Ex Parte Jones et al

Patent Trial and Appeal BoardFeb 25, 2019

13160902 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/160,902 06/15/2011 Lee C. Jones 21917 7590 02/27/2019 MCHALE & SLAVIN, P.A. 2855 PGA BL VD PALM BEACH GARDENS, FL 33410 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. 3686U.001 4286 EXAMINER PHAM, THANH T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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): uspatents@mchaleslavin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE C. JONES and DAVID CARSON1 Appeal2017-006052 Application 13/160,902 Technology Center 3600 Before STEVEN D.A. MCCARTHY, BENJAMIN D. M. WOOD, and NATHAN A. ENGELS, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state that the real party in interest is Jardin Holdings I, LLC. App. Br. 3. Appeal2017-006052 Application 13/160,902 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ I34(a) from a rejection of claims 1, 5-7, 9, 11-17, and 29-32. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. THE INVENTION The claims are directed to a grow bag system with an integrated irrigation tube. Sole independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A grow bag system comprising: a grow bag, said grow bag sized and shaped to contain a growth medium for plants, said grow bag having a top panel for enclosing a top surface of said growth medium, said top panel including a bottom surface, an irrigation tube secured to said bottom surface and extending between said top panel and said growth medium, said irrigation tube including a first end, a second end and a middle portion, said first end of said irrigation tube constructed and arranged for connection to a water supply, said middle portion of said irrigation tube sized for transferring water at a predetermined rate, said middle portion including at least one aperture for transferring said water to said growth medium at a second predetermined rate, said second end constructed and arranged to include a plug member to prevent said water from traversing through said second end; whereby said grow bag is a self-contained unit suitable for accepting a propagative portion of a plant within said growth medium for growth of a portion of said plant within said grow bag and a portion of said plant outside of said grow bag; characterized in that the middle portion of the irrigation tube is secured to the bottom surface of the top panel. Prewer Nalbandian et al. Ticktin REFERENCES us 4,291,499 US 2002/0017055 Al US 2004/0134438 Al 2 Sept. 29, 1981 Feb. 14,2002 July 15, 2004 Appeal2017-006052 Application 13/160,902 Stachnik Ewerszumrode Byles Joaquin Wilde Kokai2 US 2005/0166451 Al US 2007/0267414 Al US 7,407,340 B2 US 2011/0094154 Al GB 2 267 205 A JP 2000-69854 A REJECTIONS Aug.4,2005 Nov. 22, 2007 Aug. 5,2008 Apr. 28, 2011 Dec. 1, 1993 July 3, 2000 Claims 5-7, 9, 11-14, and 30-32 are rejected under 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, 3 as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Claims 1 and 17 are rejected under pre-AIA 35 U.S.C. I02(e)4 as anticipated by Joaquin. Claim 1 is rejected under pre-AIA 35 U.S.C. I02(b) as anticipated by Wilde. Claims 15 and 16 are rejected under pre-AIA 35 U.S.C. I03(a) as unpatentable over Wilde and Nalbandian. 2 Although the published application is owned by Kyodo Shiko KK, and the first named inventor is Tokita Yoshiaki, we will follow Appellants and the Examiner in referring to the reference as "Kokai." 3 Because the application at issue was filed before September 16, 2012, the effective date of the amendments to 35 U.S.C. Â§ 112 enacted by the Leahy- Smith America Invents Act (AIA), we apply the pre-AIA version of this section. See Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, Â§ 4(e), 125 Stat. 284,297 (2011). 4 Because the application at issue was filed before March 16, 2013, the effective date of the AIA amendments to 35 U.S.C. Â§Â§ 102 and 103, we apply the pre-AIA version of these sections. Pub. L. No. 112-29, Â§ 3(n)(l), 125 Stat. at 293. 3 Appeal2017-006052 Application 13/160,902 Claims 15 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Joaquin and Nalbandian. Claims 1 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Prewer and Byles. Claims 1, 5, 11-14, 29, and 30 are rejected under pre-AIA 35 U.S.C. 103 (a) as unpatentable over Kokai and Stachnik. 5 Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Kokai, Stachnik, and Ewerszumrode. Claims 7 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Kokai, Stachnik, and Ticktin. Claims 31 and 32 are rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Kokai, Stachnik, Ticktin, and Ewerszumrode. ANALYSIS Claims 5-7, 11-14, and 30-32-Jndefiniteness Claim 30 depends from claim 29. Claim 29 depends from claim 1 and additionally recites "wherein said irrigation tube is formed from a portion of said top panel." Claim 30 additionally recites "wherein said top panel includes a lap joint whereby a first portion of said top panel extends over a top surface of a second portion of said top panel, said lap joint including a pair of weldments with a space therebetween, said pair of weldments extending substantially the length of said top panel to define said irrigation tube." Claims 5-7, 9, 11-14, 31, and 32 ultimately depend from claim 30. 5 Although the Examiner states that only claim 1 is subject to this rejection, Non-Final Act. 11, the Examiner discusses claims 5, 11-14, 29, and 30 in the analysis. Id. at 13-14. 4 Appeal2017-006052 Application 13/160,902 The Examiner determines that "[ t ]here is insufficient antecedent basis" for the limitation "the length" in claim 30. Non-Final Act. 4. Appellants respond that "'the length' of a physical object is an inherent characteristic that is not insolubly ambiguous." App. Br. 12. Under pre-AIA 35 U.S.C. Â§ 112, second paragraph, the specification must conclude with "one or more claims particularly pointing out and distinctly claiming the subject matter" regarded as the invention. During prosecution, a claim may be rejected as indefinite "when it contains words or phrases whose meaning is unclear," MPEP Â§ 2173.05(e), or if it is "amenable to two or more plausible claim constructions," Ex. Parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). "[T]he failure to provide explicit antecedent basis for terms does not always render a claim indefinite." MPEP Â§ 2173 .05( e ). Rather, if "the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite." Id. In particular, "[i]nherent components of elements recited have antecedent basis in the recitation of the [elements] themselves." Id. Here, we agree that the length of the top panel is an inherent characteristic of the top panel. Length has been defined as "the measure of the greatest dimension of a plane or solid figure." https://www.dictionary.com/browse/length?s=t (last visited Feb. 14, 2019). Thus, "length of the top panel" means the greatest dimension of the top panel. Because the scope of claims 5-7, 11-14, and 30-32 is reasonably ascertainable to those skilled in the art, we do not sustain the rejection of these claims as indefinite. 5 Appeal2017-006052 Application 13/160,902 Claims 1 and 17-Anticipated by Joaquin The Examiner finds, inter alia, that Joaquin's irrigation tube 12 corresponds to claim 1 's irrigation tube, and the panel above irrigation tube 12 corresponds to the claimed top panel. Non-Final Act. 4 (citing Joaquin, Fig.2). The Examiner further finds that the middle portion of Joachim's irrigation tube 12 is secured to the bottom surface of this panel. Id. Appellants dispute this latter finding, asserting that "all of the figures in Joaquin show[] an irrigation tube (12) having a space between it and the bottom surface of the top panel of the grow bag." App. Br. 14. Appellants also refer to Joaquin's teaching that the irrigation tube can be fed through holes in the porous tubular sock that comprises Joaquin's garden growing system. Id. (citing Joaquin ,r 2). Appellants argue that the tube cannot be secured to the sock if it can be fed through it. Id. We are not persuaded that Joaquin teaches the middle portion of the irrigation tube secured to the bottom surface of the top panel. At least Joaquin's Figures 1, 3 and 4 depict a gap between irrigation tube 12 and the bottom surface of Joaquin's top panel. See Joaquin, Figs. 1, 3, 4. Figure 2 appears to depict such a gap as well, although the relationship between tube 12 and the top panel of the sock is less clear in that figure. Further, we agree that Joaquin's teaching that the irrigation tube can be fed through the sock indicates that the tube can move relative to the interior of the sock and thus is not secured to the sock. Therefore, we do not sustain the Examiner's rejection of claim 1 as anticipated by Joaquin. Because claim 17 depends from claim 1, we also do not sustain the rejection of claim 1 7. 6 Appeal2017-006052 Application 13/160,902 Claims 15 and 16-Unpatentable over Joaquin and Nalbandian Claims 15 and 16 depend from claim 1. This rejection relies on the erroneous finding that Joaquin teaches the limitation in claim 1 requiring the middle portion of the irrigation tube to be secured to the bottom surface of the top panel. Non-Final Act. 8-9. Nalbandian is not relied on to cure this deficiency. Id. Therefore, for the reasons discussed above, we do not sustain this rejection. Claim I-Anticipated by Wilde The Examiner finds, inter alia, that Wilde discloses a grow bag with a top panel and irrigation tube, the middle portion of the irrigation tube secured to the bottom side of the top panel. Non-Final Act. 7 (citing Wilde, Fig. 4); Ans. 5 ( citing Wilde, Fig. 4). Appellants counter that "Wilde teaches a separate device for insertion into a grow bag-not an irrigation tube that is secured to the bottom side of the top panel of the grow bag." App. Br. 16 (citing Wilde, 6-7). We are not persuaded that Wilde teaches the middle portion of the irrigation tube secured to the bottom surface of the top panel. Although Wilde's figures, particularly Figure 4, may show elongate pipe 4 adjacent to the bottom side of the top of grow bag 7, that does not mean that the pipe is secured to that surface. On the contrary, as Appellants point out, Wilde teaches that pipe 4 is installed in the grow bag by inserting it through a small incision in one end of the bag and pushing it over the surface of the growing medium. This indicates that the pipe is not secured to the bottom surface of the top panel because it can move relative to that surface. Therefore, we do not sustain the rejection of claim 1 as anticipated by Wilde. Because claim 7 Appeal2017-006052 Application 13/160,902 17 depends from claim 1, we also do not sustain the rejection of claim 17 as anticipated by Wilde. Claims 15 and 16-Unpatentable over Wilde and Nalbandian This rejection relies on the erroneous finding that Wilde teaches the middle portion of the irrigation tube being secured to the bottom surface of the top panel. Nalbandian is not relied on to cure this deficiency. Therefore, for the reasons discussed above, we do not sustain this rejection. Claims 1 and 17-Unpatentable over Prewer and Byles Appellants argue claims 1 and 17 together. App. Br. 18-20. We select claim 1 as representative, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that Prewer teaches all of the limitations of claim 1 except for the plug member placed at the second end of the irrigation tube. Non-Final Act. 9-10 (citing Prewer, 3:20-30, 35-37, Figs. 1--4). For that limitation, the Examiner relies on Byles. Id. at 10 ( citing Byles, 7: 54-- 56). According to the Examiner, it would have been obvious for one of ordinary skill in the art at the time of the invention to modify Prewer' s grow bag to include Byles' plug member "to retain the supplied liquid within the bag system for gradual absorption of medium and/or plants depending on the type of medium and/or plants being used for optimal growth." Id. Appellants dispute that the combination of Prewer and Byles renders claim 1 unpatentable. Appellants first argue that "Prewer fails to disclose, inter alia, a grow bag ... as well as a 'top panel for enclosing a growth medium' as required by Claim 1." App. Br. 18. But Appellants do not explain why the propagator depicted in Figures 1--4 of Prewer is not a grow 8 Appeal2017-006052 Application 13/160,902 bag and upper elongated container 11 is not a top panel, as the Examiner found. Appellants also assert that Prewer does not disclose a growth medium. Id. at 19. We disagree. As the Examiner points out, Ans. 7, Prewer teaches that each individual seed grown in the propagator "may be contained in a bag or sachet of soil, fertiliser and chemical nutrients to assist in the growth of the plant." Prewer, 3:36-38. Appellants counter that this "would make the sachets the grow bag" rather than the tubular components, in which case Prewer's grow bags would not contain an irrigation tube. App. Br. 19. This argument implies that claim 1 requires that the grow bag be completely or substantially filled with growth medium; however, claim 1 contains no such requirement. Appellants do not offer any reason why the sachet of soil, fertilizer and chemical nutrients cannot correspond to the claimed growth medium even though Prewer' s propagator corresponds to the claimed grow bag. Because Appellants have not shown that the Examiner erred in rejecting claim 1 as unpatentable over Prewer and Byles, we sustain the rejection. Claims 1, 5, 11-14, 29, and 30-Unpatentable over Kokai and Stachnik Appellants argue the claims subject to this rejection as a group. App. Br. 20-21. We select claim 1 as representative, and decide the appeal of this rejection on the basis ofclaim 1 alone. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that Kokai teaches all of the limitations of claim 1, specifically finding, inter alia, that the hanging planter depicted in Figures 4(a) and 4(b) ofKokai corresponds to the claimed grow bag, and supply channel 16a corresponds to the irrigation tube. Non-Final Act. 11-12 (citing 9 Appeal2017-006052 Application 13/160,902 Kokai ,r,r 22, 42, 47, Fig. 4). The Examiner acknowledges, however, that Kokai "is silent about an irrigation tube secured to said bottom surface and extending between said top panel and said growth medium, characterized in that the middle portion of the irrigation tube is secured to the bottom surface of the top panel." Non-Final Act. 12. For this limitation, the Examiner relies on Stachnik. Id. ( citing Stachnik, Fig. 2). According to the Examiner: "[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the position of the irrigation tube of Kokai with an irrigation tube secured to said bottom surface and extending between said top panel and said growth medium, characterized in that the middle portion of the irrigation tube is secured to the bottom surface of the top panel as taught by [Stachnik] in order to avoid exposure of the tube for protection and/ or for creating a uniform appearance for the bag system." Id. at 12-13. In response, Appellants argue that "both Kokai and Stachnik disclose hanging plant containers with open top ends" rather than a grow bag with a top panel. App. Br. 20. This argument is unpersuasive. First, Appellants do not explain why Kokai's and Stachnik's plant hangers cannot be considered grow bags. Second, Kokai' s hanging planter does not have an open end because Kokai teaches that the perimeter of the planter is heat-sealed. Kokai ,r,r 28, 47. Third, the Examiner's rejection is based on the finding that Kokai's planter "can be arranged vertically or horizontally" and still be "operable for cultivation," and thus Kokai's top panel is the panel between edges 4 and 12 of the embodiment depicted in Figure 4 of Kokai. Ans. 8. Appellants do not expressly dispute or show error in these findings. Because Stachnik is not relied on to teach the top panel, Appellants' assertion that 10 Appeal2017-006052 Application 13/160,902 Stachnik does not teach that limitation is not responsive to the rejection at lSSUe. Appellants also argue that neither Kokai nor Stachnik teaches an irrigation tube. App. Br. 20. But Appellants do not show error in the Examiner's finding, Non-Final Act. 11, that Kokai's supply channel 16a corresponds to the claimed irrigation tube. Appellants assert that Stachnik' s water compartment "cannot release water into the grow bag," but acknowledges that it "allows vapor to permeate the membrane" into the grow bag. App. Br. 21. However, Stachnik is relied on for its teaching of the position of the irrigation tube ( on the inside rather than the outside of the grow bag), rather than the irrigation tube per se, Ans. 9, and therefore this argument is not responsive to the rejection at issue. In any event, Stachnik's water compartment 23 allows water vapor to pass to the plant soil in compartment 22 to moisten the soil. Stachnik ,r 37, Fig. 2. Because Appellants have not shown that the Examiner erred in rejecting claims 1, 5, 11-14, 29, and 30 as unpatentable over Kokai and Stachnik, we sustain the rejection The Remaining Rejections Appellants have not presented additional substantive arguments in support of the patentability of separately rejected claims 6, 7, 9, 31, and 32. App. Br. 22-23. Therefore, we sustain the rejections of these claims. DECISION For the above reasons, we reverse: (1) the rejection of claims 5-7, 9, 11-14, and 30-32 as indefinite; (2) the rejection of claims 1 and 17 as anticipated by Joaquin; (3) the rejection of claim 1 as anticipated by Wilde; 11 Appeal2017-006052 Application 13/160,902 (4) the rejection of claims 15 and 16 as unpatentable over Joaquin and Nalbandian; and (5) the rejection of claims 15 and 15 as unpatentable over Wilde and Nalbandian. We sustain: (1) the rejection of claims 1 and 1 7 as unpatentable over Prewer and Byles; (2) the rejection of claims 1, 5, 11-14, 29, and 30 as unpatentable over Kokai and Stachnik; (3) the rejection of claim 6 as unpatentable over Kokai, Stachnik, and Ewerszumrode; ( 4) the rejection of claims 7 and 9 as unpatentable over Kokai, Stachnik, and Ticktin; and (5) the rejection of claims 31 and 32 as unpatentable over Kokai, Stachnik, Ticktin, and Ewerszumrode. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 12