Ex Parte Fukui

Board of Patent Appeals and Interferences

Oct 5, 2010

10204977 (B.P.A.I. Oct. 5, 2010)

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.

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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.
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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.
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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
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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
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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
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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.)
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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
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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
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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
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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
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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.
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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.
REVERSED

mls

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