Ex parte BACH

Board of Patent Appeals and Interferences

Sep 7, 2000

08548365 (B.P.A.I. Sep. 7, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARY M. BACH
____________
Appeal No. 1998-0122
Application No. 08/548,365
____________
ON BRIEF
____________
Before COHEN, PATE, and STAAB, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 8, 9
and 11-14. These are the only claims remaining in the
application.
Appeal No. 1998-0122
Application No. 08/548,365
Our understanding of the Japanese Yamamoto patent is by1
reference to two translations that have being provided to
appellant by the Patent and Trademark Office.
2
The claimed invention is directed to a geotechnical
fabric used for the confinement of stones. Such a fabric is
useful in building roads, walls and other foundation.
A further understanding of the claimed invention can be
had by reference to claim 8, the independent claim on appeal,
appended to appellant's brief.
The references of record relied upon by the examiner as
evidence of obviousness are:
Bach et al. ('309) 4,778,309 Oct. 18,
1988
Bach et al. ('543) 5,449,543 Sep.
12, 1995
Yamamoto (JP-A Kokai) JP-A 56-16730 Feb. 18, 1981
(PTO Translation) .1
Claims 8, 9 and 11-13 stand rejected under 35 U.S.C. §
103 as unpatentable over Bach '309 in view of Yamamoto.
According to the examiner, it would have been obvious to
modify the geotechnical cell structure of Bach in the manner
taught by the Yamamoto reference.
Appeal No. 1998-0122
Application No. 08/548,365
3
Claim 14 stands rejected under 35 U.S.C. § 103 as
unpatentable over Bach '309 in view of Yamamoto and Bach '543.
The Bach '543 patent teaches the use of tendons for additional
reinforcement of the cellular structure. According to the
examiner, it would have been obvious to use such tendons in
the cellular structure of Bach '309 modified according to the
Yamamoto teaching.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have reached the conclusion that
the applied prior art does not establish a prima facie case of
obviousness with respect to the rejections on appeal.
Therefore these rejections are reversed. Our reasons follow.
As an initial matter, we find it necessary to construe
the scope of claim 8, the independent claim on appeal.
Initially, we note the following quotation from appellant's
brief:
The key to the difference between Appellant's
invention and Yamamoto is in the fill material used
in combination with the web to form the complete
structure. As claimed by Appellant, the fill
material is stones which have diameters in excess of
Appeal No. 1998-0122
Application No. 08/548,365
4
the diameter of the apertures such that the stones
become lodged in the apertures and thereby increase
the load bearing capacity of the structure. (Brief
page 4 (pages are unnumbered by the
appellant)(emphasis supplied).
Turning to claim 8, we note that the preamble thereof, directs
the claim to a cell structure "for use in combination with
confinement material of stones." The examiner has interpreted
this limitation as simply a use limitation and does not
consider the claim to be directed to a specific geotechnical
cellular structure of utility expressly for stone, but rather
as a structure of general utility for any fill material.
However, in the body of the claim, we note the limitation that
the stones are of sizes "to permit said stones filling said
cells to become lodged in said apertures." In our view, this
recitation in the body of the claim breathes life and meaning
into the preambular recitation of a cell structure for use in
combination with confinement material of stones. Accordingly,
we interpret the claim as directed to a cellular structure
expressly for use with stone or rock.
Interpreted in this light, it is apparent that both the
primary reference to Bach '309 and the secondary reference to
Yamamoto, if combined would not render the claimed subject
Appeal No. 1998-0122
Application No. 08/548,365
5
matter prima facie obvious. We agree with appellant, that
both of these references are directed to stabilizing soils or
materials composed of fine particles. Indeed, the disclosure
of Yamamoto is directed to materials fine enough to be placed
hydraulically. Thus, when Yamamoto discusses emplacing
crushed stone, as pointed out by the examiner, it is our
interpretation that Yamamoto is referring to crushed stones of
similar diameter to that of sand or soil that can be jetted
into place and not stones of graeter diameter than the
fabric's apertures as specified in the independent claim on
appeal.
We have further considered the teachings of the
additional Bach' 543 patent but find no disclosure therein
that when combined with the Bach and Yamamoto teachings with
regard to claim 8 would have rendered claim 14 prima facie
obvious. Since we have found that, by appellant's argument
and by the express language of the claim, the cell structure
subject matter herein claimed is directed to a cell structure
for use with stones, we have reversed the examiner's
rejections on appeal.
Appeal No. 1998-0122
Application No. 08/548,365
6
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
lp
Appeal No. 1998-0122
Application No. 08/548,365
7
LAW DEPARTMENT
PATENT SECTION REYNOLDS METALS COMPANY
6601 WEST BROAD STREET
RICHMOND VA 23230
Leticia
Appeal No. 1998-0122
Application No. 08/548,365
APJ PATE
APJ STAAB
APJ COHEN
DECISION:
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 17, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT