Ex Parte Ramsey

Patent Trial and Appeal Board

Jun 11, 2014

11891168 (P.T.A.B. Jun. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BOYD J. RAMSEY
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Appeal 2012-006000
Application 11/891,168
Technology Center 3600
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Before: LYNNE H. BROWNE, JILL D. HILL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Boyd J. Ramsey (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-16 and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a geonet, and to geocomposites or landfills
that include a geonet. Claims 1, 7 and 15 are independent.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
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Application 11/891,168

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1. A geonet for use in a geotechnical construction site, said
geonet having a length substantially greater than its width,
comprising no more than first and second layers of strands,
where
a first plurality of substantially parallel strands extends in
the lengthwise direction and defines the first layer of strands;
a second plurality of substantially parallel strands is
disposed on top of said first plurality of strands and defines the
second layer of strands, said second plurality of strands being at
an angle relative to said first plurality of strands; and
said first and second plurality of strands are substantially
incompressible and secured to one another at crossover
locations.

PRIOR ART
Davison
Heathcott
US 3,629,047
US 2007/0104543 A1

Dec. 21, 1971
May 10, 2007

GROUND OF REJECTION
The sole ground of rejection to be reviewed on appeal is the rejection
of claims 1-16 and 23 under 35 U.S.C. §103(a) as being unpatentable over
Heathcott in view of Davison.

OPINION
The Examiner finds that Heathcott “discloses the invention
substantially as claimed,” except that Heathcott is silent with regard to the
claim’s requirement that the “first plurality of substantially parallel strands
extends in the lengthwise direction and defines the first layer of strands.”
Ans. 5-6. However, the Examiner finds that Davison teaches such an
arrangement. Ans. 6 (citing Davison, col. 2, ll. 35-75). Further, the
Examiner finds that it would have been obvious to modify Heathcott “to
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provide the first plurality of substantially parallel strands to extend in the
lengthwise direction and define the first layer of strands as taught by
Davison in order to provide strength and rigidity against bending or tensile
stress.” Ans. 6.
Appellant’s primary argument is that this combination is improper
because Davison is not analogous art. App. Br. 5; Reply Br. 3. Appellant
agrees that Davison describes a fabric having high strength properties, but
Appellant asserts that the intended uses of Davison’s fabric—which include
carpets, garments, and bed linens—are unrelated to the geonets that are the
subject of Heathcott and the present application. App. Br. 7. Appellant
contends that geonets have a larger scale and different functional
requirements than the fabrics in Davison, and that a skilled artisan would
therefore not consider Davison’s weak fabric design to teach how to improve
a geonet. App. Br. 8-10; Reply Br. 2-4.
In defining the scope of analogous prior art, two separate tests are
used: “(1) whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted).
Here, the Examiner finds that Davison is in the same field of endeavor
because of the structural similarities between Davison’s fabric and the
geonet of the present application: “[A] composite structure having a web
(distinct layers of strands crossed and bonded at their junctions) with
additional layers on both sides.” Ans. 8. We agree that the structural
similarities identified by the Examiner support a finding that Davison is
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within the same field of endeavor as the present application. Appellant’s
arguments that geonets have a different scale and functional requirements
than the textiles of Davison are unpersuasive because a reference need not
be structurally and functionally identical to be within the same field of
endeavor. See, e.g., Bigio, 381 F.3d at 1326-27 (affirming finding that a
toothbrush reference was in the same field of endeavor as a hair brush due to
sufficient similarities in their structure and because the toothbrush could
function for brushing facial hair).
Moreover, we note that “[i]f a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992)). The Specification states that existing geotextiles
may compress or collapse under the loads to which they are sometimes
subjected. Spec. p. 3, ll. 10-13. The Specification teaches that an advantage
of its configuration is that one set of strands extends parallel to the
longitudinal direction of the geonet, thus making the geonet substantially
rigid against compressive forces (by taking advantage of the tensile strength
of the strands). Id. at p. 10, ll. 2-10. Davison does not specifically address
geotextiles, but it does address the same problem of strengthening a textile
and discloses orienting strands parallel to the long axis of a textile so as to
take advantage of the tensile strength of the strand. Davison, col. 3, ll. 7-20,
41-45. Accordingly, Appellant’s argument that Davison is not analagous art
is unpersuasive.
Appellant also argues that Davison does not teach a geonet, and that
Davison’s fabric would be unacceptable as a geonet because the two sets of
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strands are unbonded or lightly bonded, whereas a geonet requires a more
permanent bonding to maintain its structural integrity. App. Br. 8-10; Reply
Br. 5-6. These arguments are not responsive to the rejection, which cites
Heathcott as disclosing a geonet and relies on Davison only for the teaching
of orienting strands parallel to the longitudinal axis to optimize strength. See
Ans. 9-10. “[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). “Combining the teachings of references does not involve an ability
to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Thus, Appellant’s arguments concerning the differences in
strand bonding between Davison’s fabric and geonets are unpersuasive.
Relatedly, Appellant argues that Davison teaches away from
Appellant’s invention because Davison’s fabric is intended for nonwoven
fabrics that are irrelevant to geonets. App. Br. 11. Appellant’s argument is
unconvincing because “teaching away” requires that the reference “criticize,
discredit, or otherwise discourage” the use of other alternatives. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, the portions of Davison
cited by Appellant disclose some applications in which Davison’s fabric can
be used. This disclosure does not represent a teaching away from using
certain aspects of Davison’s fabric structure in other types of applications.
In particular, the cited portions of Davison do not appear to criticize,
discredit, or otherwise discourage the Examiner’s proposed combination of
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incorporating into Heathcott’s geonet the teaching of Davison to optimize
strength by orienting strands parallel to the longitudinal axis. We do not
read into a reference a teaching away from a proposed combination when no
such language exists. See DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant additionally contends that the proposed combination is
improper because Davison teaches that orienting the strands of one web at
an angle between 45˚ to 90˚ relative to the other web enhances the strength
of the fabric. Reply Br. 4-5 (citing Davison, col. 2, ll. 35-45). Because
Heathcott shows webs that are angled with respect to each other, Appellant
argues that a skilled artisan would not seek to modify Heathcott in the
proposed manner because the strength-optimizing technique of Davison is
already incorporated into Heathcott. Reply Br. 4-5. This argument is
unpersuasive because orienting the webs at an angle to each other is not the
only technique Davison teaches for enhancing strength. As noted above,
Davison also discloses orienting strands parallel to the long axis of a textile
so as to take advantage of the tensile strength of the strand. Davison, col. 3,
ll. 7-20, 41-45.
With regard to claims 2-16 and 23, aside from referencing the same
arguments presented for claim 1, Appellant’s arguments amount to a
recitation of the claim elements and a “naked assertion” that the elements are
not found in the prior art. Such statements do not constitute a separate
argument for patentability of claims 2-16 and 23 pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
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brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
Therefore, we sustain the Examiner’s rejection of claims 1-16 and 23
under 35 U.S.C. § 103(a) as being unpatentable over Heathcott in view of
Davison.

DECISION
The Examiner’s rejection of claims 1-16 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Heathcott in view of Davison is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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