Ex Parte Muthiah et al

Patent Trial and Appeal Board

Apr 22, 2013

10873501 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JENO MUTHIAH, GERALD K. WHITE,
DUANE R. RUBASH, and WILLIAM B. WHITE
____________

Appeal 2011-002923
Application 10/873,501
Technology Center 3600
____________

Before LINDA E. HORNER, PATRICK R. SCANLON, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jeno Muthiah et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 66-68 and 70-97, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellants’ claimed invention “relates to highly absorbent products
that can be . . . utilized to absorb and retain water and nutrients contained in
soil or any other growing media, thereby optimizing plant growth by
minimizing loss of water and nutrients, conserving water, and/or reducing
the need for future water.” Spec. 1, ll. 13-21. Claims 96 and 97 are
independent and are reproduced below.
96. A plant root ball contained in a wrap comprising a ball of
soil containing a plant with roots; said wrap consisting of
burlap with superabsorbent polymeric powder stably adhered to
said wrap by a resinous material whereby, upon contact with
water, said stably adhered superabsorbent polymeric powder is
adapted to collect, store, and dispense water to said roots.

97. A plant root ball contained in a wrap comprising a ball of
soil containing a plant with roots: said wrap consisting of
burlap and at least one first container partially filled with
superabsorbent polymeric powder affixed thereto thereby
resulting in sufficient free volume in said container to permit
said superabsorbent polymeric powder to absorb water and
expand upon contact with said water and to collect, store, and
dispense said water to said roots.

THE EVIDENCE
The Examiner relies upon the following evidence:
Lundberg US 4,193,909 Mar. 18, 1980
Rogers US 4,534,130 Aug. 13, 1985
Krueger US 5,241,783 Sep. 7, 1993
Date US 5,384,368 Jan. 24, 1995
Weder ‘644 US 5,515,644 May 14, 1996
Weder US 5,522,202 Jun. 4, 1996
Busby US 6,612,072 B2 Sep. 2, 2003
Obonai US 6,615,539 B1 Sep. 9, 2003

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THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 66, 70, 71, 73, 74, 79-81, 83, 85-87, 96, and 97 under
35 U.S.C. § 103(a) as unpatentable over Weder and Krueger;
2. Claims 67, 68, 73, and 74 under 35 U.S.C. § 103(a) as unpatentable
over Weder, Krueger, and Lundberg;
3. Claims 72, 84, 88-91, and 93-95 under 35 U.S.C. § 103(a) as
unpatentable over Weder, Krueger, and Weder ‘644;
4. Claims 75 and 77 under 35 U.S.C. § 103(a) as unpatentable over
Weder, Krueger, and Obonai;
5. Claims 76 and 78 under 35 U.S.C. § 103(a) as unpatentable over
Weder, Krueger, and Date;
6. Claim 82 under 35 U.S.C. § 103(a) as unpatentable over Weder,
Krueger, and Busby; and
7. Claim 92 under 35 U.S.C. § 103(a) as unpatentable over Weder,
Krueger, and Rogers.
ANALYSIS
Rejection 1
Claim 96
With regard to claim 96, the Examiner found that Weder teaches fresh
plants contained in a burlap wrap (10) with superabsorbent polymeric
powder (54) stably adhered to the wrap by a resinous material (52, 72).
Ans. 4. The Examiner relied on Krueger to teach “a plant wrap wherein the
plant includes a ball of soil and roots.” Id. at 4-5.
Appellants argue that the Examiner erred in finding that Weder
discloses a “wrap consisting of burlap with superabsorbent polymeric
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powder stably adhered to said wrap by a resinous material” as called for in
claim 96. App. Br. 18-19.
The Specification describes various methods of stably adhering a
superabsorbent polymeric powder to a substrate material (wrap) using a
resinous material. See, e.g., Spec. 6, l. 22 – 8, l. 16. Each of the methods
involves applying a resinous material to the substrate to form a coating
thereon, either before, simultaneously with, or after application of the
superabsorbent polymeric powder to the substrate, and curing or melting the
resinous material to stably adhere the superabsorbent powder to the
substrate. Id. Based on this description in the Specification, we agree with
Appellants that one of ordinary skill in the art would understand “stably
adhere” as used in claim 96 to mean “[t]he resinous material serves to stably
adhere the [superabsorbent polymeric] powder to the burlap wrap through
contact of solidified resin with the [superabsorbent polymeric] powder and
the wrap.” App. Br. 18.
Weder discloses a sheet of material 10 that can be made of burlap and
rolled upon itself to form a wrapper 33 for holding a floral grouping. Col. 3,
ll. 3-9; fig. 4. In one embodiment, Weder discloses a water holding and
releasing material 54, which may be a superabsorbent polymeric powder,
“disposed on a portion of the upper surface 48 of the sheet of material 10.”
Col. 4, l. 66-67; id. at col. 5, l. 10-14. Weder discloses that the sheet 10
includes an extension 38 having a connecting bonding material 52 disposed
on the upper surface 48 of the extension 38 and extending along a first end
40 and the second side 46 of the extension 38. Col. 4, ll. 38-50; fig. 1.
Weder discloses that after the water holding and releasing material 54 and
the floral grouping have been positioned on the sheet of material 10, the
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second side 46 of extension 38 is folded upwardly to position the extension
38 over a portion of the sheet of material 10, as shown in Figure 2. Col. 5,
ll. 29-37. Weder discloses that “[i]n this position, the connecting bonding
material 52 bondingly engages the adjacent portion of the upper surface 20
of the sheet of material 10 to bondingly connect a portion of the extension
38 to the upper surface 20 of the sheet of material 10.” Col. 5, ll. 37-41.
Weder further discloses that “the connecting bonding material 52 cooperates
with the extension 38 to substantially surround the water holding and
releasing material 54 with a portion of the extension 38 near the first end 40
thereof extending outwardly a distance beyond the first end 12 of the sheet
of material 10.” Col. 5, ll. 45-50. As such, in this embodiment, the
connecting bonding material 52 bonds a portion of the extension 38 to the
upper surface 20 of the sheet material 10 to substantially surround the water
holding and releasing material 54. The connecting bonding material 52 does
not come into contact with the water holding and releasing material 54 so as
to stably adhere the material 54 to the wrap 10. Thus, Weder does not
disclose that the water holding and releasing material 54 (superabsorbent
polymeric powder) is stably adhered to the sheet material 10 (wrap) by the
connecting bonding material 52 (resinous material) as called for in claim 96.
Weder discloses that “[i]n some applications, the closure bonding
material 24 may be eliminated, in this instance, the sheet of material 10
without the closure bonding material 24 is wrapped about the floral grouping
26 and the water holding and releasing material 54 is incorporated in the
wrapper so formed.” Id. at col. 6, ll. 22-26. The closure bonding material
24 is described in Weder as being used to bondingly engage and contact an
adjacent portion of the lower surface 22 of sheet 10 to bondingly connect the
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first end 12 of sheet 10 to another portion of the sheet for securing sheet 10
in the form of a wrapper 33 about a floral grouping. Id. at col. 3, ll. 44-50.
As such, we understand the passage in column 6 of Weder to disclose that
the water holding and releasing material 54 can be positioned on the sheet 10
as discussed supra and the sheet 10 can be wrapped around a floral grouping
without the wrapper 33 being bondingly secured to itself. We do not
understand this passage of Weder to disclose securely adhering the water
holding and releasing material 54 to the sheet 10 by a resinous material.
Weder discloses another embodiment in which “the water holding and
releasing material 54b is disposed in [a] packet receiving space 68” formed
in a packet 66. Id. at col. 7, ll. 28-29; figs. 6, 7. Weder discloses that the
packet 66 is closed by moving adjacent portions of the upper end 70 of the
packet 66 into engagement “whereby the connecting bonding material 72
bondingly engages and bondingly connects to adjacent portions of the packet
66 near the upper end 70 thereof thereby closing the upper end 70.” Id. at
col. 7, ll. 32-37. In this embodiment, the connecting bonding material 72
bonds the upper end 70 of the packet 66 to itself to substantially surround
the water holding and releasing material 54. The packet 66 is then
bondingly connected to sheet of material 10 via connecting bonding material
74. Id. at col. 7, ll. 41-48; fig. 7. The connecting bonding material 72, 74
does not come into contact with the water holding and releasing material 54
so as to stably adhere the material 54 to the wrap 10. Thus, Weder does not
disclose that the water holding and releasing material 54 is stably adhered to
the sheet material 10 by the connecting bonding material 72, 74 as called for
in claim 96.
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As such, we agree with Appellants that the Examiner erred in finding
that Weder discloses a wrap with superabsorbent polymeric powder stably
adhered to the wrap by a resinous material, as called for in claim 96.
According, we reverse the rejection of claim 96 and its dependent claims 66,
73, and 74 as unpatentable over Weder and Krueger.
Claim 97
With regard to claim 97, the Examiner found that Weder teaches a
container (66) partially filled with superabsorbent polymeric powder (54)
affixed thereto. Ans. 4. The Examiner relied on Krueger in the rejection of
each independent claim to teach “a plant wrap wherein the plant includes a
ball of soil and roots.” Id. at 5.
Appellants argue that the Examiner erred in finding that Weder
discloses a “wrap consisting of burlap and at least one first container
partially filled with superabsorbent polymeric powder affixed thereto” as
called for in claim 97. App. Br. 14, 21. The Examiner responded that when
the superabsorbent polymeric (SAP) material disclosed in Weder is used, it
is placed in packet 66 of Figure 6 of Weder, “which clearly shows that the
SAP only partially filled the container so as to allow expansion of the SAP.”
Ans. 14.
We agree with the Examiner that Figure 6 of Weder discloses that the
superabsorbent polymeric material 54b only partially fills the packet 66, as
demonstrated in this Figure by the distance between the upper end of water
holding and releasing material 54b and the open end 70 of packet 66. The
fact that Weder does not explicitly disclose in the detailed description of
Figure 6 that the material 54b only partially fills the packet 66 is not
persuasive of error in the Examiner’s finding because the Figures alone of
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Weder can be relied on for what they would disclose to one of ordinary skill
in the art. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). See also In re
Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“a drawing in a utility patent can
be cited against the claims of a utility patent application even though the
feature shown in the drawing was unintended or unexplained in the
specification of the reference patent.”) (citations omitted).
Appellants further argue that the Examiner erred in finding that Weder
discloses the use of superabsorbent polymeric materials because Weder lists
a number of water holding and releasing materials and no preference is
disclosed for superabsorbent materials. App. Br. 11. In particular,
Appellants argue that Weder teaches that burlap could be used for the water
holding and releasing material, and since Krueger already uses burlap as a
wrap for a plant root ball, “there would be no logical reason to add an
additional water-holding and releasing material to the burlap floral sheet
wrapping of Weder when Krueger already discloses the use of one of the
water-holding and releasing materials taught by Weder.” Id. at 12.
This argument mischaracterizes the Examiner’s rejection, which does
not propose to modify the container/wrapping of Weder with the bag
material of Krueger. As the Examiner noted in the Answer, the Examiner
relied on Krueger to suggest applying the container/wrapping of Weder to a
plant root ball comprised of soil and roots. Ans. 5, 12. Weder already
discloses a burlap wrap and a container partially filled with an additional
water holding and releasing material, such as a superabsorbent polymeric
material. Ans. 4; figs. 6, 7. As such, this argument does not persuade us of
error in the rejection of claim 97.
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As to the selection of burlap for the wrap of Weder, Appellants argue
that “the selection of burlap would involve potential leakage of water and
other materials from the floral wrap and thus would not be compatible with
the intended use of the floral wrapping of Weder.” App. Br. 12. This
argument is countered by the teachings of Weder itself, which discloses that
the wrap (sheet of material 10) can be constructed of burlap. Weder, col. 3,
ll. 3-9.
Appellants argue that “[t]he Examiner has furnished no reasoning or
motivation, individually or in combination, to make such proposed selection
of materials [i.e., burlap wrap and superabsorbent polymeric material for the
water holding and releasing material] and then to use such materials in a
manner not taught or suggested by Weder [i.e., to wrap a soil and root
containing plant root ball].” App. Br. 13. First, as to providing a reason to
select from among the suitable materials, it is sufficient in this case that
Weder teaches that burlap is suitable for the sheet of material 10 and that
superabsorbent polymer is suitable for the water holding and releasing
material. Weder, col. 3, ll. 3-9 and col. 5, ll. 1-14. Second, contrary to
Appellants’ argument, the Examiner provided a reason for one of ordinary
skill in the art to have used Weder’s wrap on a plant root ball, as disclosed in
Krueger. Ans. 5.
Appellants also argue that Weder and Krueger are not properly
combinable because “Weder is directed to preserving cut and rooted plants
on a temporary basis and does not and is not intended to contain soil within
the wrap” and Krueger “requires soil to form a root ball and is not a
transitory wrap.” App. Br. 15. We agree with the Examiner that Weder
discloses using its wrapper to wrap floral groupings including live plants,
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having roots. Ans. 4; Weder, col. 4, ll. 4-7. Indeed, Appellants
acknowledge that Weder discloses preserving rooted plants on a temporary
basis. App. Br. 15. We are not persuaded by Appellants’ argument that
because Krueger’s wrap is not a transitory wrap, one of ordinary skill in the
art would not have been led by Krueger to apply Weder’s wrap to a plant
root ball. Krueger is directed to cultivation of nursery stock, which stock
includes soil and a root ball and which is eventually transported for
replanting. Kreuger, col. 1, ll. 31-34 and col. 2, ll. 32-35. It would have
been obvious that the wrapper of Weder, which provides for the slow release
of water over a period of time, would have been useful for wrapping a plant
root ball, such as shown in Krueger, to maintain the health of the nursery
stock. As such, we are not persuaded by Appellants’ argument that Weder
and Krueger are not properly combinable.
For the reasons set forth above, we agree with the Examiner’s
determination that the subject matter of claim 97 would have been obvious
to one of ordinary skill in the art at the time of the invention in view of the
teachings of Weder and Kreuger. Accordingly, we affirm the rejection of
claim 97 as unpatentable over Weder and Krueger. Appellants do not
present separate arguments for the patentability of dependent claims 80 and
85. As such, we affirm the rejection of claims 80 and 85 as unpatentable
over Weder and Krueger for the same reasons as set forth for claim 97.
Appellants present additional arguments for the patentability of dependent
claims 70, 71, 79, 81, 83, 86, and 87, which arguments are addressed infra.
Claim 70
Claim 70 depends from claim 97 and recites “said plant root ball
comprises a tree ball.” Appellants argue that “the Examiner failed to explain
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why a soil and root filled ball would be contained in a product designed for
temporary transport of floral arrangements.” App. Br. 21-22. Appellants
assert that “one of ordinary skill in the art would readily understand that the
tree ball of Krueger is not suited for the wrap of Weder because tree balls are
for trees that are expected to live for extended periods of time, not for
flowers to me [sic] kept fresh during transport or for artificial flowers.” Id.
at 22. For the same reasons provided above as to the combinability of
Weder and Krueger as it relates to claim 97, we find Appellants’ arguments
unpersuasive of error as to the rejection of claim 70.
Claims 71 and 87
Appellant argues claims 71 and 87 as a group. App. Br. 22. We
select claim 71 as representative. Claim 71 depends from claim 97 and
recites “said first container comprises burlap.” Appellants argue that the
Examiner erred in finding that Weder’s container comprises burlap. Id.
Weder discloses that packet 66 “may be constructed of any material such as
the materials described before in connection with the sheet of material 10.”
Weder, col. 6, l. 66 – col. 7, l. 1. The Examiner correctly found that Weder
discloses that the sheet of material 10 can be constructed of burlap. Ans. 4
(citing Weder, col. 3, l. 8). As such, Weder discloses by a preponderance of
the evidence that the container (packet 66) can be comprised of burlap.
Accordingly, we affirm the rejection of claims 71 and 87 as being
unpatentable over Weder and Krueger.
Claim 79
Claim 79 depends from claim 97 and recites “wherein said container
is affixed to said burlap wrap by sewing.” The Examiner found that
“Krueger teaches sewing method for affixing elements together (col. 5, line
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26)” and that it would have been obvious to use this affixing method to
attach Weder’s container (packet 66) to the burlap wrap (material 10).
Ans. 5. Appellants argue that the Examiner erred in rejecting claim 79
because “[s]uch method of affixation is not taught by Krueger as implied by
the Examiner.” App. Br. 22.
Krueger teaches “growing medium bag 110 is made by folding and
sewing rectangular sheet 11.” Kruger, col. 5, ll. 25-26. As such, Krueger
teaches affixing elements together by sewing to form a growing medium
bag. We find the Examiner’s finding as to the disclosure of Krueger is
supported by a preponderance of the evidence. Appellants’ argument
appears to address Krueger independently and does not address the
Examiner’s proposed modification of Weber with the teaching of Krueger.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claim 97.
Claim 81
Claim 81 depends from claim 97 and recites “wherein said container
is affixed to said burlap wrap by staples.” The Examiner found that “Weder
as modified by Krueger teaches wherein said container is affixed to said
burlap wrap by staples (col. 4, lines 16-37 of Weder).” Ans. 5. Appellants
argue that the Examiner erred in rejecting claim 81 because Weder does not
disclose affixing the container to the wrapper by staples. App. Br. 23.
Weder discloses that the packet 66 (container) is affixed to sheet of material
10b (wrap) by bonding material 74 on packet 66. Weder, col. 7, ll. 41-48;
fig. 7. Weder discloses that the term “bonding material” includes staples.
Weder, col. 4, ll. 32-34. As such, we agree with the Examiner’s finding that
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Weder discloses affixing the container to the wrapper by staples.
Accordingly, we affirm the rejection of claim 81.
Claim 83
Claim 83 depends from claim 97 and recites “said container is affixed
to said burlap wrap by tying.” The Examiner found that “Weder as modified
by Krueger teaches wherein said container is affixed to said burlap wrap by
tying (col. 4, lines 16-37 of Weder).” Ans. 6. Appellants argue that the
Examiner erred in rejecting claim 83 because Weder does not disclose
affixing the container to the wrapper by tying. App. Br. 23. As noted supra,
Weder discloses that the packet 66 (container) is affixed to sheet of material
10b (wrap) by bonding material 74 on packet 66. Weder, col. 7, ll. 41-48;
fig. 7. Weder discloses that the term “bonding material” includes strings.
Weder, col. 4, ll. 32-34. As such, we agree with the Examiner’s finding that
Weder discloses or suggests affixing the container to the wrapper by tying.
Accordingly, we affirm the rejection of claim 83.
Claim 86
Claim 86 depends from claim 97 and recites “wherein said container
is located outside of said plant root ball.” The Examiner determined that
“[i]t would have been obvious to one having ordinary skill in the art at the
time the invention was made to have the container of Weder as modified by
Krueger be located outside of the plant root ball, since it has been held that a
mere reversal of the essential working parts of a device involves only routine
skill in the art.” Ans. 6. Appellants argue that the Examiner erred in
determining that modifying Weder to locate the container on the outside of
the floral wrapping is an obvious mere reversal of parts. App. Br. 24.
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We agree with Appellants that the Examiner’s articulated reasoning
for modifying the wrap of Weder to dispose the packet of water holding and
releasing material on the outside of the plant root ball is insufficient. Weder
discloses that in operation the water holding and releasing material 54b is
disposed in the packet receiving space 68 of packet 66, and the stem end 28b
of the floral grouping 26b is also disposed in packet receiving space 68 in
contact with the water holding and releasing material 54b. Weder, col. 7, ll.
28-32. If one were to modify Weder to use the wrap for wrapping a plant
root ball, as disclosed in Krueger, then according to the teachings of Weder,
one would have been led to place the plant root ball within the packet
receiving space 68 so that it is in contact with the water holding and
releasing material. The Examiner has not provided adequate reasoning to
explain why one of ordinary skill would have found it obvious to instead
place the plant root ball outside of packet 66. Accordingly, we reverse the
rejection of claim 86.
Rejection 2
Claims 67, 68, 73, and 74 depend from claim 96. The rejection of
claims 67, 68, 73, and 74 as being unpatentable over Weder, Krueger, and
Lundberg suffers from the same erroneous finding as to the disclosure of
Weder as discussed supra in our analysis of the rejection of claim 96.
Accordingly, we also reverse the rejection of claims 67, 68, 73, and 74.
Rejection 3
Appellants rely on the arguments presented in rebuttal of the rejection
of claim 97 for the reversal of the rejection of claims 72, 84, 88-91, and 93-
95 as unpatentable over Weder, Krueger, and Weder ‘644. App. Br. 28-29.
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We find Appellants arguments unpersuasive as to error in the rejection for
the same reasons discussed supra as to claim 97.
Appellants also argue that “one of ordinary skill in the art would not
look to Weder [‘]644 to modify the subject matter of claim 97” because
Weder ‘644 “teaches the use of water-impermeable internal and external
layers for a floral wrap,” which “are not suitable for a plant root ball
wrapping and are inconsistent with the possibility of using burlap.” App. Br.
29. This argument is not persuasive because the Examiner’s rejection did
not propose to “modify the subject matter of claim 97” and also did not
propose to use the layers of Weder ‘644 in place of the materials disclosed in
Weder for the container (packet 66) and wrap (sheet of material 10). Ans. 8-
9 (proposing to use the reinforcing structure of Weder ‘644 in the container
of Weder as modified by Krueger). Accordingly, we affirm the rejection of
claims 72, 84, 88-91, and 93-95 as unpatentable over Weder, Krueger, and
Weder ‘644.
Rejections 4-6
Claims 75 and 76 depend from claim 96. The rejection of claim 75 as
being unpatentable over Weder, Krueger, and Obonai and the rejection of
claim 76 as being unpatentable over Weder, Krueger, and Date each suffers
from the same erroneous finding as to the disclosure of Weder as discussed
supra in our analysis of the rejection of claim 96. Accordingly, we reverse
the rejections of claims 75 and 76.
As to Rejections 4-6 as applied to those claims that depend from claim
97 (claims 77, 78, 82, and 92), Appellants rely on the arguments presented in
rebuttal of the rejection of claim 97. App. Br. 29-32. Accordingly, we
affirm the rejection of claim 77 as being unpatentable over Weder, Krueger,
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and Obonai, claim 78 as being unpatentable over Weder, Krueger, and Date,
claim 82 as being unpatentable over Weder, Krueger, and Busby, and claim
92 as being unpatentable over Weder, Krueger, and Rogers.
DECISION
We AFFIRM the decision of the Examiner to reject claims 70-72, 77-
85, 87-95, and 97.
We REVERSE the decision of the Examiner to reject claims 66-68,
73-76, 86, and 96.
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

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