Ex Parte Tyler

Patent Trial and Appeal Board

Aug 7, 2013

11804163 (P.T.A.B. Aug. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RODNEY W. TYLER
____________________

Appeal 2011-007688
Application 11/804,163
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007688
Application 11/804,163

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1 and 49.1, 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a method for pneumatically
forming an erosion control device. We reproduce both independent claims 1
and 49 below.
1. A method for pneumatically forming an
erosion control device comprising:
closing a distal end of a mesh tube formed
from a mesh material having a nominal opening
size of between approximately 0.125 inches and
approximately 0.5 inches, a ratio of a length of the
mesh tube to a diameter of the mesh tube greater
than 40, an external surface of said mesh tube
formed by said mesh material;
inserting a pneumatic blower hose into an
open proximate end of the mesh tube;
pneumatically discharging a filling from the
pneumatic blower hose into the mesh tube;
withdrawing the pneumatic blower hose
from the mesh tube; and

1 Our opinion references Appellant’s Specification (“Spec.,” filed May 17,
2007), Appeal Brief (“App. Br.,” filed October 22, 2010), and Reply Brief
(“Reply Br.,” filed March 28, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed March 17, 2011).
2 Although claims 1-53 are pending, Appellant only appeals the rejection of
claims 1 and 49 under 35 U.S.C. § 103(a) (App. Br. 3). Thus, the rejections
of the other claims under 35 U.S.C. § 103(a) and 35 U.S.C. § 112 are
summarily affirmed.
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closing the open proximate end of the mesh
tube.
49. A method for pneumatically forming an
erosion control device comprising:
pneumatically discharging a filling from a
blower hose into a first mesh tube, the first mesh
tube formed from a mesh material having a
nominal opening size of between approximately
0.125 inches and approximately 0.5 inches, a ratio
of a length of the first mesh tube to a diameter of
the first mesh tube greater than 40, an external
surface of said mesh tube formed by said mesh
material.

THE REJECTIONS
The following rejection made by the Examiner is the only rejection
under appeal:
Claims 1 and 49 are rejected under 35 U.S.C. § 103(a) as obvious over
Brown (US 5,030,031, iss. Jul. 9, 1991) in view of Romanek (US 5,358,356,
iss. Oct. 25, 1994) and Truitt (US 5,669,732, iss. Sep. 23, 1997).
The following rejections made by the Examiner are not being
appealed, and thus are summarily affirmed3:

3 To the extent that the Declaration of Mark E. LaFon, dated August 14,
2009, addressing the rejections under 35 U.S.C. § 112 is incorporated into
the Appeal or Reply Brief, and thus would otherwise be considered an
argument against these rejections, we note that Appellant expressly indicates
only the rejection of claims 1 and 49 under 35 U.S.C. § 103(a) is being
appealed (App. Br. 3). Further, we note that these arguments would not be
sufficient to persuade us of Examiner error in the rejections under 35 U.S.C.
§ 112.
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Claims 50 and 52 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
claims 4-7 ,9, 10, 13, 14, 17-19, 21, 23, 24, 27, 28, 32, 34, 36-45, 50,
52, and 53 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention;
claims 9, 10, 14, and 51 are rejected under 35 U.S.C. § 103(a) as
obvious over Brown in view of Romanek and Truitt;
claims 2, 3, 6, 11-13, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as obvious over Brown in view of Romanek and Truitt, and further in view
of Decker ‘253 (US 6,286,253 B1, iss. Sep. 11, 2001);
claims 4 and 46 are rejected under 35 U.S.C. § 103(a) as obvious over
Brown in view of Romanek and Truitt, and further in view of Lahalih (US
5,824,725, iss. Oct. 20, 1998);
claims 5, 23, 40, 43 and 46 are rejected under 35 U.S.C. § 103(a) as
obvious over Brown in view of Romanek and Truitt, and further in view of
Decker ‘445 (US 5,806,445, iss. Sep. 15, 1998);
claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as obvious over
Brown in view of Romanek and Truitt, and further in view of Nielsen (US
4,405,257, iss. Sep. 20, 1983);
claim 15 is rejected under 35 U.S.C. § 103(a) as obvious over Brown
in view of Romanek and Truitt, and further in view of Hansford (US
4,297,810, iss. Nov. 3, 1981);
claims 18-20 and 44 are rejected under 35 U.S.C. § 103(a) as obvious
over Brown in view of Romanek and Truitt, and further in view of Decker
‘827 (US 5,481,827, iss. Jan. 9, 1996);
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claims 21, 42, 45, and 53 are rejected under 35 U.S.C. § 103(a) as
obvious over Brown in view of Romanek and Truitt, and further in view of
Pilaar (US 3,597,928, iss. Aug. 10, 1971);
claims 22, 27, 31, and 36 are rejected under 35 U.S.C. § 103(a) as
obvious over Brown in view of Romanek and Truitt, and further in view of
Collier (US 5,718,802, iss. Feb. 17, 1998);
claims 24, 28, 30, 32, 34-36, 38, and 41 are rejected under 35 U.S.C. §
103(a) as obvious over Brown in view of Romanek and Truitt, and further in
view of Morgan (US 6,029,395, iss. Feb. 29, 2000);
claims 25, 26, and 33 are rejected under 35 U.S.C. § 103(a) as obvious
over Brown in view of Romanek and Truitt, and further in view of
Robertson (US 5,226,255, iss. Jul. 13, 1993);
claim 29 is rejected under 35 U.S.C. § 103(a) as obvious over Brown
in view of Romanek and Truitt, and further in view of Novich (US
6,042,305, iss. Mar. 28, 2000);
claim 37 is rejected under 35 U.S.C. § 103(a) as obvious over Brown
in view of Romanek and Truitt, and further in view of Tanner (US
6,155,749, iss. Dec. 5, 2000);
claim 39 is rejected under 35 U.S.C. § 103(a) as obvious over Brown
in view of Romanek and Truitt, and further in view of Halleck (US
3,214,866, iss. Nov. 2, 1965); and
claims 47 and 48 are rejected under 35 U.S.C. § 103(a) as obvious
over Brown in view of Romanek and Truitt, and further in view of Hamilton
(US 5,456,733, iss. Oct. 10, 1995).
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ANALYSIS
Independent claim 1 recites the limitation “a mesh material having a
nominal opening size of between approximately 0.125 inches and
approximately 0.5 inches.” Appellant argues that the combination of Brown,
Romanek, and Truitt does not teach or suggest the limitation because none
of the references teaches this limitation, combining the references would
produce an inoperative device, and there is substantial evidence of non-
obviousness (App. Br. 11-14, and Reply Br. 2-6). After carefully
considering Appellant’s arguments, including the Declarations of record, we
disagree with Appellant for the reasons discussed below.
The Supreme Court has stated that in considering obviousness “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The Court also has
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” and has affirmed that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 415-16.
We note that Appellants’ declaration of Mark E. LaFon, dated August 14,
2009, argues that the devices described in Brown include opening sizes of
approximately 0.041 inches and 0.080 inches, and that it would not be
obvious to increase the sizes of these openings to be between 0.125 inches
and 0.5 inches as required by claim 1 because this would render Brown unfit
for its intended purpose of preventing material from being washed out of the
tube (pp. 6-11). Appellants’ declaration further argues that a particular
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surface of Romanek does not include opening sizes of between 0.125 inches
and 0.5 inches, and that Romanek discourages changing the openings in
Brown to be between 0.125 inches and 0.5 inches (pp. 11-14). While these
arguments have merit, we nevertheless find that these arguments do not
outweigh the logical presumption that one of ordinary skill undoubtedly
knows that increasing or decreasing the nominal opening size of a mesh tube
may increase or decrease the amount of water flowing through or retained by
the mesh tube. Further, one of ordinary skill may change the size, type, or
amount of material in the mesh tube to prevent the material from being
washed out of the tube, for example, thereby satisfying the argued, intended
purpose of Brown. Thus, even assuming arguendo that Appellants’
characterizations of Brown and Romanek are correct, we still find that it is
known to vary the opening size because doing so does no more than yield
predictable results. For these reasons, we sustain the rejection of
independent claim 1.
Appellant argues the rejection of claim 49 is in error for the same
reasons as independent claim 1. Inasmuch as we sustain the rejection of
claim 1, we also sustain the rejection of claim 49.
DECISION
The Examiner’s rejections of claims 1-53 are 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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