Ex Parte Tyler

Board of Patent Appeals and Interferences

Jan 13, 2006

10208631 (B.P.A.I. Jan. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY W. TYLER
____________

Appeal No. 2005-2694
Application No. 10/208,631
____________

ON BRIEF
____________

Before McQUADE, CRAWFORD and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL

Rodney W. Tyler appeals from the final rejection (mailed May
18, 2004) of claims 1-21, 56, 69-71, 76-84, 113 and 114. Claims
22-55, 57-68, 72-75 and 85-112, the only other claims pending in
the application, stand withdrawn from consideration.
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Application No. 10/208,631

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THE INVENTION
The subject matter on appeal relates to “devices, systems, and
methods . . . for controlling erosion, retaining sediment,
preventing siltation, treating runoff, removing pollutants,
remediating environmental damage, protecting plants, bordering play
areas, absorbing spills, establishing vegetation, protecting
ecosystems, and/or restoring waterways and/or other riparian areas”
(specification, page 1). Representative claims 1, 113 and 114 read
as follows:
1. A system comprising a first tubular mesh enclosure formed
from a mesh material having a nominal opening size of less than 0.5
inches, said first tubular mesh enclosure having a first opposing
pair of ends, at least one of said first opposing pair of ends
sealed, said first tubular mesh enclosure defining a first length
and a first generally oval cross-section defining a first major
diameter, a first ratio of said first length to said first major
diameter greater than approximately 40, said first tubular mesh
enclosure surrounding a filling.
113. A method for forming a storm water control device
comprising:

placing a compost-based filling into a mesh tube formed from a
mesh material having a nominal opening size of less than 0.5
inches, a ratio of a length of the mesh tube to a diameter of the
mesh tube greater than 40; and
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providing the mesh tube to a location prone to storm-water
flow.

114. A method for forming a sediment control device
comprising:

placing a compost-based filling into a mesh tube formed from a
mesh material having a nominal opening size of less than 0.5
inches, a ratio of a length of the mesh tube to a diameter of the
mesh tube greater than 40; and

providing the mesh tub to a location prone to
sediment-containing water flow.

THE EVIDENCE
The items relied on by the examiner as evidence of obviousness
are:
Grabhorn 5,595,458 Jan. 21, 1997
Burke 5,679,247 Oct. 21, 1997
Ito et al. (Ito) 5,747,633 May 05, 1998
Garcia et al. (Garcia) 5,854,304 Dec. 29, 1998
Albright Seed Company, “Construction Site Erosion Costly, Illegal”
©1997, 1998 (Albright).
The item relied on by the appellant as evidence of non-
obviousness is:
The 37 CFR § 1.132 Declaration of Dr. Jerald S. Fifield filed
July 28, 2004.

THE REJECTIONS
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Application No. 10/208,631

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Claims 1-3, 9-13, 15-21, 56, 69-71, 76-84, 113 and 114 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Albright in view of Grabhorn.

Claims 4-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Albright in view of Grabhorn and Burke.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Albright in view of Grabhorn and either Ito or
Garcia.
Attention is directed to the main and reply briefs (filed
October 28, 2004 and March 30, 2005) and answer (mailed February 4,
2005) for the respective positions of the appellant and examiner
regarding the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 103(a) rejection of claims 1-3, 9-13, 15-21, 56,
69-71, 76-84, 113 and 114 as being unpatentable over Albright in
view of Grabhorn

Albright discloses a so-called “Agromin Bio-Filter Bag”
designed for use on construction sites to prevent erosion from
storm water runoff. The “Bag” is a “12 by 9 by 40-inch long
object” (page 1) in the form of a mesh bag filled with 100 percent
recycled wood chips. This construction allows water to flow
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therethrough while holding back entrained soil, silt and debris.
According to Albright,
[t]he Agromin Bio-Filter Bags are suitable for open
slopes and embankments, gullies, catch basins, culvert
retention areas, roadside ditches, swales and around
drain openings.

The filter bags are easily installed. At about
forty-five pounds each, workers can readily handle them.

Depending on application, the bags can be staked in
place using two 1 x 2 inch wood stakes or their
equivalent for each filter bag [page 2].
As implicitly conceded by the examiner (see pages 3 and 4 in
the answer), Albright does not meet the limitations in independent
claims 1, 113 and 114 requiring (1) the mesh material to have a
nominal opening size of less than 0.5 inches and (2) the enclosure
or tube to have a length to diameter ratio of greater than 40 (or
approximately 40).
Grabhorn discloses a water permeable erosion control bag
similar in many respects to the one disclosed by Albright. The
Grabhorn bag consists of hammer-milled wood fragments packed within
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cylindrical polyethylene tubes having a ½ (0.5) inch mesh size, a
diameter of about 12 inches and a length of either 30 or 60 inches
(see column 2, lines 24-34).

In proposing to combine Albright and Grabhorn to reject claims
1, 113 and 114, the examiner submits that
[t]o have formed the Albright tubular mesh with
openings of about ½ inch or less than ½ inch, thus
allowing appropriate flow of liquid through the tubular
mesh while holding the filling material therewithin,
would have constituted an obvious expedient to one having
ordinary skill in the art at the time the invention was
made as taught by Grabhorn '458. Forming the resulting
tubular mesh in lengths of a magnitude to define a ratio
of length to major diameter equal to 40, (as for example
40 feet or more), thus allowing expansive coverage with a
single unit as well as forming the major diameter of more
than 12 inches to allow for a height coverage of
approximately 13-15 inches, would have constituted a
further obvious expedient to one having ordinary skill in
the art at the time the invention was made [answer,
page 4].

The appellant does not dispute the examiner’s conclusion that
Grabhorn would have suggested forming the Albright mesh material
with a nominal opening size of less than 0.5 inches. The appellant
does contend, however, that the rejection is unsound because the
combined teachings of Albright and Grabhorn would not have
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suggested a system and method embodying the length to diameter
ratios recited in claims 1, 113 and 114.

Responding to this line of argument, the examiner contends
that
[t]he suggestion or motivation to enlarge the Albright
tubular mesh is with the knowledge generally available to
one of ordinary skill in the art as one of ordinary skill
in the soils engineering art would wish to establish as
much of a continuous barrier to water runoff as is
possible while also striving to create a barrier which
can hold back as much water level as feasible [answer,
pages 5 and 6].
The examiner also takes a somewhat different approach by (1)
characterizing the ratio difference between the claims and the
applied references as an uncritical, and hence arbitrary, variation
in size and (2) citing case law for the proposition that such size
limitations
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cannot be a basis for patentability, since where
patentability is said to be based upon particular chosen
dimensions or upon another variable recited in a claim,
the applicant must show that the chosen dimensions are
critical. There had been no evidence submitted during
the prosecution of the application, that any of the
recited dimensions, sizes, and ratios are a critical
factor to the invention, or that such values for the
sizing of the mesh tube produces unexpectedly good
results [answer, page 6].
Rejections based on 35 U.S.C. § 103(a) must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis 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. Id.
In the present case, the combined teachings of Albright and
Grabhorn do not supply the factual basis necessary to support a
conclusion of obviousness with respect to the subject matter
recited in claims 1, 113 and 114.
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The anti-erosion device disclosed by Albright has a length to
major diameter ratio of 40:12 (approximately 3.3) which is far
smaller than the “greater than 40” or “greater than approximately
40” ratio required by these claims. Albright also teaches that the
device disclosed therein weighs about forty-five pounds and is
readily handled by workers and easily installed. This disclosure
by Albright, and the disclosure of a similar device by Grabhorn,
would not have furnished the artisan with any suggestion or
motivation to selectively enlarge the dimensions, and change the
proportion, of the Albright bag in the manner proposed by the
examiner so as to arrive at the length to diameter ratio recited in
the claims. The Albright device as so modified would be
substantially longer and heavier than that contemplated by the
reference for ready handling and easy installation.

The reliance by the examiner on a bald assertion of knowledge
generally available to one of ordinary skill in the art to bridge
the evidentiary gap posed by Albright and Grabhorn is not well
taken. Such unfounded assertions are not permissible substitutes
for evidence. See In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d 1430,
1435 (Fed. Cir. 2002).
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Moreover, the examiner’s criticism of the claim limitations at
issue as not being critical is of no moment. Claims are not
legally required to include “critical” limitations. See W.L. Gore
& Assocs. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Finally, the contention that uncritical limitations pertaining
to differences in size or other variables in a claim cannot form
the basis for patentability also is unsound. To begin with, the
inference of such a general or per se rule of obviousness from
cases turning on specific facts has no basis in law. Furthermore,
the application of such a per se rule to reject a claim constitutes
additional legal error because it bypasses the particularized
fact-specific inquiry required by § 103(a). See In re Ochiai, 71
F.3d 1565, 1571, 37 USPQ2d 1127, 1132-33 (Fed. Cir. 1995); In re
Wright, 343 F.2d 761, 769-770, 145 USPQ 182, 190 (CCPA 1965).

For these reasons, the combined teachings of Albright and
Grabhorn fail to establish a prima facie case of obviousness with
respect to the subject matter recited in independent claims 1, 113
and 114.1 Accordingly, we shall not sustain the standing 35 U.S.C.

1 Consequently, it is unnecessary to delve into the merits of the appellant’s declaration evidence
of non-obviousness.
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§ 103(a) rejection of claims 1, 113 and 114, and dependent claims
2, 3, 9-13, 15-21, 56, 69-71 and 76-84, as being unpatentable over
Albright in view of Grabhorn.
II. The 35 U.S.C. § 103(a) rejection of claims 4-8 as being
unpatentable over Albright in view of Grabhorn and Burke

As the examiner’s application of Burke does not overcome the
deficiencies of Albright and Grabhorn relative to parent claim 1,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 4-8 as being unpatentable over Albright in view of
Grabhorn and Burke.
III. The 35 U.S.C. § 103(a) rejection of claim 14 as being
unpatentable over Albright in view of Grabhorn and either Ito or
Garcia

Since the examiner’s citation of either Ito or Garcia fails to
cure the shortcomings of Albright and Grabhorn with respect to

parent claim 1, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 14 as being unpatentable over Albright
in view of Grabhorn and either Ito or Garcia.
SUMMARY
The decision of the examiner to reject claims 1-21, 56, 69-71,
76-84, 113 and 114 is reversed.
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REVERSED

JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

JPM/ki
Appeal No. 2005-2694
Application No. 10/208,631

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Michael N. Haynes
1341 Huntersfield Close
Keswick, VA 22947

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