related to dispensing fluids.”
Id. at 1479. Thus, we cannot rely on Schreiber to support our determination
that the field of use of Appellant’s invention is properly defined as
“containers capable of storing seeds and growing medium.” However, our
Decision cited Schreiber only to indicate the effect a preamble may have on
a claim. Thus, our reliance on Schreiber was not in error.
In re Bigio, which was cited in the Decision, discusses analogous art
and determining the field of endeavor, and states that “the scope of any field
of endeavor will vary with the factual description of each invention,” and
“the PTO must show adequate support for its findings on the scope of the
field of endeavor in the application’s written description and claims,
including the structure and function of the invention.” 381 F.3d 1320, 1326
(Fed. Cir. 2004).
The art must be analogous to the invention as set forth in the claims,
and it is the field of endeavor of the claimed invention that must be
determined. Therefore, despite Bigio’s statement that support for a finding
of the scope of a field of endeavor should come from “the application’s
written description and claims, including the structure and function of the
invention,” the field of endeavor of the claimed invention should look
particularly, although not solely, to the scope of the claims. See, e.g., id. at
1324–27 (firstly performing claim construction, and secondly determining
field of endeavor based upon the claim construction). As set forth in the
Decision,
The claims recite a structurally complete container
compartment comprising top and bottom portions, and a
frangible strip therebetween. Appeal Br. 42 (Claims App’x).
Score lines defining the frangible strip are also claimed. The
Appeal 2019-001837
Application 13/844,649
5
only reference to seeds and growing medium is in the preamble.
. . . Appellant has defined a structurally complete invention in
the body of the claims, and uses the preamble only to state a
purpose or intended use of the invention. We therefore agree
with the Examiner that “seedling” and “for receiving one or
more seeds and growing medium” define intended use, rather
than structural limitations.
Decision 4.
Based on this claim scope, it is our opinion that the field of endeavor
of the claimed invention should similarly be defined as a container that is
capable of performing the recited intended use of “receiving one or more
seeds and growing medium.” We discern no points that we misapprehended
or overlooked in determining that Krane is directed to analogous art.
Neither Schott Gemtron nor Ex Parte Hammond, cited by Appellant,
are binding precedent. Clay is a very fact-specific case addressing
method/process claims, and does not address limiting a field of invention
based on an intended use recited in a claim’s preamble. See Clay, 966 F.2d
at 659. Appellant has not explained how the reasoning of Clay applies to the
facts at hand in a way that would change the outcome of our decision. In
Klein, also a fact-specific case, the court determined that certain prior art
was not reasonably pertinent to the problem with which the inventor was
involved. See Klein, 647 F.3d at 1347–48, 1350. Notably, mixing of nectar
was recited in both the preamble and the body of the claim. Id. at 1346.
Appellant has not explained how the reasoning of Klein applies to the facts
at hand in a way that would change the outcome of our decision.
ISSUE II
Appellant argues that the Board erred in “adopting the position of the
Examiner that the Examiner is under no burden to show that one of skill in
Appeal 2019-001837
Application 13/844,649
6
the art would have been motivated to remove the lid of [Krane’s] ice cream
container . . . to obtain the seedling container under application.” Request 2.
According to Appellant, provision of such a motivation is required by
Graham v. John Deere Company, 383 U.S. 1 (1966). Id. However, because
we agreed with the Examiner that “Krane has no requirement that its
container remain closed,” and “‘in normal operation of the device of Krane,
the lid would be removed,’” we discern nothing that we misapprehended or
overlooked in not requiring motivation for removing Krane’s lid.
Appellant argues that the claimed invention is a “seedling container”
rather than a “seed container,” such that “the ice cream container of [Krane]
cannot be made to function as the seedling container of the invention under
application unless the lid which Appellant has shown is essential to the
function and operation of the ice cream container of [Krane] be removed.”
Id. This precise argument — based on the difference between containing a
seed and a seedling — was not made in either the Appeal Brief or the Reply
Brief, and therefore raises no issue that we misapprehended or overlooked.
See Appeal Br. 25, 30 (“the ice cream container of KRANE . . . is incapable
of receiving seed(s) and/or growing medium”). Further, Appellant’s claim is
directed to a seedling container’s compartment “for receiving one or more
seeds and growing medium,” and thus need only be capable of receiving a
seed and growing medium. Lastly, the claim does not prohibit a lid. Thus,
in addition to Krane having no requirement that its container remain closed,
the claims do not explicitly recite an open top, providing further support for
the Examiner not requiring a motivation to remove Krane’s lid.
Appellant also argues that the Examiner’s reliance “on the mere fact
that the lid of [Krane] is briefly removed during consumption of ice cream
. . . is no substitute for the requisite showing of why” a skilled artisan would
Appeal 2019-001837
Application 13/844,649
7
have been motivated to remove Krane’s lid. Appellant contends that a
skilled artisan would not have been motivated to remove Krane’s lid to make
it usable as a seedling container— because such removal would have
rendered Krane “unfit for its intended purpose” and changed Krane’s
principle of operation. Id. at 2–3.
As set forth in the Decision and further explained above, “Krane need
not be modified for its container to remain open, because it can be open
during regular use.” Decision 8. With no modification, arguments
regarding fitness for purpose and intended use are not applicable. Further,
Appellant has not specifically defined the intended purpose or principle of
operation, or explained why Krane’s naturally-occurring open container
would render itself unfit for its own intended purpose or change its own
principle of operation. Such conclusory arguments do not persuade us that
we misapprehended or overlooked any points on appeal.
For the above reasons, we conclude that Appellant has not shown any
points which we misapprehended or overlooked in our Decision.
DECISION
We have considered the arguments set forth in Appellant’s Request for
Rehearing. Appellant’s Request is denied to the extent that we do not
modify the outcome of the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED