Appeal No. 2004-1696
Application 09/988,181
appellant’s arguments in the brief and the reply brief. See generally, In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
As an initial matter, we find that, when considered in light of the written description in
the specification, including the drawings, as interpreted by one of ordinary skill in this art, see,
e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language of appealed
claim 1 does not specify any dimensions for the non-square rectangle or for the ellipse. Thus, the
rectangle can be off square by any dimension, however small, and the ellipse can be off circle by
any dimension, however small.
Appellant submits that Haltenhoff “discloses neither a non-square rectangular top nor an
elliptical base” (brief, page 4). We find here that appellant discloses in the specification that
Haltenhoff’s flowerpot has a “cross-sectional surface at the upper boundary [that] is square and
the pot is circular at the bottom” (page 1, lines 9-10). The examiner finds that Haltenhoff
“discloses the claimed invention, including a rectangular upper boundary, except for the elliptical
shape of the base” (Paper No. 9, page 2).
We find that Haltenhoff discloses that the flowerpot “is preferably provided with a square
support portion and a round bottom portion” wherein “[t]he shape of the pot is such that the
upper square upper portion gradually changes to the round lower portion” and “[t]he invention is
not limited to this shape of pot” (page 2, first full paragraph).
While the preferred flowerpots disclosed by Haltenhoff have square tops and round
bottoms, the reference specifically does not exclude other top and base shapes. In this respect,
the examiner contends that one of ordinary skill in this art would have modified the preferred
flowerpots of Haltenhoff with other shapes, including elliptical bases, and dimensions because a
change in shape and/or size would not have been expected to result in a change of function
(Paper No. 9, pages 2-3). Appellant argues that the geometry of the claimed flowerpots is
different from that of the flowerpots of Haltenhoff and that “[i]mprovements flow from these
geometric changes” which “the prior art does not appreciate” and thus, the present invention is
unobvious over Haltenhoff (brief, pages 4 and 6). The examiner responds that the flowerpots
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