7Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: There is no description of the now recited language of claim 1, “a first sidewall portion”, a “second sidewall portion”, a “generally tube-like structure having a first open end and a second open end” in lines 7-9, a “first connection portion”, a “second connection portion” and a “third connection portion” defined in the specification, rendering the meaning and scope of these terms indefinite.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-15 are finally rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. In claim 1, lines 7-9, “each of the first and second sidewall portions (terms not found in the specification) are secured to one another to form a generally tube-like structure having a first open end and a second open end” is not disclosed by the original disclosure. In lines 12-13, “wherein the bottom surface is secured to the second open end of the tube-like structure thereby forming a third connection portion which is generally circular” is not disclosed by the original disclosure.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-15 are finally rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 1, lines 8 and 12-13, the phrase “tube-like structure” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "tube-like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
In claim 8, line 1, “the sidewall portion” is indefinite, as plural sidewall sections have already been defined in claim 1.
In claims 8 and 9, the recitations are redundant in view of claim 1 as amended.
In claim 9, line 2 and claim 10, line 1, “connection portion” is indefinite, as multiple connection portions have been defined in claim 1.
In claim 12, line 2 and claim 13, line 2, “the sidewall portion” lacks singular antecedent basis.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8-11 and 13-15 are finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weder (6,345,467). Weder discloses a plant holder comprising an outer layer (outer layer of 10, see column 4, lines 31-57) comprising a first sidewall portion, a second sidewall portion (see column 6, lines 53-60) and a bottom surface (19), wherein the first and second sidewall portions each have a pair of generally vertical edges, wherein a first of the pair of generally vertical side edges of each the first and second sidewall portions are secured to one another and a second of the pair of generally vertical side edges of each the first and second sidewall portions are secured to one another (see column 6, lines 53-60, two separate webs forming a single sleeve) to form a generally tube-shaped structure having a first (upper) open end and a second (lower) open end, wherein the first and second sidewall portions are secured to one another to form a first connection portion and a second connection portion (free ends of the two separate webs joined to one another, see column 6, lines 53-60), wherein the bottom surface is secured to the to the second (lower) end of the tube-shaped structure thereby forming a third connection portion (21) which is generally circular and the first open end is a free end, and an inner layer (inner layer of 10, see column 4, lines 31-57; inner layer of 12, see column 3, lines 56-63 ) secured to the sidewall portion and having a second free end, wherein the outer layer is made of a first flexible material and the inner layer is made of a second flexible material, and wherein the first and second flexible materials differ in at least one property selected from the group consisting of material type, texture, thickness, density of fibers, print, pattern, color, opacity and combinations thereof (see column 4, line 64 through column 5, line 33; see column 4, lines 15-28).
As to claim 2, wherein the first and second flexible materials differ in at least one property selected from the group consisting of material type, texture, thickness, density of fibers, print, pattern, color, opacity and combinations thereof (see column 4, line 64 through column 5, line 33; see column 4, lines 15-28).
As to claim 3, Weder discloses polymeric film, inherently water resistant.
As to claim 4, Weder discloses the bottom surface being round.
As to claims 5 and 6, Weder discloses a zigzag pattern to form a plurality of pointed ends (at 28).
As to claims 8-11, Weder discloses two discrete pieces connected together by sewing or stitching to form the sidewall portion.
As to claim 13, Weder demonstrates at least one decorative element on the sidewall portion.
As to claim 14, Weder discloses the layers forming an inner cavity with a closed bottom surface and an open upper end.
As to claim 15, Weder discloses the diameter of the bottom end of the cavity being less than the diameter of the open upper end.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6-7 and 12 are finally rejected under 35 U.S.C. 103 as being unpatentable over Weder. To vary the number and positioning of pointed ends in a zigzag decorative pattern (28) would fail to distinguish anything beyond a design appearance. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See In re Dailey et al., 149 USPQ 47.
As to claim 12, the relative sizing of the outer and inner layers would be arbitrary.
It has been held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device is not patently distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F. 2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Applicant's arguments and amendments filed January 16, 2026 have been fully considered but they are not entirely persuasive. The reference to Hodge has been overcome. However, Weder (‘467) discloses a plant holder made from two discrete sidewall portions (see column 6, lines 48-60), so the grounds of rejection are maintained. Furthermore, additional rejections under 112(a) and 112(b) are newly made in view of the amendments.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG