Ex Parte FukuiDownload PDFBoard of Patent Appeals and InterferencesOct 5, 201010204977 (B.P.A.I. Oct. 5, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TOMIO FUKUI ____________ Appeal 2009-003021 Application 10/204,977 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown in the PTOL-90A cover letter attached to this decision. Appeal 2009-003021 Application 10/204,977 2 STATEMENT OF THE CASE Tomio Fukui (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 33-45. Appellant cancelled claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The claimed invention is to a method and a structure for performing soil erosion and torrent control and shore protection. Claims 36 and 41, reproduced below, are illustrative of the subject matter on appeal. 36. A method for controlling a torrent and preventing a torrent bed from being eroded, the method comprising: fixing at least two longitudinal cables to at least one lodgment; providing at least two nets; and mooring the nets by the longitudinal cables and mooring cables connected to the longitudinal cables so that (i) the nets are arranged at proper intervals in the direction of a water flow of the torrent and (ii) each net is placed on the torrent bed such that meshes of the net engage gravel on the torrent bed and gravel that comes down from upstream regions onto the net. 41. A structure for controlling a torrent and preventing a torrent bed from being eroded, the structure comprising: at least one lodgment; at least two longitudinal cables connected to the at least one lodgment; at least one net; and mooring cables for connecting the at least one net to the longitudinal cables so that (i) the at least one net is arranged at proper intervals in the direction of a water flow of the torrent and (ii) the at least one net is placed on the torrent bed such that meshes of the net engage gravel on the torrent bed and gravel that comes down from upstream regions onto the net. Appeal 2009-003021 Application 10/204,977 3 The Rejections The following Examiner’s rejections are before us for review: (1) Claims 33-37 and 41 are rejected under 35 U.S.C. § 103(a) as unpatentable over the Figure 2 embodiment of Fukui (European Patent Application Publication No. EP 0 937 823 A1, published Aug. 25, 1999) in view of Chevalier (U.S. Patent No. 4,946,308, issued Aug. 7, 1990).2 Ans. 3. (2) Claims 33, 34, 36-38, and 41 are rejected under 35 U.S.C. § 103(a) as unpatentable over the Figure 8 embodiment of Fukui in view of Chevalier.3 Ans. 5. (3) Claims 39 and 40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fukui in view of Chevalier, as applied to claim 37 above, and further in view of Hough (U.S. Patent No. 1,834,060, issued Dec. 1, 1931). Ans. 6. (4) Claims 42, 43, and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kellner (U.S. Patent No. 1,662,578, issued Mar. 13, 1928) in view of Chevalier. Ans. 6. (5) Claim 44 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kellner in view of Chevalier, as applied to claim 43 above, and further in view of Hough. Ans. 8. 2 The rejection has been reworded from the way it appears in the Examiner’s Answer to clarify that the Examiner is relying upon Fukui’s Figure 2 embodiment in contrast to the second rejection where the Examiner is relying upon Fukui’s Figure 8 embodiment. 3 The rejection has been reworded from the way it appears in the Examiner’s Answer to clarify that the Examiner is relying upon Fukui’s Figure 8 embodiment in contrast to the first rejection where the Examiner is relying upon Fukui’s Figure 2 embodiment. Appeal 2009-003021 Application 10/204,977 4 SUMMARY OF DECISION We REVERSE. OPINION Issues In light of the Appellant’s contentions and the Examiner’s positions, the issues before us are as follows: Issue 1: Did the Examiner err in concluding that it would have been obvious to one of ordinary skill in the art to substitute the net of Chevalier for the barrier-like member of either Figure 2 or Figure 8 of Fukui? Issue 2: Did the Examiner err in finding that the combination of Kellner and Chevalier discloses at least one second net having an upper side that hangs on the surface of a torrent? Analysis Issue 1 Appellant contends that the Examiner has not established a prima facie case of obviousness and the Examiner lacks a proper motivation for combining Fukui and Chevalier. App. Br. 11. More particularly, Appellant contends that there is no suggestion or motivation to combine Fukui and Chevalier in the way suggested by the Examiner. Id. Appellant also contends that Fukui does not disclose nets as suggested by the Examiner, but rather discloses barrier-like members which do not resemble anything like a net, which are not nets as disclosed and claimed in the present invention, and which do not act as nets in their form, purpose, and function so that the Examiner has improperly equated the wire cylinder filled with stones to nets. App. Br. 11-12. Appellant also contends that the nets disclosed in the Appeal 2009-003021 Application 10/204,977 5 present invention have less resistance against water flow and are not used for the same purpose and do not function in the same way as the barrier-like members of Fukui so that the barrier-like members of Fukui should not be equated to the nets of the present invention. App. Br. 12. Appellant also contends that since there is no net or anything resembling a net in Fukui, one skilled in the art would not find it obvious to simply substitute the matting disclosed in Chevalier for the barrier-like member of Fukui. App. Br. 13. The Examiner’s position is that Fukui “discloses the invention substantially as claimed” (Ans. 4 and 5) in independent claims 33, 36, 37, and 41, but Fukui fails to teach the claim limitation of each net is “placed on the torrent bed such that meshes of the net engage gravel on the torrent bed and gravel that comes down from upstream regions” onto the net. Ans. 4 and 5. The Examiner posits that Chevalier, at column 5, line 65 through column 6, line 10, teaches a net being placed on the torrent bed such that meshes of the net engage gravel on the torrent bed and gravel that comes down from upstream regions. Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Fukui by substituting the net of Chevalier for the net or barrier-like member in the form of a wire cylinder filled with stones of Fukui “since such a modification prevents erosion while finding use for old tires.” Id. In response to Appellant’s arguments that Fukui does not teach a net, the Examiner argues that Fukui does indeed disclose a net because “[a] net is a mesh that acts as a barrier (according to Webster’s II Dictionary 3rd edition 2005).” Ans. 8. The Examiner also argues that: [w]ith regards to appellants argument that it is not obvious to modify a barrier like member arranged on the ground with a matting that is suspended Appeal 2009-003021 Application 10/204,977 6 above a moving stream, it should be noted that net member (3) of [Fukui] reduces water flow (see col. 2[,] line 20+, col. 4[,] line 24+, col. 12[,] line 15+) and net member (see Figs. 4, 5) of Chevalier reduces water flow (see col. 5[,] line 65 thru col. 6[,] line 10) as well. Therefore, depending on the amount of water flow reduction desired (such as not very restricted), one would make the above mentioned substitution of the net of [Fukui] with the net of Chevalier. Ans. 9 and 9-10. Fukui discloses preventing erosion or collapse of a stream or river by mooring barrier-like members 3 parallel to each other using longitudinal cables 1. Abstract. Barrier-like members include timber, bound timber, timbers connected in a venetian-blind shape, a concrete block, a wire cylinder filled with stones (particularly, heavy stones), a sandbag, etc. Col. 16, ll. 27-30. However, the Figures 2 and 8 embodiments specifically disclose that the barrier-like member is timber. Figs. 2 and 8, col. 11, ll. 26- 28, and col. 14, ll. 44-53. An auxiliary cable 5 may be tied between two base points or trees 2 so that longitudinal cables 1 may be connected to the auxiliary cable 5 for mooring of the barrier-like members 3. Fig. 2. Alternatively, the longitudinal cables 1 may be connected to base points 2 on a mountainside for mooring of the barrier-like members 3. Fig. 8. Chevalier discloses an erosion control matting 100. Title and Fig. 4. The matting 100 is used for controlling certain erosion conditions, particularly with respect to erosion of soil and sand by the action of water. Abstract, ll. 2-4. The matting 100 is formed by cutting a vehicle tire into a continuous elongated strip and the strips are woven to form an interwoven rubber matting 100. Abstract, ll. 4-6 and 13-14. The rubber matting may be Appeal 2009-003021 Application 10/204,977 7 suspended (by means of a cable extending transversely to water flow as shown in Figure 4) in and above a moving stream to both reduce the stream velocity and cause silt deposition in around the matting dam. Col. 5, l. 65 through col. 6, l. 7. The matting may be used for earthen dam faces, and in gullies, stream banks or roadside ditches. Col. 6, ll. 8-10. The matting may be laid along a stream bank, roadside ditch, gully, earthen dam face or laid in the bottom of a canal to protect the underlying surface from the erosive effects of moving water. Col. 6, ll. 19-22. “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). We do not agree with the Examiner that “a wire cylinder filled with stones, particularly heavy stones” can be equated to a net. An ordinary and customary meaning of the word net is “an open-meshed fabric twisted, knotted, or woven together at regular intervals.”4 Thus, a wire cylinder filled with stones, particularly heavy stones, does not meet the ordinary and 4 See MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY (10th ed.) Appeal 2009-003021 Application 10/204,977 8 customary meaning of a net. Regardless, the textual and drawing disclosures with respect to both the Figure 2 and Figure 8 embodiments of Fukui (i.e., the embodiments relied upon by the Examiner in his rejections) clearly do not use a barrier-like member in the form of a wire cylinder filled with stones. Indeed, with respect to the Figure 2 embodiment of Fukui, the barrier-like members are specifically disclosed to be timbers. See Fig. 2 and col. 11, ll. 26-28. With respect to the Figure 8 embodiment, Fukui discloses that it is the same as the Figure 2 embodiment, except that the base points for mooring the longitudinal cables 1 are on the slope of a mountainside. See Fig. 8 and col. 14, ll. 44-53. Thus, the barrier-like members of the Figure 8 embodiment of Fukui are also timbers. In view of the foregoing, we find that the Examiner’s reasoning, i.e., “[i]t would have been obvious to one of ordinary skill in the art to modify [Fukui] by substituting the net as taught by Chevalier for the net disclosed by [Fukui] since such modification prevents erosion while finding use for old tires,” does not articulate a sufficient reasoning with some rational underpinning as to why one of ordinary skill in the art would replace the timber barrier-like members of Fukui with the nets of Chevalier in order to support the legal conclusion of obviousness. Absent a teaching or suggestion of replacing a timber barrier-like member with a net, we are unpersuaded that the Examiner has set forth a prima facie case of obviousness. Since the Examiner has not articulated a reasoning with some rational underpinning sufficient to support the conclusion of obviousness, we do not sustain the rejection of claims 33-37 and 41 under 35 U.S.C. § 103(a) as unpatentable over the Figure 2 embodiment of Fukui in view of Chevalier Appeal 2009-003021 Application 10/204,977 9 and the rejection of claims 33, 34, 36-38 and 41 under 35 U.S.C. § 103(a) as unpatentable over the Figure 8 embodiment of Fukui in view of Chevalier. Additionally, the Examiner does not explain how the teachings of Hough might remedy the deficiency in the teachings of Fukui and Chevalier. Therefore, we do not sustain the Examiner’s rejection of claims 39 and 40 under § 103(a) as unpatentable over Fukui, Chevalier and Hough. Issue 2 Appellant contends that the Examiner has not established a prima facie case of obviousness because neither Kellner nor Chevalier disclose, teach or suggest a second net having an upper side that hangs on the surface of the torrent and a lower side that is connected to a lodgment located in the torrent bed. App. Br. 17. Appellant also contends that the Examiner does not even appear to address the limitations of “at least one second net having an upper side that hangs on the surface of the torrent (not the shore) and a lower side that is connected to a lodgment located in the torrent bed.” Id. The Examiner’s position is that: Kellner discloses a method of erosion and torrent control comprising fixing at least two longitudinal cables (12, 14, see marked up Fig. 1 below) to a first lodgment (13, 15), providing at least two first jetties (this is considered as shaded members where “1st two jetties (nets)” is pointing to, see marked up Fig. 1 below), mooring the at least two jetties by the longitudinal cables, the jetties are arranged at proper intervals (see Fig. 1 below), providing at least one stable second lodgments (9, 10, see marked up Figure 1 below), a second jetty (this is considered as shaded members where “second net (jetty)” is pointing to, see marked up Fig. 1 below) hang on the surface of the shore (see Fig. 2, col. 1 line 5). At least one Appeal 2009-003021 Application 10/204,977 10 third lodgment located in the torrent bed (this is considered as member 7, members 14 and 15 connected thereto as indicated below in marked up Figure 1 as “third lodgment”). The at least second jetty is attached to the second and third lodgments. Kellner discloses the invention substantially as claimed. However, Kellner lacks nets being placed on the torrent bed such that meshes of the nets engage gravel on the torrent bed and gravel that comes down from upstream regions. Chevalier teaches net being placed on the torrent bed such that meshes of the net engage gravel on the torrent bed and gravel that comes down from upstream regions (see Figs. 4, 5, col. 5 line 65 thru col. 6 line 10). It would have been considered obvious to one of ordinary skill in the art to modify Kellner by substituting the nets as taught by Chevalier for the jetties disclosed by Kellner since such a modification protects a river bank and its bed while finding use for old tires. Ans. 6-7. Kellner discloses a jetty which can serve as a revetment to protect a river band and its bed. P. 1, ll. 4-5. The jetty mat includes a series of rows of connected collecting jetty units, as the one shown in Figure 4, which are arranged transversely to a river on its bank and on its bed. P. 1, ll. 38-41. The rows are anchored to the bank against movement transversely and downwardly with respect to the current of the river. P. 1, ll. 41-44. Each collecting jetty unit includes a single longitudinal angle bar 1 and two sets of crossed angle bars 2 which are attached at some distance from the ends of the longitudinal angle bar 1. Fig. 4 and p. 1, ll. 46-49. Wires 3 connect the bars of the two sets of crossed angle bars 2, wires 4 connect the bars of a crossed angle bars 2 with another bar of the same crossed angle bar 2, and wires 5 connect the crossed bars 2 with the longitudinal angle bars 1. Fig. 4 Appeal 2009-003021 Application 10/204,977 11 and p. 1, ll. 49-54. Each longitudinal angle bar 1 has an eye 6 fastened at each end thereof. P. 1, ll. 54-55. Links 7 are used to connect longitudinal angle bars 1 of adjacent collecting jetty units and links 8 connect adjacent ends of the crossed angle bars 2. P. 1, ll. 56-64. Anchoring cables 9 are connected to posts 10 on the river bank 11 and to the eye 6 of different transverse rows to anchor the jetty mat against transverse movement. P. 1, ll. 65-69. Longitudinal cables 12 are fastened to posts 13 on the bank 11 and to outer eyes of different transverse rows to anchor the mat against movement downstream. P. 1, ll. 70-75. Intermediate longitudinal cables 14 are fastened to posts 15 above the mat and to links of the lowermost transverse row. P. 1, ll. 76-81. In operation, the connected jetty units form a mat to collect material washed down by the river and will prevent further erosion of the bank and river bed. P. 1, ll. 82-86. Chevalier has been described supra. Rejections based on 35 U.S.C. § 103 must rest on a factual basis, with all facts being considered. In making such a rejection, the examiner has the initial duty of supplying the requisite factual basis for the rejection and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, we find that the Examiner has failed to make sufficient factual findings as to claim 42’s step of “connecting the at least one second net at the upper side to the at least one second lodgment so that the upper side of the second net hangs on the surface of the torrent” and claim 43’s recitation of “the at least one second net connected at the upper side to the at least one second lodgment so that the upper side of the at least one second Appeal 2009-003021 Application 10/204,977 12 net hangs on the surface of the torrent.” We agree with Appellant that it is not clear from the Examiner’s statement that “a second jetty (this is considered as shaded members where “second net (jetty)” is pointing to, see marked up Fig. 1 below) hang on the surface of the shore (see Fig. 2, col. 1 line 5)” and the Examiner’s marked-up copy of Figure 1 of Kellner how the upper side of the second net hangs on the surface of the torrent, not the shore as referred to by the Examiner. Accordingly, we find the Examiner’s legal conclusion of obviousness is not supported by facts, and thus, cannot stand. See Warner at 1017 (holding that “[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). In view of the foregoing, we do not sustain the Examiner’s rejection of claims 42, 43, and 45 under 35 U.S.C. § 103(a) as unpatentable over Kellner in view of Chevalier. Additionally, the Examiner does not explain how the teachings of Hough might make up the deficiency in the teachings of Kellner and Chevalier. Therefore, we do not sustain the Examiner’s rejection of claim 44 under § 103(a) as unpatentable over Kellner, Chevalier and Hough. CONCLUSIONS The Examiner erred in concluding that it would have been obvious to one of ordinary skill in the art to substitute the net of Chevalier for the timber barrier-like member of either Figure 2 or Figure 8 of Fukui. The Examiner erred in finding that the combination of Kellner and Chevalier discloses at least one second net having an upper side that hangs on the surface of the torrent. Appeal 2009-003021 Application 10/204,977 13 DECISION We reverse the Examiner’s decision to reject: (1) claims 33-37 and 41 under 35 U.S.C. § 103(a) as unpatentable over the Figure 2 embodiment of Fukui in view of Chevalier; (2) claims 33, 34, 36-38, and 41 under 35 U.S.C. § 103(a) as unpatentable over the Figure 8 embodiment of Fukui in view of Chevalier; (3) claims 39 and 40 under 35 U.S.C. § 103(a) as unpatentable over Fukui in view of Chevalier, as applied to claim 37 above, and further in view of Hough; (4) claims 42, 43, and 45 under 35 U.S.C. § 103(a) as unpatentable over Kellner in view of Chevalier; and (5) claim 44 under 35 U.S.C. § 103(a) as unpatentable over Kellner in view of Chevalier, as applied to claim 43 above, and further in view of Hough. 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