Ex Parte Ford

Patent Trial and Appeal BoardNov 22, 2013

12381451 (P.T.A.B. Nov. 22, 2013)

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. 12/381,451 03/12/2009 Charles Kenneth Ford 19692-22335 9877 7590 11/25/2013 J. WILEY HORTON, ESQUIRE Pennington, Moore, Wilkinson, Bell & Dunbar, P.A. Post Office Box 10095 Tallahasee, FL 32302-2095 EXAMINER SWINEHART, EDWIN L ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 11/25/2013 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 CHARLES KENNETH FORD ____________________ Appeal 2012-000860 Application 12/381,451 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000860 Application 12/381,451 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, and 11.1 See App. Br. 3, 10-13, 18-20. We have jurisdiction under 35 U.S.C. § 6(b). Appellant does not appeal the prior art rejections of claims 3-10 and 13-19. See App. Br. 3, 10-11. We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claims 1 and 11 are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sail supporting assembly for a sailing vessel having a hull with a keel and gunwales, comprising: a. a straight mast, having a lower region and an upper region; b. wherein said straight mast is pivotally attached to said hull so that said straight mast rotates around a mast rotation axis which is perpendicular to said keel; c. wherein said upper region of said straight mast lies substantially above said gunwales; d. a curved mast, having a lower region, a middle region, and an upper region; e. wherein said lower region of said curved mast is joined to said upper region of said straight mast at a mast joint, so that said curved mast and said straight mast rotate in unison about said mast rotation axis; f. wherein said mast rotation axis has a windward side and a leeward side; g. wherein said lower region of said curved mast lies proximate said mast rotation axis; 1 The Examiner has withdrawn the 35 U.S.C. § 112, first paragraph, rejection of claims 3-10 and 13-19 (claim 20 is cancelled). Ans. 3. Appeal 2012-000860 Application 12/381,451 3 h. wherein said middle region of said curved mast lies on said windward side of said mast rotation axis; i. wherein said upper region of said curved mast lies on said leeward side of said mast rotation axis; j. a boom, having a proximal end connected to said mast joint and a distal end located distal to said mast joint, said boom being configured to rotate in unison with said straight mast and said curved mast; k. a sail attached to said curved mast and said boom, said sail defining a sail area; and l. wherein at least 5% of said sail area lies on said windward side of said mast axis of rotation. REJECTIONS 1. Claims 1-4, 9, and 10 are rejected under 35 U.S.C. § 102 (b) as being anticipated by Kettlestrings (US 4,697,534; iss. Oct. 6, 1987); 2. Claims 1-10 and 13-19 are rejected under 35 U.S.C. § 102(b) as being anticipated by Delaney (US 4,074,647; iss. Feb. 21, 1978);2 and 3. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Delaney and Morrelli (US 4,964,353; iss. Oct. 23, 1990). OPINION Anticipation – Claims 1-4, 9, and 10 – Kettlestrings Appellant argues claims 1 and 2 as a group. See App. Br. 11-13. We select claim 1 as representative. Claim 2 stands or falls with claim 1. 2 Although the Examiner lists claims 12 and 20 in the rejection (Ans. 5), the claims were cancelled in Appellant’s Response filed on May 24, 2010. Appeal 2012-000860 Application 12/381,451 4 Appellant does not appeal the rejection of claims 3, 4, 9, and 10.3 See App. Br. 3, 10-11. Appellant argues that the embodiment shown in Figures 14-18 of Kettlestrings fails to disclose the lower region of the curved mast being proximate the mast rotational axis as required by claim 1. App. Br. 13. Instead, Appellant alleges that “the lower region of the mast lies well off and windward of the mast rotation axis.” Id. Appellant offers no explanation as to what “proximate” requires. As the Examiner explains, “the word ‘proximate’ means no more than being near or being in the proximity of the axis, and such a broad statement of mast location cannot define over the position of the lower portion of the mast of Kettlestrings as depicted in figures 14-16.” Ans. 7. Appellant’s general allegation does not apprise us of error in the Examiner’s finding that the lower region of the curved mast is proximate the mast rotational axis in Kettlestrings. We sustain the rejection of claims 1 and 2 as being anticipated by Kettlestrings. Anticipation – Claims 1-10 and 13-19 – Delaney Appellant argues claims 1 and 2 as a group. See App. Br. 11-13. We select claim 1 as representative. Claim 2 stands or falls with claim 1. Appellant does not appeal the rejection of claims 3-10 and 13-19. See App. Br. 3, 10-11. 3 We suggest that the Examiner cancel claims 3, 4, 9, and 10 upon return of jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). Appeal 2012-000860 Application 12/381,451 5 Appellant argues that the upper portion of the mast in Delaney is not located on the leeward side of the mast rotational axis as required by claim 1. App. Br. 13 (citing the Response filed on May 24, 2010). Appellant explains that “leeward” is specifically defined in the Specification as the side occupied by the boom and does not change based on the wind direction (i.e., even if the boat were sailing in the direction of the wind, the side occupied by the boom would still be considered the leeward side). Reply Br. 1-3; see also Spec. p. 14, ll. 18-21 and p. 15, ll. 1-2. Appellant explains that this definition is consistent with accepted usage of the term “leeward,” meaning facing away from oncoming wind, because the sail is designed for sailing into an apparent wind. Reply Br. 3; see also Spec., p. 14, ll. 15-16. We agree that Appellant has provided a special definition for the term “leeward” to mean the side of the mast rotational axis occupied by the boom independent of the actual wind direction. When the proper definition of “leeward” is applied to the claim, the Examiner has not established that Delaney discloses the claimed orientation of the upper region of the curved mast. The Examiner bases the rejection on the assumption that: [T]he upper region of the mast will inherently at times reside on the leeward side of the mast rotation axis . . . since the windward and leeward sides vary in accordance with the direction of the prevailing wind, the portions of the mast as recited will inherently reside on the windward and leeward sides of the mast rotation axis at times. Ans. 5. This interpretation disregards Appellant’s special definition of leeward. The Examiner has failed to identify anything in Delaney that expressly or inherently discloses the upper region of the curved mast being Appeal 2012-000860 Application 12/381,451 6 located on the leeward side of the mast rotational axis when Appellant’s definition of “leeward” is applied to the claim. We do not sustain the rejection of claim 1 and claim 2, which depends from claim 1, as being anticipated by Delaney. Obviousness – Claim 11 – Delaney/Morrelli Claim 11 recites “said upper region of said curved mast lies on said leeward side of said mast rotation axis,” similar to claim 1. The Examiner relies on the same findings from Delaney for this feature as discussed above regarding claim 1. We also do not sustain the rejection of claim 11 as being unpatentable over Delaney and Morrelli. DECISION We AFFIRM the Examiner’s decision to reject claims 1 and 2 as anticipated by Kettlestrings. We REVERSE the Examiner’s decision to reject claims 1 and 2 as anticipated by Delaney. We REVERSE the Examiner’s decision to reject claim 11 as unpatentable over Delaney and Morrelli. 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-IN-PART llw