W. Dunn

Patent Trials and Appeals Board

Oct 25, 2021

2021002829 (P.T.A.B. Oct. 25, 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.
13/844,649 03/15/2013 W. Michael Dunn 100419 5594
24225 7590 10/25/2021
Gerald T Peters
JTT Patent Services, LLC
619 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
3643
NOTIFICATION DATE DELIVERY MODE
10/25/2021 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):
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 2021-002829
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 APPEAL
STATEMENT OF THE CASE
W. Michael Dunn (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision of April 13, 2020, rejecting claims 1–22.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as the inventor, W. Michael Dunn.
Appeal Br. 3.
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BACKGROUND
Independent claims 1, 15, and 20 are pending. Claim 1, reproduced
below, illustrates the claimed subject matter, with certain limitations
emphasized:
1. A seedling container comprising:
a compartment for receiving one or more seeds and
growing medium, the compartment having
a top portion having an open top face;
a bottom portion; and
a frangible strip between the top portion and the
bottom portion;
wherein the compartment defines an axial direction more
or less in a direction in which a seedling stem tends to grow as
it emerges more or less centrally from the open top face of the
top portion;
wherein the frangible strip is separated from the top
portion by an upper circumferential score line and is separated
from the bottom portion by a lower circumferential score line;
wherein the upper circumferential score line is arranged
about the periphery of the compartment so as to form a first at
least partially closed loop having a locus which is more or less
circumferential with respect to the compartment axial direction;
wherein the lower circumferential score line is arranged
about the periphery of the compartment so as to form a second
at least partially closed loop having a locus which is more or
less circumferential with respect to the compartment axial
direction, the upper circumferential score line being generally
parallel to the lower circumferential score line; and
wherein a transverse score line interconnects the lower
circumferential score line and the upper circumferential score
line.
Appeal Br. 30–31 (Claims App.).
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Independent claim 20 differs from claim 1, in part, in reciting
“a cutout region” rather than “a transverse score line” between the
upper and lower score lines of the frangible strip. See id. at 35.
REJECTIONS2
I. Claims 1, 2, 9, 10, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Krane (US 4,091,929, iss. May 30, 1978) and
Hawkinson (US 2011/0296755 A1, pub. Dec. 8, 2011). Final Act. 4.
II. Claims 3–8 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane, Hawkinson, and Bullock (US 4,691,834, iss.
Sept. 8, 1987). Final Act. 8.
III. Claims 12–14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane, Hawkinson, and Peck (US 3,877,633, iss. Apr. 15,
1975). Final Act. 13.
IV. Claims 15–19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Timmis (US 5,119,588, iss. June 9, 1992), Krane, and
Hawkinson. Final Act. 15.
V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Krane and Bullock. Final Act. 21.

ANALYSIS
In the pending rejections, the Examiner determines that the claim
recitation of a “seedling container” does not “innately provide a specific
structure,” and is considered an intended use of the claimed container that is
not “afforded the effect of a structural limitation” because “the body of the

2 The Examiner has withdrawn the indefiniteness rejections. Ans. 4.
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claim fails to set forth structure that refers back to or draws life and breath
from the preamble.” Final Act. 4.
The Examiner finds that Krane discloses, inter alia, a container
having a compartment “capable of receiving one or more seeds and growing
medium.” Final Act. 4. The Examiner also finds that Krane’s container
includes a top portion with an open top (“the device of Krane, in its normal
use, has an open top”), a bottom portion, and a frangible strip 20
therebetween that is defined by upper and lower circumferential score lines.
Id. at 4–5. Regarding Krane’s open top, our Decision in Appeal No. 2019-
001837, dated June 21, 2019 (“Prior Decision”) noted, inter alia, that the
Examiner need not provide reasoning to remove Krane’s lid to reveal its
open top because: (1) “Krane discloses an open topped container that is
structurally separate from a lid for the container”; (2) “Krane has no
requirement that its container remain closed with the lid”; and (3) in normal
operation, Krane’s lid would be removed. Prior Decision, 6–7.
Regarding the specific language of independent claims 1 and 15, the
Examiner acknowledges that Krane does not disclose the claimed transverse
score line interconnecting the upper and lower circumferential score lines,
but finds that Krane discloses “a vertical break . . . to determine the
beginning and end of each rip-strip,” and Hawkinson discloses “a package
(10) with a tear-off strip (34 . . .),” and a transverse score line
interconnecting upper and lower score lines of the tear-off strip. Final Act.
6. The Examiner concludes that it would have been obvious to modify
Krane’s vertical break with Hawkinson’s transverse score line “to provide a
device which is not only easily handled during shipment, but also easily
disassembled for use by the consumer.” Id. at 7.
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The Examiner further finds, regarding the specific language of
independent claim 20, that Bullock discloses a container 11 with a tear strip
63 “wherein an upper circumferential score line (104d, as illustrated in
Figure 7) is discontinuous in a vicinity of where a pull tab is attached to the
frangible strip (the score line 104d is discontinuous at 87d near where
element 91d attaches to the main portion of skirt 63d).” Final Act. 9. The
Examiner further finds that Bullock discloses a notch or “cutout region (106)
interven[ing] between a lower circumferential line (bottom of element 63d)
and an upper circumferential score line (104d, as illustrated in Figure 7).”
Id. at 23. The Examiner concludes that modifying Krane to have Bullock’s
notch would have been obvious to a skilled artisan “to provide an easily
started tamper evident seal for shipment.” Id.
Rejection I
Appellant argues the pending claims as a group, although some
arguments discuss references and limitations from differing rejections and
claims. Appeal Br. 19–24. See 37 C.F.R. § 41.37(c)(1)(iv). We have
considered each argument presented by Appellant and attempted to match
the argument with the appropriate claim(s) and rejection(s) below.
Missing Limitations
Appellant first argues that the Examiner failed to establish that the
prior art discloses: (1) “a top portion having an open top face”; and (2) a
transverse score line interconnecting, or a cutout region intervening between,
the upper and lower circumferential score lines of a frangible strip. Appeal
Br. 19–20.
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Regarding (1) the open top face, Appellant disagrees with the
Examiner’s position that “the mere fact that the lid of KRANE is
temporarily removed during ‘its normal use’ is sufficient to free the
Examiner from any obligation to show a motivation for why the lid of
KRANE would have been removed . . . to function as a seedling container.”
Appeal Br. 20. According to Appellant, because the independent claims
now positively recite the top portion having an open face, the findings in our
Prior Decision no longer apply, “and in failing to allege a motivation for
why one of skill in the art would have removed the lid of KRANE” to
provide an open top face, “the Examiner has thus failed to make a prima
facie case.” Id. at 21. Appellant also argues that a skilled artisan would not
have been motivated to remove Krane’s lid “except during the brief period
when ice cream is being consumed and before the ice cream remaining in the
container would have had a chance to melt, because to do so would have
rendered KRANE unsatisfactory for its intended purpose.” Id. at 21–22
(reasoning that, without its lid, Krane is unsuitable for use as an ice cream
container).
We are not persuaded by Appellant’s argument. As explained in our
Prior Decision, the Examiner need not provide a motivation or reason for
removing Krane’s lid, because “Krane has no requirement that its container
remain closed with the lid” and, in normal operation of Krane’s device, its
lid would be removed revealing its open top face. Krane’s disclosure of a lid
does not negate Krane’s disclosure of a separate container with an open face
top. For this reason, we are not persuaded that the Examiner erred in finding
that Krane discloses a container with an open top face. Because the open top
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face is explicitly disclosed in Krane, no motivation is required to meet the
claim limitation.
Further, we discern no error in the Examiner’s finding that Hawkinson
discloses a transverse score line interconnecting upper and lower
circumferential score lines of a frangible strip, and that Bullock discloses a
cutout region intervening between upper and lower circumferential score
lines of a frangible strip. The Examiner’s proposed combination of Krane
with Hawkinson or Bullock is discussed below.
Hindsight
Regarding the Examiner’s proposed combination of Krane with
Hawkinson or Bullock, Appellant argues that the Examiner’s proffered
rationales for combining Krane with Hawkinson or Bullock “are not to be
found in the cited references, but arise only in the mind of the Examiner with
the benefit of hindsight gleaned from Appellant’s own disclosure.” Appeal
Br. 22.
The Examiner responds that Krane’s frangible strip has a tab 24 for
strip removal, and would reasonably be combined with a different removal
structure for many reasons, including “ease of shipment and transport of
products, for tamper evident seals, etc.” Ans. 9. According to the Examiner,
a skilled artisan would have recognized “the individual benefits and
challenges of tear off strip arrangements,” adjusting removal means
accordingly. Id. The Examiner further responds that rip off strips, and
modification thereof, “are well-known concepts” having entire
classifications devoted thereto. Id. at 10.
Considering the Examiner’s reasoning as explained in the Final
Rejection and the Answer, we understand the Examiner’s reasoning to be
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that using the frangible strip removal mechanism of Hawkinson or Bullock
to facilitate removal of the frangible strip of Krane is a simple substitution of
one known frangible strip removal element for another to obtain a
predictable result, which would be the frangible strip staying intact during
shipping/transport but being easily removed, as needed, during use of the
container. We discern no error in, or lack of rational basis for, the
Examiner’s reasoning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
415–421 (2007) (“This is a principal reason for declining to allow patents
for what is obvious. The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”). Further, we are not persuaded that the Examiner’s
reasoning regarding what is known and predictable includes knowledge
gleaned only from Appellant’s disclosure. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill in the art at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.”).
Principle of Operation
Appellant next argues that a skilled artisan would not have modified
Krane with the perforations of Hawkinson or the notch of Bullock, “because
to do so would have changed the principle of operation of KRANE and/or
rendered KRANE unsatisfactory for its intended purpose.” Appeal Br. 23.
Appellant asserts that Krane’s rip strips “have sealing features for preventing
leakage of ice cream to the exterior and bacteria to the interior,” and
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substituting Hawkinson’s perforations or Bullock’s notch “would have
defeated this purpose” of Krane, making Krane unsuitable as an ice cream
container. Id.
Krane’s container 10 includes “a film 28 of ice cream resistant
material . . . secured to the inside wall of the container and the rip-strip, . . .
to seal the perforation 22 against leakage of any of the ice cream.” Krane
2:1–5. The film 28 can be “more securely attached to the rip-strip 20 than to
the inner surface of the container wall,” so that the film seals the
perforations until the rip strip is removed. Id. 2:9–13. Because the
Examiner’s proposed modification of Krane’s frangible strip removal
structure does not propose removing Krane’s inner film 28, Krane’s
container will remain impermeable despite the Examiner’s proposed
substitution of Krane’s removal means 24, 26 with either of the transverse
score lines of Hawkinson or the notch of Bullock. Thus, the Examiner’s
proposed substitutions would not render Krane unsuitable for its intended
purpose nor change a principle of operation of Krane.
Conclusion
For the reasons set forth above, Appellant has not persuaded us that
the Examiner’s rejections contain erroneous findings or conclusions. We
sustain pending Rejections I–V.

DECISION
We AFFIRM the pending obviousness rejections.
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 9, 10,
21, 22
103 Krane, Hawkinson 1, 2, 9, 10,
21, 22

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Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3–8, 11 103 Krane, Hawkinson,
Bullock
3–8, 11
12–14 103 Krane, Hawkinson,
Peck
12–14
15–19 103 Timmis, Krane,
Hawkinson
15–19
20 103 Krane, Bullock 20
Overall
Outcome
1–22

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). See 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED