Colin S. Whelan et al.

Patent Trials and Appeals Board

Dec 27, 2019

15684029 - (D) (P.T.A.B. Dec. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/684,029 08/23/2017 Colin S. Whelan RTN-847AUS/12-3320-
US-DIV
4936
33164 7590 12/27/2019
RAYTHEON COMPANY
C/O DALY, CROWLEY, MOFFORD & DURKEE, LLP
ONE UNIVERSITY AVENUE
SUITE 201B
WESTWOOD, MA 02090
EXAMINER
BLAN, NICOLE R
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
amk@dc-m.com
docketing@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte COLIN S. WHELAN, MATTHEW D. THOREN,
ANDREW M. PIPER, and JOSEPH C. DIMARE
____________________

Appeal 2019-002677
Application 15/684,029
Technology Center 1700
____________________

Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
April 20, 2018 decision finally rejecting claims 12–14, 16–18, 20, 22, and 29
(“Final Act.”)2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Raytheon Company, as the real party
in interest (Appeal Br. 2).
2 Claims 15, 19, 21, 26–28, and 30 have been withdrawn from consideration
(Final Act. 2) and are not part of this appeal.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a system for anti-fouling a biofouled
surface (Abstract). The system includes a UV light source and an optical
medium coupled to receive UV light from the UV light source (id.). The
optical medium is configured to emit UV light proximate to a surface from
which biofouling is to be removed once the biofouling has adhered to the
protected surface. Details of the claimed method are set forth in
representative claim 12, which is reproduced below from the Claims
Appendix to the Appeal Brief (emphasis added):
12. A system for anti-biofouling a protected surface disposed
upon an object configured to be immersed in water, comprising:
an ultraviolet light source operable to generate ultraviolet
light;
an optical medium disposed under the protected surface,
the optical medium coupled to receive the ultraviolent light and
configured to disburse the ultraviolet light; and
a degradable layer disposed over the protected surface,
wherein the degradable layer is disposed to receive portions of
the ultraviolet light that escape the optical medium, wherein the
degradable layer is responsive to the ultraviolet light such that
selected portions of the degradable layer are configured to
change mechanical properties and to be removable in response
to the ultraviolet light, facilitating removal of biological
material on the degradable layer.

REJECTIONS
1. Claim 29 is rejected under 35 U.S.C. § 112, 4th paragraph as
not further limiting the claim from which it depends.
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2. Claims 12–14, 16, and 29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hein,3 in view of Titus,4 Hatch,5 Kuczynski,6 and
Daniel.7
3. Claims 17, 18, 20, and 22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hein, in view of Titus, Hatch, Kuczynski, Daniel, and
further in view of Ostervold.8

DISCUSSION
Rejection 1. Claim 29 reads as follows: “The system of Claim 12,
wherein the optical medium is disposed over the object.” The Examiner
determines that this language does not further limit claim 12 because claim
12 recites “a protected surface disposed on an object” and that the “optical
medium is disposed under the protected surface” (Final Act. 5). The
Examiner finds that this language “requires the order of components to be
the object with the optical medium disposed over it followed by the
protected surface disposed over the optical medium.” Appellant does not
make a substantive argument disputing the Examiner’s finding,9 which

3 Hein, US 5,997,951, issued December 7, 1999.
4 Titus et al., US 5,322,569, issued June 21, 1994.
5 Hatch, US 6,607,826 B1, issued August 19, 2003.
6 Kuczynski et al., US 2007/0287766 A1, published December 13, 2007.
7 Daniel, US 4,234,907, issued November 18, 1980.
8 Ostervold et al., WO 2011/095531 A1, published August 11, 2011.
9 The totality of Appellant’s argument is as follows: “The Examiner asserts
that Claim 29 fails to ‘further limit the subject matter of the claim[] [from]
which it depends.’ Applicant respectfully disagrees and request[s]
reconsideration.”
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appears to be consistent with the claim language. Accordingly, we affirm
the rejection under § 112, 4th paragraph.
Rejection 2. Our analysis will focus on the rejection of claim 12 over
Hein, Titus, Hatch, Kuczynski, and Daniel. Claim 14 is argued separately,
and will be addressed below. The remaining claims stand or fall with claim
12.
The Examiner’s findings supporting this rejection are set forth at
pages 6–9 of the Final Action. Appellant contends, inter alia, that the cited
art does not teach or suggest the limitation in claim 12 that the optical
medium is disposed under the protected surface (“an optical medium
disposed under the protected surface”) (see, Appeal Br. 9). The Examiner
finds that this limitation is not taught by the combination of Hein, Titus,
Hatch, or Kuczynski (Final Act. 8). The Examiner relies on Daniel, finding
that Daniel:
teaches it is known to incorporate a woven ultraviolet light
emitting coating [reads on “optical medium”] on boat hulls
wherein the coating includes an ultraviolet light source such
that the ultraviolet light travels within the coating and at points
along the surface of the coating, respective portions of the
ultraviolet escape the coating [reads on "optical medium
coupled to receive the ultraviolet light and configured to
disburse the ultraviolet light''] and the ultraviolet emitting
coating can be used in biological studies.
(id., citations omitted). According to the Examiner, it would have been
obvious to have used Daniel’s UV-emitting coating and light source with
Heim’s system
because [Daniel] teaches [its system is] usable on hulls as well
as in biological studies. By incorporating the ultraviolet light
emitting coating and ultraviolet source on the hull, it will allow
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biofouling removal to be performed at any time it is needed
rather than having to dock the ship where the device is located,
which will improve fuel economy due to reduced friction when
sailing. All of the claimed elements were known in the prior art
and one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective
functions, and the combination, (i.e. the combination of known
elements into a single device) would have yielded predictable
results to one of ordinary skill in the art at the time of the
invention. Because the optical medium coating is disposed on
the object, the optical medium is disposed under the protected
surface.
(Final Act. 8–9).
As argued by Appellant (Appeal Br. 9–10), Daniel discloses a light
emitting fabric which can be used in composite materials, such as fiberglass
materials which are used in some boat hulls (Daniel, Abstract). Daniel also
states that the use of its fabrics in composite materials allows for the
manufacture of products with “enhanced decorative and safety features”
(Daniel, 4:10–13). Daniel also discloses that UV light can be used to
illuminate clothing or other articles containing fluorescent dyes or inks, and
UV-emitting fabrics can provide UV illumination for, inter alia, “biological
studies” (Daniels 5:59–6:2).
Appellant contends that, contrary to the Examiner’s position, Daniel
does not suggest using its UV-emitting mesh in a fiberglass boat hull to
permit biofouling removal to be performed (Appeal Br. 11). As persuasively
argued by Appellant, the evidence of record does not suggest that
“biological studies,” as described by Daniel, is related in any manner to
removal of biofouling.
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However, as explained by the Examiner (Ans. 4–5), the rejection does
not rely on Daniel to suggest the use of UV-light for assistance in removal of
biofouling. Instead, the rejection relies on Daniel for teaching the use of an
optical medium under the protected surface. The Examiner has provided a
reason why a person of skill in the art would have incorporated the teachings
of Daniel with those of the other references (to provide a system which
travels with the boat, rather than a dock-based system).
Appellant’s arguments with regards to Daniels are, essentially,
arguing the references separately, and do not take into account that the
rejection is based on the combined teachings of the references. Similarly,
Appellant’s argument that Daniel is not enabled for biofouling removal is
not persuasive of reversible error because Daniel is not relied on for that
purpose.
Appellant’s argument (Appeal Br. 12–13) that the proposed
combination requires modification of the references such that they would be
inoperable for their intended purposes is not persuasive. Appellant merely
argues that there are differences between what is disclosed in the individual
references and the claimed invention. However, that fact is not disputed.
The only specific example argued by Appellant is that it would be
impractical to put a UV-light source under the road paint of Kuczynski.
However, this is not persuasive that the use of Kuczynski’s UV-sensitive
paint on a boat would render Kuczynski’s paint inoperable for its intended
purpose.10

10 Appellant makes an argument in the Reply Brief that suggests that
Kuczynski is non-analogous art and, therefore, is not properly combinable to
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With respect to claim 14,11 the Examiner finds that Daniel’s mesh has
no breaks, and is the functional equivalent of a coating, and is, therefore, a
continuous coating (Ans. 9). Appellant argues that Daniel’s light-emitting
mesh would not be understood by a person of skill in the art as a “continuous
coating,” as required by the claim, because a mesh has “a large number of
voids or breaks, and is not continuous” (Reply Br. 4). In this instance,
Appellant’s argument is persuasive. The Specification contrasts a
continuous coating with a coating made up of a series of optical fibers,
which are like the Daniel mesh (i.e. not continuous). Accordingly, we
determine that Appellant has shown reversible error in the rejection of claim
14.
Rejection 3. Appellant relies on the arguments set forth in
conjunction with Rejection of claim 12 to seek reversal of Rejection 3
(Appeal Br. 15). These arguments are similarly unpersuasive in conjunction
with Rejection 3. Appellant separately argues the rejection of claim 22,
which recites, inter alia, the presence of penetrating structure configured to
penetrate through the protected surface (Appeal Br. 15). The Examiner
relies on Ostervold to teach the use of a penetrating structure (Final Act. 12–
13). Ostervold discloses a tool for cleaning biofouling using pressurized
water (Abstract). As explained by Appellant, the Examiner’s finding that

reject the claims on appeal (Reply Br. 2). However, this argument was not
raised in the Appeal Brief, and is not a response to additional findings by the
Examiner. Accordingly, we will not consider it.

11 Claim 14 recites that “the optical medium comprises a continuous optical
coating over the object, wherein the optical coating is configured to provide
the propagation path for the ultraviolet light.”
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the body of Ostervold’s cleaning mechanism “reads on ‘penetrating
structure’” is not adequately supported by the evidence of record.
Accordingly, we reverse the rejection of claim 22.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29 112, 4th
paragraph
Claim fails to
further limit claim
from which it
depends
29
12–14, 16,
29
103 Hein, Titus, Hatch,
Kuczynski, Daniel
12, 13,
16, 29
14
17, 18, 20,
22
103 Hein, Titus, Hatch,
Kaczynski, Daniel,
Ostervold
17, 18, 20 22
Overall
Outcome
12, 13,
16–18,
20, 29
14, 22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART