Ex parte Sutherland

• Docket Number: Appeal 2022-003982,Application 14/119,378
• Decision Date: 15 March 2023
• Parties: Ex parte HAMISH ROSS SUTHERLAND and MATTHEW ALEXANDER WOOLFE Technology Center 3600
• Court: Patent Trial and Appeal Board

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Ex parte HAMISH ROSS SUTHERLAND and MATTHEW ALEXANDER WOOLFE Technology Center 3600

Appeal 2022-003982

Application 14/119,378

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 15, 2023

FILING DATE: 05/20/2014

Before MICHELLE R. OSINSKI, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges.

DECISION ON APPEAL

OSINSKI, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellant^[1] appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 6-16, 22, 24, and 26-31, which are all of the pending claims.^[2] A video oral hearing was held February 9, 2023. A

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transcript of the oral hearing ("Tr.") will be entered into the record in due course. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

We AFFIRM IN PART.

THE CLAIMED SUBJECT MATTER

Claims 22, 24, 26, 29, and 31 are independent. Claims 22, 29, and 31 are reproduced below.

22. A turf surface adapted to being relocated from a grow in field site to a destination site for subsequent use as an athletic playing surface, wherein the relocating includes harvesting, transporting, and installing, comprising

(a) a reinforcing root-permeable mat, the reinforcing root-permeable mat having sufficient strength to support the turf surface during the harvesting, transporting, and installing

(b) a removable root-permeable backing located beneath the reinforcing root permeable mat; (c)a layer of growth media located on the reinforcing root-permeable mat; and

(d) natural grass plants having roots extending downwardly through the layer of growth media, the reinforcing root-permeable mat and the removable root-permeable backing

(e) a subsurface located below the removable root-permeable backing at the grow in field site, the subsurface being compacted so as to be sufficiently impenetrable by the roots of the natural grass plants that a root layer resides between the subsurface and the removable root permeable backing; and

(f) the removable root-permeable backing being removable from the turf surface during the harvesting such that the root layer is also removable from the turf surface therewith, thereby to promote new root growth of the natural grass plants after the turf surface has been installed at the destination site.

Appeal Br. 37 (Claims App.).

29. A turf surface during the process of being relocated from a grow in field site to a destination site, the turf surface including natural grass plants with roots and the relocating including

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harvesting, transporting, and installing the turf surface at the destination site for subsequent use as an athletic playing surface, the natural grass plants remaining viable throughout the relocating, comprising:

(a) a reinforcing root-permeable mat that is sufficiently strong to support the turf surface during the relocating and thereafter during use as an athletic playing surface;

(b) a removable root-permeable backing located beneath the reinforcing root-permeable mat; (c)a layer of growth media located on the reinforcing root-permeable mat;

(d) natural grass plants having roots extending downwardly through the growth media, the reinforcing root-permeable mat, and the removable root-permeable backing, with some of the roots extending below the removable root-permeable backing and forming a lowermost root layer;

(e) a root impermeable subsurface located below and supporting the turf surface, with the lowermost root layer residing thereabove; and

(f) the turf surface having a first portion located on and above the root impermeable subsurface and a second portion already moved upwardly and away from the root impermeable subsurface during harvesting, wherein the second portion has already had the removable root permeable backing and a corresponding part of the lowermost root layer removed therefrom, and further movement of the turf surface upward and away from the root impermeable subsurface will result in the turf surface being ready for installation at the destination site, with the removable root-permeable backing and the lowermost root layer already having been removed therefrom.

Id. at 40-41 (Claims App.).

31. A relocated turf surface installed at a destination site, within two days of the relocating, and suitable for use as an athletic playing surface, comprising:

a reinforcing root permeable mat that is sufficiently strong to have supported the turf surface during the relocating and also sufficiently strong to support the turf surface during subsequent use as an athletic playing surface at the destination

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site, the reinforcing root permeable mat including a plurality of substantially vertical reinforcing fibres;

a layer of growth media located on the reinforcing root permeable mat; and

natural grass plants having roots extending downwardly through the layer of growth media and the reinforcing root permeable mat, wherein the natural grass plants include newly grown roots at a bottom thereof, the newly grown roots having been generated because of the prior removal during harvesting of a root layer that had existed when the turf surface was previously located and created at a grow in site.

Id. at 41 (Claims App.).

REFERENCES

The prior art relied upon by the Examiner is:

Name	Reference	Date
Bergevin	US 5,586,408	Dec. 24, 1996
Squires	US 6,858,272 B2	Feb. 22, 2005
Agg	US 2012/0167458 A1	July 5, 2012

THE REJECTIONS

The rejections before us on appeal, titled Rejections I-IV, are:

Claim(s) Rejected	35 U.S.C. §	Reference(s)/ Basis
I	6-16, 22, 24, 26-30	112, ¶ 1	Written Description
II	31	102(b)	Bergevin
III	6, 9-16, 22, 24, 26-30	103	Bergevin, Squires[3]

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IV 7, 8 103 Bergevin, Squires, Agg

PROCEDURAL HISTORY

The present application came before the Board previously on appeal. See Prior Board Decision in Appeal 2017-011547, dated July 26, 2019 ("Prior Decision" or "Prior Dec"). In the Prior Decision, the Board affirmed the Examiner's rejections of (i) then-pending claims 2, 6, and 9-16 under 35 U.S.C. § 102(b) as anticipated by Bergevin and (ii) then-pending claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over Bergevin and Agg. Prior Dec. 13. In the Prior Decision, the Board reversed the Examiner's rejection of claims 2, 6-9, 11, 13, 22, and 23 under 35 U.S.C. § 102(b) as anticipated by Squires. Id. After the Prior Decision, Appellant amended the claims several times. See, e.g., Resp. and Amend. (Feb. 21, 2020); Resp. and Amend. (July 28, 2020); Resp. and Amend. (May 10,

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2021). The Examiner issued a Final Office Action (Aug. 25, 2021), which is the subject of the present appeal.

OPINION

Rejection I

The Examiner finds that for independent claims 22, 24, 26, and 29, Appellant "is attempting to claim the subsurface as part of the turf surface," but "the turf surface is functionally defined as being adapted to be relocated" and one would not relocate the subsurface because "the subsurface is defined as existing ground or foundation at the destination site." Final Act. 2-3. The Examiner adds that the Abstract summary fails to include the subsurface as part of the turf surface. Id. The Examiner reiterates that "it is clear that the subsurface should not be a part of the turf surface because the [Specification did not state as such." Id. at 3. Consequently, the Examiner rejects independent claims 22, 24, 26, and 29, and claims 6-16, 27, 28, and 30 depending therefrom, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Id. at 2.

We have considered Appellant's argument that it is "irrelevant" that the language of the claims "does not appear in the [A]bstract." Appeal Br. 19. We agree with Appellant that whether or not the Abstract, in particular, includes the relevant claim language is not determinative as to whether the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)).

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Whether a specification complies with the written description requirement of 35 U.S.C. § 112 ¶ 1 is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue, 230 F.3d at 1323 (citing Vas-Cath, 935 F.2d 1555 at 1561). Here, Appellant asserts that "subsurface 41 [is] shown in original Figure 2 and described in original paragraph [0082]" and that "Figure 3 also shows the same subsurface 41 that is shown in Figure 2, and paragraphs [0084-85] describe the harvesting of the turf surface, as it is uplifted from the subsurface 41,"^[4] such that Appellant clearly "possessed this claimed invention when they filed this application." Appeal Br. 19. Although we appreciate that Appellant clearly possessed a subsurface as part of a turf surface at a grow in field site, Appellant's citations to the Specification do not support a finding that Appellant possessed, in particular, a turf surface adapted to being relocated from a grow in field site to a destination site in which the subsurface is a portion of the turf surface that is adapted to being relocated, as required by the claims, and as identified by the Examiner as being problematic.

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We have also considered Appellant's response that "[a] turf surface adapted to being relocated is not yet relocated. It is being prepared for relocating, and the subsurface is...