Ex Parte Haller et al

Patent Trial and Appeal BoardAug 7, 2013

13305624 (P.T.A.B. Aug. 7, 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. 13/305,624 11/28/2011 Clay Haller 724.11 6851 85444 7590 08/07/2013 Bay Area Technolgy Law Group PC 4089 Emery Street Emeryville, CA 94608 EXAMINER OLSON, LARS A ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 08/07/2013 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 CLAY HALLER and CHARLES P. HALL ____________ Appeal 2013-008438 Application 13/305,624 Technology Center 3600 ____________ Before WILLIAM V. SAINDON, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-008438 Application 13/305,624 2 STATEMENT OF THE CASE Clay Haller and Charles P. Hall (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter relates to “an inflatable stand up paddleboard having a stiffening beam for improving its characteristics by reducing board flexure.” Spec., p. 1, ll. 5-6. Claim 1 illustrates the subject matter on appeal and is reproduced below. 1. In an inflatable stand up paddleboard having a top surface for supporting a user and a bottom surface for residing on water, a front end and a back end and a longitudinal axis passing between said front and back ends, the improvement comprising a channel configured between said top and bottom surfaces and a beam sized to slidably reside within said channel. EVIDENCE The Examiner relies on the following evidence: Cheung US 7,347,754 B1 Mar. 25, 2008 Potter US 2009/0049757 A1 Feb. 26, 2009 REJECTION Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Potter and Cheung. Ans. 4. Appeal 2013-008438 Application 13/305,624 3 ANALYSIS Claims 1, 4, 8, and 9 Appellants argue claims 1, 4, 8, and 9 as a group. App. Br. 3-5. We select claim 1 as representative. Claims 4, 8, and 9 stand or fall with representative claim 1.1 See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Potter discloses an inflatable stand-up surfboard having a top surface 12 for supporting a user, a bottom surface 14 for gliding over a water surface, a front end and a back end, a longitudinal axis that passes between the front end to the back end, and a plurality of longitudinal channels or sleeves shown in the cross-sectional view of Figure 13 to lie between the top and bottom surfaces. Fin. Rej. dated Jan. 17, 2013, p. 2. The Examiner finds that Potter does not disclose one or more beams that are sized to slidably reside within its plurality of longitudinal channels or sleeves. Id. The Examiner finds, however, that Cheung discloses a beam 10 for a bodyboard 20 that is sized to slidably reside within a channel or sleeve of the bodyboard 20. Ans. 3 (citing Cheung, Figs. 3 and 4). We note that Cheung’s beam 10, referred to as a stringer element, is “adapted to increase the stiffness of the foam core material.” Cheung, col. 3, ll. 35-41. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize Cheung’s stringer with Potter’s inflatable stand-up surfboard to provide additional stiffness for 1 Although Appellants do not separately argue claims 10, 11, and 12, we do not group them with claim 1, because they have subject matter similar to separately-argued claims 6, 5, and 7, respectively. Appeal 2013-008438 Application 13/305,624 4 Potter’s inflatable surfboard to better support a user on said surfboard. Ans. 3. Appellants argue that Potter teaches away from their invention by using complex structures to add stiffness. App. Br. 4 (citing Potter, para. [0016]). Appellants argue that Potter’s extremely complex arrangement would be more costly to produce than Appellants’ invention and would make Potter’s device more difficult to collapse and roll up and thus much less portable than Appellants’ invention. Appellants allege that Potter’s complex structures teach away from the eloquently simple product of the present invention. Id. Appellants, however, do not claim the argued “eloquently simpl[e] product” on which they base their argument. Claim 1 recites “an inflatable stand up paddleboard” comprising “a channel configured between said top and bottom surfaces,” which is disclosed in Potter as found by the Examiner. Appellants also argue that Cheung does not cure the deficiencies of Potter and teaches a bodyboard comprised of a semi-rigid foam core rather than a collapsible watercraft, and that Cheung teaches away from the use of a stiffening beam or rod noting that its suggested helical spring located only at the front portion of the watercraft is far superior to a solid plastic rod. App. Br. 4-5 (citing Cheung, col. 3, l. 66 to col. 4, l. 6, and col. 1, l. 65 to col. 2, l. 3). The Examiner does not find that Cheung teaches a collapsible watercraft. The Examiner finds only that Cheung teaches a bodyboard 20 with a beam 10 that is sized to reside within a channel of the bodyboard. Cheung’s beam 10 is adapted to increase the stiffness of the bodyboard 20, and its alleged superiority to a simple plastic rod is not persuasive because Appeal 2013-008438 Application 13/305,624 5 the claims do not recite a limitation making such an argument relevant to the patentability of claim 1. Appellants further argue that Potter does not teach a beam sized to slidably reside within a channel either for stiffening or for any other purpose. App. Br. 5. The Examiner does not allege that Potter teaches such a beam, instead relying on Cheung for the beam sized to reside within a channel. One cannot show non-obviousness by attacking references individually when a rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 9181). We are therefore not persuaded by Appellants’ argument that Potter fails to teach the claimed beam. Appellants argue that Potter and Cheung are not directed to similar products, and their motivations for providing certain structural characteristics are not compatible. App. Br. 5. We disagree. A paddleboard and a bodyboard are similar products with similar objectives to float and support a body on water, and thus are designed to have a composition that floats and supports a body while maintaining a certain flexibility/stiffness combination. Appellants have not explained what the references’ motivations are for providing certain structural characteristics and why those motivations are not compatible, and we therefore are not persuaded by this argument. Appellants also argue that neither Potter nor Cheung discloses a stiffening beam located within a channel or sleeve and that Cheung’s suggestion to place a helical spring proximate the front of his bodyboard is for control of the watercraft, which does not lend itself to the Potter surfboard or paddleboard. App. Br. 5. We are not persuaded by this Appeal 2013-008438 Application 13/305,624 6 argument because it is merely attorney argument unsupported by any evidence. Appellants further argue that neither Potter nor Cheung discloses creating a channel between top and bottom surfaces to accept a beam sized to slidably reside within the channel as recited in claim 1. App. Br. 5. Claim 1, however, does not recite “creating a channel” as argued. Rather, claim 1 recites a beam sized to reside within a channel, which the Examiner finds to be taught by Cheung. We therefore are not persuaded by this argument, and we sustain the rejection of claims 1, 4, 8, and 9 as unpatentable over Potter in view of Cheung. Claim 2 Claim 2 recites the paddleboard comprising left and rights sides joined to create the channel. Appellants argue that neither Potter nor Cheung disclose left and right sides joining to create a channel. App. Br. 5. We disagree. Potter’s paddleboard has left and right sides that include baffles defining (or creating) a compartment or channel. In addition, Appellants do not argue that Cheung’s stringer does not reside in a channel, and that channel would be defined by (created by) left and right sides of the bodyboard. We sustain the rejection of claim 2. Claim 3 Regarding dependent claim 3, which recites left and right sides of the paddleboard being joined by gluing a joining strip, Appellants argue that neither Potter nor Cheung discloses a paddleboard comprising a left side and a right side creating a channel therebetween, and joined by gluing a joining strip along the top and bottom surfaces creating the channel. App. Br. 5. Appeal 2013-008438 Application 13/305,624 7 The Examiner does not find that either Potter or Cheung discloses this limitation and we therefore cannot sustain the rejection of claim 3. Claims 5 and 11 Claim 5 recites the beam sleeve being affixed to a bottom surface of the paddleboard. Claim 11 recites the beam being appended to a bottom surface of the paddle board. Appellants argue that neither Potter nor Cheung discloses a paddleboard with a sleeve affixed to the bottom surface or a beam appended to a bottom surface. App. Br. 5. The Examiner only finds that the sleeve and beam are located between the top and bottom surfaces. Ans. 2, 3. We therefore do not sustain the rejection of claims 5 and 11. Claims 6 and 10 Claim 6 recites the beam sleeve being affixed to a top surface of the paddleboard. Claim 10 recites the beam being appended to a top surface of the paddle board. Appellants argue that neither Potter nor Cheung discloses a paddleboard with a sleeve affixed to the top surface or a beam appended to a bottom surface. App. Br. 5. The Examiner only finds that the sleeve and beam are located between the top and bottom surfaces. Ans. 2, 3. We therefore do not sustain the rejection of claims 6 and 10. Claims 7 and 12 Claim 7 recites, among other things, sleeves configured on a right side of the paddleboard and on a left side of the paddleboard, the sleeves being parallel to the paddleboard’s longitudinal axis, and beams sized to reside within the sleeves. Claim 12 recites a beam positioned proximate each of a left side edge and a right side edge of the paddleboard, and being parallel to a longitudinal axis of the paddleboard. Appellants argue that neither Potter Appeal 2013-008438 Application 13/305,624 8 nor Cheung discloses placing sleeves on the paddleboard's left and right sides, parallel to its longitudinal axis, for receiving a pair of beams. App. Br. 5. The Examiner does not find that either Potter or Cheung discloses placing sleeves on the paddleboard’s left and right sides, parallel to its longitudinal axis, for receiving a pair of beams. We therefore do not sustain the rejection of claims 7 and 12. DECISION We AFFIRM the rejection of claims 1, 2, 4, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Potter and Cheung. We REVERSE the rejection of claims 3, 5-7, and 10-12 under 35 U.S.C. § 103(a) as unpatentable over Potter and Cheung. 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 hh