Ex Parte Rawson

Patent Trial and Appeal BoardAug 28, 2013

11982049 (P.T.A.B. Aug. 28, 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. 11/982,049 11/01/2007 Jeffery Rawson 1099 7590 08/28/2013 Patrick J. Walsh, Esq. 400 Main Street Stamford, CT 06901 EXAMINER VENNE, DANIEL V ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 08/28/2013 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 JEFFERY RAWSON ____________ Appeal 2011-008169 Application 11/982,049 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008169 Application 11/982,049 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Claimed Subject Matter Claims 1, 4, 5, 11, and 14 are the independent claims on appeal. Claim 1, reproduced below with added emphasis, is illustrative of the subject matter on appeal. 1. A kayak of predetermined length comprising a hull, deck, cockpit, the hull having port and starboard sides, a bow and stern, and steering gear including a rudder positioned at the stern, the hull having a wetted area extending through the forward two-thirds of the length of the kayak, a flat bottom plate extending from the bow in a curvilinear contour gradually rising toward the stern so as to be at or above the wetted area of the hull for the rear one-third of the length of the kayak, the deck affixed to the hull to form an enclosed watertight craft, the cockpit forming an opening through the deck and defining a station for a paddler to propel and to apply turning moment to the kayak with an oar, the cockpit situated forward of the longitudinal midpoint of the kayak so that the kayak burden is amid the wetted area of the hull and the hull having a moment arm for turning the kayak defined as the distance between the rudder and the cockpit where a paddler applies turning moment whereby the kayak encounters lower water resistance and high mechanical advantage when maneuvering as compared to a conventional kayak. Appeal 2011-008169 Application 11/982,049 3 Rejections The following Examiner’s rejections are before us for review: I. claims 1-4 and 11-13 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite; II. claims 1-4 and 14-28 are rejected under 35 U.S.C. § 103(a) as unpatentable over King (US 6,612,252 B2, issued Sep. 2, 2003), Broadhurst (US 4,660,490, issued Apr. 28, 1987), and Hulbig (US 6,065,414, issued May 23, 2000)1; and III. claims 5-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over King, Broadhurst, Hulbig, and March (US 4,389,958, issued Jun. 28, 1983). OPINION Rejection I: Indefiniteness Claims 1-3 Independent claim 1 recites, among other things, “whereby the kayak encounters lower water resistance and high mechanical advantage when maneuvering as compared to a conventional kayak.” The Examiner explains that the phrase “‘as compared to a conventional kayak’ is indefinite since it is not clear what is encompassed by ‘conventional kayak’ for comparison purposes of ascertaining the metes and bounds of ‘lower water resistance’ and ‘high mechanical advantage.’” Ans. 4. The Appellant contends that a person of ordinary skill in the art 1 The Examiner includes as extrinsic evidence, Society of Naval Architects and Engineers (SNAME) Principles of Naval Architecture © 1988, Chapter 1, Section 2, pp. 16-17. Ans. 3, 6. Hereinafter, referred to as “SNAME.” Appeal 2011-008169 Application 11/982,049 4 upon reading the Specification would readily understand the meaning of the terms “conventional kayak,” “lower water resistance,” and “high mechanical advantage”, and accordingly, those terms are not indefinite. Br. 8. More particularly, the Examiner explains that “conventional” in the term “conventional kayak” cannot be determined. Ans. 20. The Appellant contends that the Specification, at pages 2-4, offers the meaning of the term “conventional kayak.” Further, the Appellant offers a list of characteristics of a “conventional kayak.” Br. 11. We agree with the Appellant’s listing of characteristics (a) through (h) with two exceptions. First, for the characteristics labeled “(a)” the Appellant indicates that a conventional kayak has a “symmetrical hull when viewed bow to cockpit and cockpit to stern.” Id. However, the Specification describes “[a] conventional kayak is generally symmetrical in hull form when viewed bow to cockpit and cockpit to stern.” Spec. 2, ll. 6-7 (emphasis added). Second, for the characteristics labeled “(d)” the Appellant indicates that a conventional kayak has a “keel line in the water at bow and stern when underway.” Br. 11. However, the Specification describes, “[t]he keel line at bow and stern is normally in the water when underway.” Spec. 2, ll. 17-18 (emphasis added). For these two exceptions, we depart Appellant’s list in the Appeal Brief and rely on the Specification’s description of a conventional kayak. Additionally, the Specification also refers to a “conventional kayak” as “a lightweight craft with symmetrical hull, cockpit located in the middle section of the hull, easy to propel manually, having water[]borne stability characterized by a wetted area extending bow to stern, and having a slow and predictable maneuvering capability.” Spec. 4, ll. 8-11. These characteristics are also included in a “conventional kayak.” Appeal 2011-008169 Application 11/982,049 5 In response to the Appellant’s contention, the Examiner explains that Appellant’s list in the Appeal Brief is “significantly different” than the Appellant’s Specification at page 4, lines 8-11, and that the description of a “conventional kayak” includes “relative” and “descriptive” terms which do not provide a skilled artisan the ability to understand the term “conventional kayak.” Ans. 21. Although the characteristics of a “conventional kayak” include phrases such as “easy to propel manually” and “slow and predictable maneuvering capability,” these characteristics are useful for a skilled artisan since the characteristics provide a standard when comparing the Appellant’s invention to a “conventional kayak.” Indeed, the Appellant’s invention is directed to “a stable craft, easily propelled by oar, and faster and highly maneuverable in comparison to conventional kayaks.” Spec. 4, ll. 7-15. Accordingly, we disagree with the Examiner that a skilled artisan would not understand the term “conventional kayak” as recited in claim 1 when read in light of the Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner also explains that “lower water resistance” is indefinite because the term “lower” is a relative term. Ans. 4-5. Similarly, the Examiner explains that “high mechanical advantage” is indefinite because the term “high” is a relative term. Id. However, in claim 1 the terms “lower” and “high” are terms that compare the claimed invention with a “conventional kayak.” See Br. 13. As such, the terms “lower water resistance” or “high mechanical advantage” are not indefinite. Moreover, the Appellant points out that the phrase “high mechanical advantage” for the Appellant’s invention includes a “cockpit placed forward Appeal 2011-008169 Application 11/982,049 6 of [a] kayak midpoint resulting in a moment arm for turning the kayak measured from cockpit to stern” is in comparison to a “conventional kayak” “where [the] cockpit is at or slightly aft of midpoint yielding a shorter moment arm.” Br. 11-12. The Appellant also points out that the phrase “lower water resistance” for the Appellant’s invention is in comparison to a “conventional kayak” which “has greater water resistance because when turning, kayak rotates about the cockpit located at kayak center and encounters water resistance over substantially entire length of hull.”2 Br. 11. See also Br. 11-13. The Appellant’s position is persuasive. Thus, the rejection of independent claim 1, and dependent claims 2-3, under 35 U.S.C. § 112, second paragraph, as indefinite is not sustained. Claim 4 The Examiner rejects the terms “conventional kayak” and “high mechanical advantage” in independent claim 4 for the same reasons as those provided above with regard to the rejection of claim 1. Ans. 4-5. For the same reasons discussed above with regard to the rejection of claim 1, we likewise do not sustain the rejection of claim 4 under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 11-13 The Examiner rejects the term “lower water resistance” in independent claim 11 because claim 11 “do[es] not recite what the ‘water resistance’ is lower than to ascertain the metes and bounds of the claims.” Ans. 4. Although we recognize that claim 11 includes structural parameters 2 A “conventional kayak” includes the characteristic that “(f) water resistance encountered over substantially entire length of hull when the craft rotates about the cockpit in a turning maneuver.” Br. 11. Appeal 2011-008169 Application 11/982,049 7 of the Appellant’s invention (see Br. 13), we agree with the Examiner’s explanation because “low” is a relative term and claim 11 does not include a comparative structure, such as a “conventional kayak,” as recited in claims 1 and 4. Thus, the rejection of independent claim 11, and dependent claims 12 and 13, under 35 U.S.C. § 112, second paragraph, as indefinite is sustained. Rejection II: Obviousness over King, Broadhurst, and Hulbig Claims 1, 4, and 14 Independent claims 1 and 14 are directed to a kayak comprising, among other things, a cockpit “situated forward of the longitudinal midpoint of the kayak.” Similarly, claim 4 is directed to a kayak comprising, among other things, “cockpit being forward of the kayak midpoint.” The Examiner finds that “[n]either King nor Broadhurst explicitly disclose a watercraft with a cockpit situated forward of the midpoint of the kayak.” Ans. 7. To reject the claimed placement of the cockpit, the Examiner turns to Hulbig. The Examiner finds that Hulbig discloses a single hull watercraft “with a pivot axis that is forward of the hull waterline fore-aft centerline which is the deep water point of the hull and provides a fulcrum point around which the hull turns during a direction change.” Ans. 7-8. The Examiner’s conclusion of obviousness is based on this finding. See Ans. 8. The Examiner offers evidence and technical reasoning why the combined teachings of the references suggest placing the cockpit at the pivot point of a kayak. Ans. 5-8. The Examiner explains: Hulbig is introduced to demonstrate the advantages of having a forward pivot point for a watercraft hull such that the pivot point is at a deep water Appeal 2011-008169 Application 11/982,049 8 point on the hull and acts as a fulcrum to increase turning ability. Hulbig’s invention also includes craft that contain a single hull. The cockpit of a kayak coincides with a paddler position which corresponds to the location of the kayak burden or loading. [The] Appellant defines [a] moment arm as the distance between the cockpit and the rudder (Appeal Brief, page 5). Since the moment arm to turn a kayak with a rudder is the distance between the rudder and the pivot point, it would have been obvious to one of ordinary skill in the art to combine King, Broadhurst and Hulbig to provide a kayak with the features claimed by the appellant. Such a rejection combines known features to achieve the expected results of improving the turning maneuverability of a kayak. Ans. 26-27. The Examiner’s reasoning pertaining to the disclosure of Hulbig is strained and too attenuated from Hulbig’s explicit disclosure. Although the Examiner’s reasoning that Hulbig discloses advantages of having a forward pivot point for a watercraft, wherein the watercraft includes a single hull, Hulbig does not reasonably disclose a cockpit situated forward of the longitudinal midpoint of a kayak. As such, the Appellant’s contentions that Hulbig’s pivot axis is not a seat or a cockpit and that Hulbig locates a catamaran seat and burden aft of the centerline are well taken. Br. 22. Further, the combined teachings of King and Broadhurst, the extrinsic evidence of SNAME (Ans. 6), and Hulbig, do not sufficiently evidence the aforementioned claimed limitations. Thus, the Examiner’s rejection of independent claims 1, 4, and 14 and dependent claims 2, 3, and 15-28 as unpatentable over King, Broadhurst, and Hulbig is not sustained. Appeal 2011-008169 Application 11/982,049 9 Claims 1 and 4 Additionally, the Examiner relies on Broadhurst to disclose, “a flat bottom plate extending from the bow in a curvilinear contour gradually rising toward the stern” (emphasis added) as recited in independent claims 1 and 4. See Ans. 5, 8, 26, and 28; see also Ans. 7 and 29. The Appellant persuasively contends that Broadhurst’s craft includes a flat bottom over its middle section, but does not extend from the bow to the stern as recited in claims 1 and 4. See Br. 19. Indeed, Broadhurst describes that “[t]he transverse or cross-sectional profile of the semi- displacement hull has a substantially flat bottom in the middle section with convexity up to the top portion of the hull.” Broadhurst, col. 2, ll. 60-64. Additionally, the Appellant points out that in a preferred embodiment Broadhurst’s watercraft includes “a hull length of about 14 feet 6 inches [(about 174 inches)], the area of the bottom portion of the hull from about 4 feet 6 [(54 inches)] inches aft of the bow to about 12 feet aft of the bow is flat with a slight convexity.” Br. 19 (citing col. 7, l. 66 - col. 8, l. 2). In this embodiment, the flat bottom area is about 30% aft of the front end of the watercraft. It is notable that this description is consistent with Broadhurst’s disclosure. Accordingly, Broadhurst’s disclosure suggests that the flat bottom area extends from the middle section of the hull rather than the bow. As such, Broadhurst’s disclosure of its flat bottom area does not reasonably correspond to the flat bottom plate as recited in independent claims 1 and 4. Thus, for this additional reason, the Examiner’s rejection of independent claims 1 and 4 and dependent claims 2 and 3 as unpatentable over King, Broadhurst, and Hulbig is not sustained. Appeal 2011-008169 Application 11/982,049 10 Rejection III: Obviousness over King, Broadhurst, Hulbig, and March Claims 5-13 Independent claim 5 claims a kayak comprising, among other things, a hull “having bottom plate extending from bow to stern with flat transverse lines.” Emphasis Added. Independent claim 11 also claims a kayak and comprises “a flat bottom plate extending from the bow in a curvilinear contour gradually rising toward the stern.” Emphasis Added. The Examiner relies on Broadhurst to evidence these claim limitations (see Ans. 14-15), and as discussed above, the Examiner’s evidence in that regard lacks adequate support. Additionally, the Examiner’s findings with regard to March’s disclosure (Ans. 15) do not remedy the deficiency in the Examiner’s finding and thus, the Examiner’s rejection. See also Br. 29-30. Thus, the Examiner’s rejection of independent claims 5 and 11, and dependent claims 6-10, 12, and 13, under 35 U.S.C. § 103(a) as unpatentable over King, Broadhurst, Hulbig, and March is not sustained. Claims 11-13 Independent claim 11 is similar to claims 1, 4, and 14 in that they are directed to a kayak comprising, among other things, a cockpit “situated forward of the longitudinal midpoint of the kayak.” The rejection of claim 11 is based on King, Broadhurst, and Hulbig in further view of March. Ans. 14. As discussed above, the combined teachings of King and Broadhurst, the extrinsic evidence of SNAME (Ans. 6), and Hulbig, do not sufficiently evidence the aforementioned claimed limitation. The Examiner’s additional findings and conclusion with regard to March does not cure the deficiency of the Examiner’s reasoning with regard to the placement of the cockpit. Appeal 2011-008169 Application 11/982,049 11 Thus, the Examiner’s rejection of independent claim 11, and its dependent claims 12 and 13, under 35 U.S.C. § 103(a) as unpatentable over King, Broadhurst, Hulbig, and March is not sustained. DECISION We AFFIRM the rejection of claims 11-13 under 35 U.S.C. § 112, second paragraph, as indefinite. We REVERSE the rejections of claims 1-4 under 35 U.S.C. § 112, second paragraph, as indefinite; claims 1-4 and 14-28 under 35 U.S.C. § 103(a) as unpatentable over King, Broadhurst, and Hulbig; and, claims 5- 13 under 35 U.S.C. § 103(a) as unpatentable over King, Broadhurst, Hulbig, and March. 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 Klh