Ex Parte Roeser et al

Patent Trial and Appeal Board

Apr 26, 2018

13717975 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131717,975 12/18/2012 David ROESER
52835 7590 04/30/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
20413.lUSOl 3344
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROESER and BRYAN ROESER
Appeal2017-007847
Application 13/717,975
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Roeser and Bryan Roeser ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision in the Final Action (dated
Oct. 6, 2015, hereinafter "Final Act.") rejecting claims 1-7, 11-15, and 21-
25.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Garden Fresh Farms, Inc. is the applicant as provided in 37 C.F.R. § 1.46
and is identified as the real party in interest in Appellants' Appeal Brief
(dated Mar. 4, 2016, hereinafter "Br."). Br. 2.
2 Claims 8-10 are withdrawn from consideration and claims 16-20 are
canceled. Br. 15-17 (Claims App.).
Appeal2017-007847
Application 13/717,975
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION
pursuant to our authority under 37 C.F.R. 41.50(b ).
INVENTION
Appellants' invention relates to "systems for growing plants in an
indoor environment using artificial lights." Spec. 1, 11. 6-7.
Claims 1 and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A plant growing system, comprising:
first and second plant growing stations that are arranged
next to one another;
the first and second plant growing stations each include a
light fixture and a plant support structure that is configured to
hold a plurality of plants thereon with the plants facing the light
fixture, the light fixture and the plant support structure are
mounted to permit relative movement therebetween;
the plant support structure of each of the first and second
plant growing stations includes a first surface that in use faces
toward its associated light fixture;
in the first plant growing station, there is a first
substantially constant distance between the light fixture thereof
and the first surface of the plant support structure thereof;
in the second plant growing station, there is a second
substantially constant distance between the light fixture thereof
and the first surface of the plant support structure thereof; and
the first distance is less than the second distance.
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REJECTIONS 3
I. The Examiner rejects claims 1-7, 13-15, and 21-25 under
35 U.S.C. § 103(a) as being unpatentable over Dumont (US 7,401,437
B2, iss. July 22, 2008) and Brusatore (US 7,559,173 B2, iss. July 14,
2009).
II. The Examiner rejects claims 11 and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Dumont, Brusatore, and Souvlos
et al. (US 7,730,663 B2, iss. June 8, 2010, hereinafter "Souvlos").
Appellants present additional evidence in the Declaration filed under
37 C.F.R. § 1.132 by co-inventor, David Roeser, on June 24, 2015
(hereinafter "Roeser Declaration").
ANALYSIS
Rejection I
Claims 1, 3-6, 13-15, 21, and 23-25
Appellants have not presented arguments for the patentability of
claims 3---6, 13-15, 21, and 23-25 apart from claim 1. See Br. 7-10.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1
as the representative claim to decide the appeal, with claims 3---6, 13-15, 21,
and 23-25 standing or falling with claim 1.
The Examiner finds that Dumont discloses a plant growing system
including, inter alia, a plant growing station 10 having a light fixture 66 and
a plant support structure 30, 32, 34, 36 with a first surface 32 facing the light
3 The Examiner has withdrawn the rejection of claims 13-15 under
35 U.S.C. § 101 and the rejection of claim 15 under 35 U.S.C. § 112, second
paragraph. Examiner's Answer 2 (dated Sept. 27, 2016, hereinafter "Ans.").
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fixture. Final Act. 4 (citing Dumont, Fig. 5). The Examiner further finds
that Dumont fails to disclose "first and second plant growing stations that
are arranged next to one another," wherein the distance between light fixture
66 and first surface 32 in the first station is less than the same distance in the
second station. Id. The Examiner then relies on Brusatore to disclose first
and second plant growing stations 10 arranged next to each other. Id. (citing
Brusatore, Fig. 2c ). Thus, the Examiner reasons that it would have been
obvious to a person having ordinary skill in the art to "have the one station
of Dumont be a plurality of stations arranged next to one another as taught
by Brusatore, in order to allow the user multiple stations in the event the user
wishes to grow a plurality of plants or plant type." Id.
The Examiner further finds that Dumont discloses that the light
intensity received by a plant from a light source varies exponentially with
the distance between the plant and the light source. Id. at 5---6; see also
Dumont, col. 1, 11. 50-51. Hence, the Examiner concludes that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to have, in the first plant
growing station, a first substantially constant distance between
the light fixture thereof and the first surface of the plant support
structure thereof, and in the second plant growing station, a
second substantially constant distance between the light fixture
thereof and the first surface of the plant support structure
thereof, the first distance is less than the second distance in the
system of Dumont as modified by Brusatore, depending on the
type of plants being grown because each plant requires different
light intensity between the plant and the light source, thus, the
user can adjust a desired distance accordingly.
Id. at 5.
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Appellants argue that because "Dumont teaches that the size of the
system should be minimized and a single light source used," "Dumont
teaches away from the proposed modification of adding a second station as
taught by Brusatore." Br. 7-8 (citing Dumont col. 1, 11. 37-39). According
to Appellants, "adding a second station would consume additional real estate
and increase the size of the system, as well as add a second light source
which Dumont explicitly seeks to avoid." Id. at 8.
We are not persuaded by Appellants' arguments because teaching
away requires a reference to actually criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004). In this case, we agree with the Examiner that Dumont's
objective of reducing real estate usage is based on comparing a configuration
that uses a drum having a single light source to a conventional configuration
where plants are arranged by rows with a light source above each row, and
"NOT [to] having more than one drum[] next to each other if one wishes to
have more plants being grown." Ans. 4. Appellants do not point to any
passage in Dumont that "criticize[ s ], discredit[ s] or otherwise discourage[ s ]"
the use of multiple drums. Moreover, Appellants do not adequately explain
why using multiple drums, rather than multiple rows, would not use space
efficiently. Accordingly, contrary to Appellants' assertion, Dumont does not
teach away from the proposed combination.
Appellants further argue that because Dumont discloses "that the
diameter of the single station should be increased as the plants grow to
accommodate plant growth" and "Brusatore teaches multiple stations but
contains no disclosure whether the distance in one station varies from the
distance in another station," the combined teachings of Dumont and
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Brusatore fail to disclose stations having different distances between the
light fixture and the plant support, as called for by claim 1. Br. 8 (citing
Dumont, col. 1, 11. 60-63, col. 2, 11. 11-20 and 33-39).
We are not persuaded by Appellants' arguments because "[ n ]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [Each reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Dumont's plant
growing station is formed by a plurality of segments that are joined together
to form "a variable diameter ring [that] permits the distance between the
plants and the light source (which is centrally located) to be varied."
Dumont, col. 2, 11. 33-35. As such, when Dumont's variable diameter
system is used with multiple stations as taught by Brusatore, each station
would have a different diameter, and, thus, a different distance between the
light fixture and the surface of the plant support structure. Accordingly, as
the distance between the light fixture and the surface of the plant support
structure is different between stations, so will the light intensity be, and,
thus, the Examiner is correct that such an arrangement would permit a user
to grow a different type of plant in each station. See Ans. 6; see also
Dumont, col. 1, 11. 53-57). For example, as Dumont discloses that younger
plants require a higher light intensity than older plants, and that light
intensity varies exponentially with distance from the light source, a skilled
artisan would readily recognize that a younger plant requires a smaller
distance between the light fixture and the surface of the plant support
structure than an older plant. See Dumont, col. 1, 11. 54--56. Accordingly,
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the distance between the light fixture and the surface of the plant support
structure of the first station, where the younger plants are grown, in the
system of Dumont, as modified by Brusatore, would be smaller than the
distance in the second station where the older plants are grown. Appellants
have not persuasively shown error in the Examiner's findings and reasoning.
The Roeser Declaration
Inasmuch as we have concluded that the subject matter of Appellants'
claims is prima facie obvious, we recognize that evidence of secondary
considerations, such as that presented by Appellants, must be considered in
route to a determination of obviousness/nonobviousness under 35 U.S.C.
§ 103. Accordingly, we consider anew the issue of obviousness under
35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied
upon by the Examiner and the objective evidence of nonobviousness
provided by Appellants.
Appellants allege that the Roeser Declaration provides evidence of
accolades in the industry, which "provides additional evidence that the
claims are patentable over Dumont and Brusatore." Br. 9.
We are not persuaded because as the Examiner correctly states,
"[ n Jo where in the [Roeser] [D]eclaration does it discuss the nexus between
the invention and the claim." Ans. 7. We appreciate that Appellants have
received numerous awards, accolades and favorable testimonials. See
Roeser Declaration, paras. 3, 4.). However, to establish a nexus, the
"[ e ]vidence of secondary considerations must be reasonably commensurate
with the scope of the claims." In re Huai-Hung Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011 ). The success must be attributable to the claimed invention,
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not something else. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
740 (Fed. Cir. 2013). Here, the accolades and favorable testimonials are
described in general terms without establishing a nexus between the claimed
subject matter and the awards. For example, the Roeser Declaration states
that the awards are presented to a company or companies "with the best
breakthrough idea," "with innovative technology ... for addressing today's
urgent energy, environmental and economic challenges," "with the best
cleantech innovation," "with unique and innovative technology that are
driving business growth in Minnesota," or "using innovative technology that
reduces toxicity, prevent[ s] pollution and lower[ s] environmental impact
overall." Roeser Declaration, paras. 5-9. Even the evidence that is directed
to a plant growing system is based broadly on agricultural operations that
"enhance productivity and efficiency, improve environmental sustainability
or contribute to food safety." Roeser Declaration, para. 11; see also id.,
Attachment A, 2.
As such, the Roeser Declaration does not establish that first and
second plant growing stations having different first and second distances
between a light fixture and a plant support structure, as called for by claim 1,
is the reason for obtaining the mentioned awards. Accordingly, we agree
with the Examiner that because the Roeser Declaration does not establish a
nexus between the subject matter recited in the claims and the received
awards, Appellants' evidence is not persuasive. See Ans. 7-8.
After reviewing all of the evidence before us, including the totality of
Appellants' evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of claim 1
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would have been obvious to a person of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a) at the time Appellants' invention was made.
Claims 3-6, 13-15, 21, and 23-25 fall with claim 1.
Claim 2
Claim 2, which depends from independent claim 1, adds the limitation
of a third plant growing station with a third distance between the light fixture
and the plant support structure that is greater than the second distance. Br.
14 (Claims App.).
Appellants argue that adding "a third plant growing station is even
less obvious" because a third station "would consume additional real estate
and increase the size of the system, which Dumont seeks to avoid." Br. 10.
Appellants also assert that as with claim 1, "the combination of Dumont and
Brusatore does not teach or suggest adding a third station with a third
distance that is greater than the second distance." Id.
We are not persuaded by Appellants' arguments because, as the
Examiner correctly responds, Brusatore teaches multiple stations, i.e., a third
station, and, thus, the third plant growing station of Dumont, as modified by
Brusatore, would likewise have Dumont's variable diameter, thereby,
resulting in a third station having a third distance between a light fixture and
a plant support structure different from the distances of the first and second
stations. See Ans. 9. As discussed above, Dumont discloses that such
differences in the distance between the light fixture and the plant support
structure depends on the age of the plant. See also Dumont, col. 1, 11. 54--56.
Thus, for the reasons discussed supra, a skilled artisan would readily
recognize that the distance between the light fixture and the surface of the
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plant support structure of the first station, where the younger plants are
grown, would be smaller than the distance in the second station where the
older plants are grown, which in tum would be smaller than the distance in
the third station where even older plants are grown.
In conclusion, for the foregoing reasons, we likewise sustain the
rejection of claim 2 over the combined teachings of Dumont and Brusatore.
Claim 7
Claim 7, which depends indirectly from independent claim 1, adds the
limitation that the diameters of the first and second stations are
"substantially equal." Br. 15 (Claims App.).
The Examiner finds that Dumont as modified by Brusatore teaches
diameters that are substantially equal because "the same rotatable structure
with [the] same structure is being used for the plurality of stations." Final
Act. 7.
Appellants argue that "Dumont teaches to increase the diameter of the
rotary structure in order to change the distance between the light source and
the plants." Br. 11. Accordingly, Appellants contend that the combined
teachings of Dumont and Brusatore do not disclose "the second distance
being less than the first distance as in claim 1, in combination with keeping
the diameters of the rotary structures the same as in claim 7." Br. 11.
The Examiner responds that it would have been obvious to a person of
ordinary skill in the art to have different distances in the system of Dumont,
as modified by Brusatore, so that "the user can adjust a desired distance
accordingly." Ans. 11.
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Although we appreciate the Examiner's position, nonetheless, because
in Dumont's plant growing station the distance between a light fixture and a
plant support structure varies along with the diameter of the plant growing
station, the Examiner's position is untenable as it does not explain
adequately how the distance can vary between the stations of Dumont, as
modified by Brusatore, while the stations have "substantially equal"
diameters. The Examiner does not point to any portion of Dumont, or
Brusatore, that discloses both varying a distance between the light source
and the plant support structure and maintaining the diameter of the plant
growing station the same. Nor does the Examiner provide any explanation
of how the combined teachings of Dumont and Brusatore would achieve
such a feature.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Dumont and
Brusatore.
Claim 22
Claim 22, which depends directly from independent claim 1, adds the
limitation that "the number of bulbs in the light fixture of the first plant
growing station is greater than the number of bulbs in the light fixture of the
second plant growing station." Br. 17 (Claims App.).
The Examiner determines that it would have been obvious to a skilled
artisan to have a greater number of bulbs in the light fixture of the first plant
growing station than in the light fixture of the second plant growing station,
"depending on the type of plants grown in each of the plant growing station
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because each type of plant would require different amount[ s] of light." Final
Act. 10.
Appellants argue that even though Dumont discloses that "there is no
criticality to the light source 66 that is used," this does not mean that in
Dumont "the number of bulbs in the light fixture of the first plant growing
station can differ from the number of bulbs in the light fixture of the second
plant growing station." Br. 12. Appellants contend that "although Dumont
discloses that the light intensity received by the plants is important (column
1, lines 49-57), Dumont does not suggest that altering the number of bulbs in
the first and second light fixtures as recited in claim 22 is a solution." Id.
We appreciate that Dumont's solution for adjusting the amount of
light that reaches a plant in its plant growing station is to vary the distance
between the light source and the plant by removing or adding one or more
ring segments 28 from or to ring 27 of the plant growing station, thereby
decreasing or increasing its diameter. See Dumont, col. 2, 11. 29-32, col. 3,
11. 59-61, Fig. 1. We further appreciate that Dumont discloses that the
"amount of light decreases exponentially with the distance between the light
and the plants." See id., col. 1, 11. 40-41. Hence, in light of Dumont's
teachings, a skilled artisan would recognize that there are instances when
adding one ring segment in the second plant growing station of Dumont, as
modified by Brusatore, to increase its diameter, would not sufficiently
reduce the amount of light, whereas adding two ring segments would reduce
the amount of light too much. In such a case, the same skilled artisan would
recognize that by reducing the number of light bulbs in the second plant
growing station, an intermediate amount of light would result in the second
plant growing station before having to add another ring segment 28.
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Therefore, it would have been obvious for a person of ordinary skill in the
art to reduce the number of light bulbs in the second plant growing station of
Dumont, as modified by Brusatore, in lieu of increasing its diameter, in
order to provide the plants with an intermediate amount of light, thereby
achieving a more precise control of the level of light that reaches the plants
depending on the type of plant being grown.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 22 over the combined teachings of Dumont and Brusatore. However,
we denominate our affirmance as a NEW GROUND OF REJECTION
pursuant to 3 7 C.F .R. § 41. 50(b ), because our analysis relies upon facts and
reasoning that the Examiner did not use.
Rejection II
Appellants do not present separate arguments for the patentability of
claims 11 and 12 other than those presented for the rejection of independent
claim 1. See Br. 5-12.
Accordingly, for the reasons discussed supra, we sustain the rejection
of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over Dumont,
Brusatore, and Souvlos.
DECISION
The Examiner's decision to reject claims 1-7, 13-15, and 21-25
under 35 U.S.C. § 103(a) as unpatentable over Dumont and Brusatore is
affirmed as to claims 1---6, 13-15, and 21-2 5 and reversed as to claim 7.
The Examiner's decision to reject claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Dumont, Brusatore, and Souvlos is affirmed.
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For the reasons discussed above, we denominate our affirmance of the
rejection of claim 22 as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b ).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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