Ex Parte Barr

Patent Trial and Appeal BoardSep 19, 2012

12015857 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/015,857 01/17/2008 Dale C. Barr DB1-0001US 3130 7590 09/20/2012 Dale C. Barr 5818 Nora Dr. NW Bremerton, WA 98311 EXAMINER STELLING, LUCAS A ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 09/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DALE C. BARR ____________ Appeal 2011-003878 Application 12/015,857 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and GRACE KARAFFA OBERMAN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejection of claim 20 and its dependent claims 21, 22, 25-38, and 132-137. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claims 20, 21, 22, 32, 35, and 37 are representative of the subject matter on appeal and are set forth below: Appeal 2011-003878 Application 12/015,857 2 20. A watercraft, comprising: a structure; a propulsion system operatively coupled to the structure and configured to propel the structure through a marine environment; and a dispensing device operatively coupled to at least one of the structure and the propulsion system and configured to dispense an enhancement substance into the marine environment proximate at least one propeller blade of the propulsion system such that the enhancement substance interacts with the at least one propeller blade to become at least partially mixed into the marine environment during operation of the propulsion system. 21. The watercraft of claim 20, wherein the wake includes a propulsive portion, and wherein the dispensing device is further configured to dispense the enhancement substance so that the enhancement substance at least partially mingles with the propulsive portion of the wake. 22. The watercraft of claim 20, wherein the dispensing device is further configured to dispense the enhancement substance into the marine environment at a location slightly upstream of the at least one propeller blade such that the enhancement substance interacts directly with the at least one propeller blade. 32. The watercraft of claim 20, wherein the propulsion system includes at least one of an outboard engine, an inboard engine, and a jet drive propulsion system. 35. The watercraft of claim 33, wherein the dispensing device is further configured to dispense the enhancement substance upstream of the propeller assembly. 37. The watercraft of claim 33 wherein the structure includes a hull, and wherein the propeller assembly is disposed external to the hull. Appeal 2011-003878 Application 12/015,857 3 The prior art relied upon by the Examiner in rejecting the claims on appeal are: Lapworth 3,595,190 Jul. 27, 1971 Stuart 3,659,547 May. 2, 1972 Rymal 4,732,682 Mar. 22, 1988 Karliner 5,744,072 Apr. 28, 1998 Aulniers US 2006/0011555 A1 Jan. 19, 2006 Definition of “hull” Merriam-Webster Online Dictionary 2009, available at http://www.merriam-webster.com/dictionary/hull THE REJECTIONS 1. Claims 20, 21, 25, 29, 31, 33, 34, 36, and 132-136 are rejected under 35 U.S.C. §102(b) as being anticipated by Karliner. 2. Claims 22 and 35 are rejected under 35 U.S.C. §103(a) as being unpatentable over Karliner in view of Rymal. 3. Claims 26-28, 30, and 38 are rejected under 35 U.S.C. §103(a) as being unpatentable over Karliner in view of Aulniers. 4. Claims 32 and 37 are rejected under 35 U.S.C. §102(b) as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over Karliner as evidenced by Lapworth and also as evidenced by the definition of "hull" from the Merriam-Webster online Dictionary. 5. Claim 137 is rejected under 35 U.S.C. §103(a) as being unpatentable over Karliner in view of Stuart. Appeal 2011-003878 Application 12/015,857 4 ANALYSIS As an initial matter, Appellant has not presented separate arguments for all of the rejected claims. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). With regard to the prior art rejections, we essentially adopt the Examiner’s findings pertinent to the issues raised by Appellant for these rejections. We, therefore, incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. Rejection 1 Issue: Did the Examiner err in determining that the applied art suggests the claimed subject matter, in particular the aspect of claim 20 pertaining to a watercraft having a propulsion system “configured to propel the structure through a marine environment”? We answer this question in the negative and AFFIRM. Appellant’s basic position is that the Examiner’s interpretation of the claim is unduly broad for the reason stated on pages 14-17 of the Brief, which we do not repeat here.1 We disagree with Appellant’s position for the reasons explained by the Examiner in the Answer, and particularly as set forth in the paragraph bridging pages 13-14 of the Answer. Therein, the Examiner explains that the claimed phrase of “configured to propel the structure through a marine environment" was fully considered by the 1 Appellant also attached articles as listed in the Evidence Appendix, and we defer to the Examiner’s comments on these articles as set forth on page 15 of the Answer. Appeal 2011-003878 Application 12/015,857 5 Examiner and the Examiner correctly recognized such language as functional language. The Examiner then states that if the prior art structure is capable of performing the intended use, then it meets the claims. We agree for the following reasons. We note that choosing to define an element of an apparatus functionally, i.e., by what it does, carries with it a risk: Where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). The Examiner finds that Karliner is capable of propelling using the standard ship propeller attached to a shaft and motor. Ans. 13-14. Appellant has not shown that the claimed function patentably distinguishes the claimed structure from the prior art structure; hence we agree with the Examiner’s position. Appellant then argues that Karliner does not teach the aspect of dependent claim 21 regarding “operation of the propulsion system produces a wake including a propulsion portion.” Br. 17-18. However, again, the Examiner is correct that the apparatus of Karliner is capable of producing a wake, and therefore anticipates the claim in this regard. Ans. 15-16. In view of the above, we affirm Rejection 1. Appeal 2011-003878 Application 12/015,857 6 Rejection 2 Claims 22 and 35 recite: 22. The watercraft of claim 20, wherein the dispensing device is further configured to dispense the enhancement substance into the marine environment at a location slightly upstream of the at least one propeller blade such that the enhancement substance interacts directly with the at least one propeller blade. 35. The watercraft of claim 33, wherein the dispensing device is further configured to dispense the enhancement substance upstream of the propeller assembly. Appellant partially relies upon the same arguments for this rejection as they did for Rejection 1 (Br. 19), which, as explained supra, are unconvincing. Appellant then argues that there is no motivation to combine Karliner and Rymal, for the reasons expressed on pages 18-22 of the Brief, which we do not repeat here. For the reason stated by the Examiner on pages 16-18 of the Answer, we are not convinced by such argument. We add that "[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The Examiner’s reference to Karliner’s teaching at column 6, lines 43-57 on page 17 of the Answer adequately demonstrates that one skilled in the art would not have been discouraged from following the path set out in Rymal. Appeal 2011-003878 Application 12/015,857 7 Appellant then argues that the principle of operation of Karliner would be destroyed if modified according to Rymal. Br. 21-22. For the reasons stated by the Examiner on pages 17-18 of the Answer, we are not convinced by such argument. We add that it is well established that “it 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). In addition, “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis in original). In view of the above, we affirm Rejection 2. Rejection 3 Appellant partially relies upon the same arguments for this rejection as they did for Rejection 1 (Br. 22), which, as explained supra, are unconvincing of error. Appellant then argues that there is no motivation to combine Karliner and Aulniers because to do so would destroy the principle of operation of Karliner, for the reasons expressed on page 23 of the Brief, which we do not repeat here. However, Appellant’s argument on page 23 of the Brief does not address the Examiner’s rejection as set forth on page 8 of the Answer. The § 103(a) rejection on appeal is based on Karliner in combination with Aulniers. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art). Appellant does not explain, in any detail, why the Examiner's conclusion of obviousness, which is based on Appeal 2011-003878 Application 12/015,857 8 the combined teachings is in error. In this context, we agree with the Examiner’s response to Appellant’s arguments on pages 18-19 of the Answer. In view of the above, we affirm Rejection 3. Rejection 4 Appellant partially relies upon the same arguments for this rejection as they did for Rejection 1 (Br. 23-24), which, as explained supra, is unconvincing of error. Appellant then argues that there is no motivation to combine Karliner as evidenced by Lapworth, and also as evidenced by the definition of "hull" from the Merriam-Webster online Dictionary, because to do so would have destroyed the principle of operation of Karliner, for the reasons expressed on pages 24-25 of the Brief, which we do not repeat here. However, Appellant’s response does not address the Examiner’s rejection as set forth on pages 10-11 of the Answer. Appellant does not explain, in any detail, why the Examiner's conclusion of obviousness, which is based on Karliner as evidenced by Lapworth, and also as evidenced by the definition of "hull" from the Merriam-Webster online Dictionary, is in error. In this context, we agree with the Examiner’s response to Appellant’s arguments on pages 19- 20 of the Answer. In view of the above, we affirm Rejection 4. Appeal 2011-003878 Application 12/015,857 9 Rejection 5 Appellant partially relies upon the same arguments for this rejection as they did for Rejection 1 (Br. 25), which, as explained supra, are unconvincing. Appellant then argues that the combination of Karliner and Stuart would require prohibited modification for either of these references for the reasons expressed on pages 25-26 of the Brief, which we do not repeat here. However, Appellant’s response on pages 25-26 of the Brief does not explain, in any detail, why the Examiner's conclusion of obviousness, which is based on the combined teachings of Karliner in view of Stuart is in error. In this context, we agree with the Examiner’s response to Appellant’s arguments on pages 20-21 of the Answer. In view of the above, we affirm Rejection 5. CONCLUSIONS OF LAW AND DECISION Each rejection 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). AFFIRMED cam