Ex Parte Kah et al

Patent Trials and Appeals Board

Jan 28, 2019

12987501 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/987,501 01/10/2011
1912 7590 01/30/2019
AMSTER, ROTHSTEIN & EBENSTEIN LLP
90 PARK A VENUE
NEW YORK, NY 10016
FIRST NAMED INVENTOR
Carl L.C. Kah JR.
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.
47587/0005 8657
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
PTODOCKET@ARELA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL L.C. KAH JR. and DEBORAH A VIS
Appeal 2018-004620
Application 12/987,501 1
Technology Center 3600
Before LINDA E. HORNER, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Wells (US 6,789,354 B2, issued September 14, 2004) and Brown
(US 3,971,159, issued July 27, 1976). Final Office Action (March 20, 2017,
"Final Act."). 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify one of the named inventors, Carl L.C. Kah Jr., as the
real party in interest. Appeal Brief (November 11, 2017, "Appeal Br.") 3.
2 Claims 1-16 and 18 are withdrawn. Final Act. 1.
Appeal 2018-004620
Application 12/987,501
The Examiner rejected the sole claim on appeal as unpatentable over
the combination of Wells and Brown. Appellants do not contest the
Examiner's findings as to the scope and content of Brown or the Examiner's
proposed modification of Wells with the teaching of Brown. Appellants
contest, however, the Examiner's findings that Wells discloses certain
claimed subject matter. For the reasons explained below, we agree with
Examiner's findings that Wells discloses the features as recited in claim 17.
Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method of providing a
pressurized watering system for use with Christmas trees or other plant life.
Specification (January 10, 2011, "Spec.") ,r 2. Claim 17 is reproduced
below.
1 7. A method for supplementing nutrients and fluid to
a tree without roots comprising:
creating a hole of a diameter of approximately three
eighths of an inch in a trunk of the tree, said hole having a
length of at least half a diameter of the trunk of the tree;
an interface device configured and operable to provide at
least water [to the] tree in the hole;
connecting the interface device to a pressurized supply of
water and nutrients;
operating a pump device to establish and maintain a high
pressure in the pressurized supply of water and nutrients; and
supplying water and nutrients to the tree through the
interface in a substantially constant manner over a period of
time after operation of the pump is complete using the high
pressure of the pressurized supply of water and nutrients.
Appeal Br. 11 (Claims Appendix).
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Appeal 2018-004620
Application 12/987,501
ANALYSIS
Appellants contest three of the Examiner's findings about Wells.
First, Appellants contest the Examiner's finding that Wells's liquid
composition includes water and nutrients. Appeal Br. 6. The last limitation
of claim 17 includes the step of supplying "water and nutrients" to the tree.
The Examiner found that Wells explicitly discloses a device for supplying
nutrients to a tree. Final Act. 3; Examiner's Answer (January 30, 2018,
"Ans.") 3. We agree with this finding. Specifically, Wells describes devices
for injecting trees with "therapeutic liquid compositions such as pest control
agents and nutrients." Wells 1: 15-17 ( emphasis added).
The Examiner acknowledges that Wells does not explicitly disclose
supplying water to the tree, but the Examiner found that "water would be
required to make a 'liquid composition,' as disclosed by Wells." Final
Act. 4 (citing Wells 5:26). The Examiner alternatively reasoned that it
would have been obvious to modify "the interface device and pressurized
supply of Wells to deliver water to the tree, in order to meet the specific
needs of a user and additionally irrigate the tree." Id.
Appellants contest the Examiner's finding that Wells's liquid
composition necessarily includes water. Appeal Br. 6. We agree with
Appellants that the "therapeutic liquid composition" disclosed in Wells
could be formed using fluids other than water, and thus, water is not a
necessary component of Wells's liquid composition. Thus, the Examiner
has not provided an adequate basis on which to find that Wells's liquid
composition inherently includes water.
But Appellants do not address the Examiner's alternative reasoning
that it would have been obvious to modify Wells to include water in its
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Application 12/987,501
liquid composition. The Examiner's reasoning is based on rational
underpinnings. For instance, Brown shows that it was well known in the art
to use water as a solvent when forming a liquid composition to treat trees.
Brown, 1 :40--42. Because the Examiner's alternative reasoning is based on
rational underpinnings, and because Appellants do not contest this
alternative basis set forth in the Final Office Action, Appellants' first
argument does not identify error in the Examiner's rejection.
Second, Appellants contest the Examiner's finding that Wells
discloses "operating a pump device to establish and maintain a high pressure
in the pressurized supply of water and nutrients" as claimed. Appeal Br. 6.
In addition to arguing that Wells does not disclose a pressurized supply of
water and nutrients, which we address above, Appellants argue that Wells's
cap 22 is not a "pump device that establishes and maintains a high pressure"
in the pressurized supply of water and nutrients because cap 22 provides for
a one-time injection of material and does not maintain pressure at all. Id.
at 7.
For the reasons that follow, we find that Wells discloses operating a
pump device and that operation of Wells's device establishes and maintains
a high pressure in the pressurized supply of liquid composition. Wells
discloses plant injection capsule 20 formed of cap 22 hermetically sealed to
receptacle 24 and containing therapeutic liquid composition 66. Wells,
4:42--46, 5:25-26. Receptacle 24 includes aperture 42 that is sealed by
dislodgeable "knockout" membrane 70. Id. at 5:39-40. Cap 22 includes
rigid central portion 50 circumscribed by annuluses 52A, 52B, 52C that are
bridged by stepped ridges 54A, 54B, 54C so that the cap is initially convexly
arcuate, as shown in Figure 5, and can flex inwardly, as shown in Figure 6,
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Application 12/987,501
when a downward force is applied to central portion 50. Id. at 5:9-17.
Depending downwardly from central portion 50 is socket 60 having
hexagonal-shaped bore 62. Id. at 5: 17-20, Fig. 4B. Depending upwardly
from floor 28 of receptacle 24 is upwardly tapering spindle 30. Id. at 4:51-
52, Fig. 3. Wells describes that in the initial, unpressurized state shown in
Figure 5, the end of socket end 60 is disposed only about halfway down
spindle 30. Id. at 5:34-36. Wells describes that depressing central portion
50 forces spindle 30 deeper into bore 62 of socket 60 so that the end of the
socket is proximate floor 28, and an interference fit is formed between the
outer surface of spindle 30 and the inner surface of bore 62 to maintain
socket 60 in this position. Id. at 5:49-52. Wells describes that depressing
cap central portion 50 "pre-pressuriz[es] the capsule." Id. at 5:43--44. Wells
describes that aperture 42 is slidably positioned over an end of filling tube
44, which has been inserted into a pre-drilled hole in a tree trunk, and force
7 6 is applied to the capsule to cause the end of filling tube 44 to dislodge
membrane 70. Id. 5:45-59, Fig. 6.
We agree with the Examiner's finding that Wells's cap 22 is a "pump
device" based on the ordinary meaning of "pump" as presented by the
Examiner. Ans. 5 ( defining a "pump device" as "a device that raises,
transfers, delivers, or compresses fluids or that attenuates gases especially by
suction or pressure or both") ( citing Merriam-Webster Dictionary). 3 We
agree with the Examiner that the broadest reasonable interpretation of
"pump device" does not require the device to be configured for repeated use.
In other words, a single use of the device to raise pressure suffices under the
3 See first definition for "pump" in Merriam-Webster on-line dictionary at
https://www.merriam-webster.com/dictionary/pump.
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Application 12/987,501
ordinary meaning of "pump." Appellants do not direct us to any language in
the claim or description in the Specification that would necessitate a
narrower interpretation.
Further, we agree with the Examiner's determination that "high" is
not defined in Appellants' Specification, and, thus, depression of cap 22 in
Wells establishes the claimed "high pressure" in the same manner that
depression of hand pump 29 in Appellants' described invention provides the
recited pressure. Ans. 5. In fact, Appellants' Specification does not use the
term "high pressure" at all. The Specification describes only that hand pump
29 "allows pressure to be easily established and maintained by the user" and
that the "higher pressure ensures pushing fluid into the tree trunk IA." Spec.
,r 23. We understand "higher pressure" in paragraph 23 to refer to the fact
that the fluid in container 27 is at a pressure higher than the pressure at the
tree trunk so that fluid flows from the container to the tree. This description
does not otherwise clarify what is meant in claim 17 by "high pressure."
We also agree with the Examiner's determination that because
Wells's cap is locked in a pre-pressurized condition due to the interference
fit between spindle 30 and bore 62 of socket 60, pressure is maintained until
membrane 70 is dislodged. Ans. 5. Specifically, Wells's reference to "pre-
pressuriz[ing] the capsule" means that, in use, cap central portion 50 is
depressed, and the capsule is thereby pressurized, prior to applying force 7 6
to dislodge membrane 70. Thus, after cap central portion 50 is depressed
and before membrane 70 is dislodged to allow the liquid composition flow
out of the capsule, the capsule is maintained at a high pressure due to
depressing of cap 22, the interference fit between cap 22 and receptacle 24,
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Application 12/987,501
and the fact that the capsule remains hermetically sealed. Thus, Appellants'
second argument does not identify error in the rejection.
Third, Appellants contest the Examiner's finding that Wells discloses
"supplying water and nutrients to the tree through the interface device in a
substantially constant manner over a period of time after operation of the
pump is complete." Appeal Br. 7. Appellants argue that because Wells's
device is used to provide a single, one-time injection, it cannot supply water
and nutrients "in a substantially constant manner." Id. Appellants further
argue that because a user must apply pressure, i.e., force 7 6, to the container
to cause filling tube 44 to dislodge membrane 70 to allow flow from the
container, "liquid is only delivered with the application of pressure by the
user and thus does not and cannot continue to flow after operation of the
pump." Reply Brief (March 30, 2018) 3.
We agree with the Examiner that the operation of Wells's pump, i.e.,
cap 22, is complete once the cap has been depressed and locked into its
pressurized position on spindle 30. Ans. 6. Further, we agree with the
Examiner, as discussed in detail above, that the flow of liquid composition
begins in Wells only after the above-described operation of the pump is
complete. Id. (citing Wells, 3:64--4:2, 5:43-55). The Examiner further
found that "Wells discloses supplying the liquid 'in a substantially constant
manner,' i.e. continuously, because of the constant pressurized state of the
container (via the friction fit) and the open position of the membrane."
Ans. 7. This determination is reasonable and supported by the description of
the device in Wells, and Appellants do not provide persuasive evidence
refuting the fact that fluid would flow unimpeded from capsule 20 through
tubing 44 to the tree once membrane 70 is dislodged.
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Further, as noted by the Examiner, the claim language broadly recites
that the flow is provided in a substantially constant manner "over a period of
time" after operation of the pump is complete. We agree with the
Examiner's interpretation of this claim language as encompassing a
substantially constant flow for any period of time, however fleeting, after
operation of the pump is complete. Neither the claim language nor
Appellants' Specification necessitates a narrower interpretation, nor have
Appellants presented us with one. Thus, Appellants' third argument does
not identify error in the Examiner's rejection.
For these reasons, we sustain the rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Wells and Brown.
DECISION
The decision of the Examiner rejecting claim 17 is affirmed.
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)(l )(iv).
AFFIRMED
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