SEA EAGLE BOATS, INC.

Patent Trials and Appeals BoardAug 27, 2020

15851006 - (D) (P.T.A.B. Aug. 27, 2020)

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. 15/851,006 12/21/2017 Cecil C. Hoge JR. 2196.1004 4247 21171 7590 08/27/2020 STAAS & HALSEY LLP SUITE 700 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER POLAY, ANDREW ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 08/27/2020 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): ptomail@s-n-h.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CECIL C. HOGE JR. Appeal 2020-001098 Application 15/851,006 Technology Center 3600 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–14. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sea Eagle Boats, Inc. Appeal Br. 2. Appeal 2020-001098 Application 15/851,006 2 CLAIMED SUBJECT MATTER The claims are directed to a fish skiff. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fish skiff comprising: an inflatable floor made of high pressure drop stitch material; inflatable sides made of high-pressure drop stitch material attached to a top surface of the inflatable floor at port and starboard sides of the inflatable floor, respectively; and a rigid transom formed at a rear portion of the fish skiff, the rigid transom being formed between the inflatable sides configured to have an outboard motor mounted thereon. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Horan US 4,090,270 May 23, 1978 Hoge US 7,240,634 B1 July 10, 2007 Czarnowski US 8,082,871 B2 Dec. 27, 2011 Shimozono US 8,800,466 B1 Aug. 12, 2014 Mayer US 9,198,518 B1 Dec. 1, 2015 Gonzales US 9,434,453 B2 Sep. 6, 2016 Wundt US 2014/0150705 A1 June 5, 2014 Klare US 2015/0147925 A1 May 28, 2015 Pepper US 2017 /0197691 Al Jul. 13, 2017 Appeal 2020-001098 Application 15/851,006 3 REJECTIONS2 Claim(s) 35 U.S.C. § Basis/Reference(s) 1, 2, 7, 8, 11 103 Wundt, Mayer 4 103 Wundt, Mayer, Czarnowski 5 103 Wundt, Mayer, Hope 6 103 Wundt, Mayer, Pepper 9 103 Wundt, Mayer, Horan 10 103 Wundt, Mayer, Klare 12, 14 103 Wundt, Mayer, Shimiozo 33, 134 103 Wundt, Mayer, Gonzales OPINION Wundt in view of Mayer All arguments in this appeal are premised on the supposed shortcoming of the Examiner’s proposed combination of Wundt and Mayer. App. Br. 4–12. The issue of precisely what constitutes a “top” or “side” of a circle notwithstanding (Ans. 5–6), the Examiner and Appellant generally agree that Wundt’s inflatable sides 102, 104 made of drop-stitch material (Final Act. 4 (citing Wundt para. 42)) are not, or may not be, reasonably regarded as “attached to a top surface” of Wundt’s inflatable floor comprised of bottom tubes 110, as is required by claim 1. App. Br. 4; Final Act. 4. 2 The rejection under 35 U.S.C. § 112(b) has been withdrawn. Ans. 3. 3 It is noted that the Examiner mistakenly refers to claim 4 when addressing the language of claim 3. See Final Act. 8. 4 Presently, claim 13 lacks antecedent basis for “the at least one seat” because claim 13 depends from claim 1 as opposed to claim 3. Appellant attempted to correct this in the non-entered amendment of Jan. 22, 2019. Appeal 2020-001098 Application 15/851,006 4 Appellant does persuasively argue that Mayer’s float chamber 309 having drop stich construction 310 depicted in Figure 9 (cited at Final Act. 4) is attached to what is more likely to be regarded as a bottom surface as opposed to “a top surface” of deck chamber 111 having drop stich 112. App. Br. 5–7; See Mayer col. 8, ll. 50–54; col. 9, ll. 9–18. However, as the Examiner points out, a careful reading of the appealed action reveals that the Examiner never took a position to the contrary. See Ans. 10 ([Appellant’s argument] “does not contradict Examiner’s statement discussing an observation made at a higher level of generalization ‘Mayer discloses wherein drop-stitch layers are stacked such that are attached to a top surface of the lower surface’ which does not mention the deck.” (quoting Final Act. 4)). Accordingly, from the Final Action and the Answer it is clear that the Examiner never relied on Mayer as disclosing the precise subject matter of attaching a watercraft side to a top surface of that watercraft’s floor. Rather, Mayer was relied upon by the Examiner to illustrate that the more general technique of stacking inflatable drop-stitch layers was known in the art. It is from this determination that the Examiner concludes that the combined teachings of the references would yield the subject matter claimed, including sides “attached to a top surface of” a floor. “[An obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a [decision maker] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007). The Examiner reasons that it would have been obvious to use Mayer’s layering technique to arrive at the claimed skiff having drop-stitched sides attached to its top surface so as to “align the principal axes of the load bearing threads of the different layers.” Appellant Appeal 2020-001098 Application 15/851,006 5 does not address the Examiner’s actual findings concerning Mayer; nor does Appellant address the Examiner’s reasoning in support of the proposed combination. Arguments must address the Examiner’s action. 37 C.F.R. § 41.37(c)(1)(iv)(“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant”). In effect, the only relevant argument presented in this appeal is that Wundt supposedly teaches away from the combination proposed by the Examiner. App. Br. 8. The statement in paragraph 3 of Wundt that Appellant relies on for this assertion is: “[o]ne undesirable characteristic of prior inflatable boats is that they provide a relatively unstable and low performance hull structure.” This statement makes no reference to, and therefore includes no criticism of, any specific types of hull structures to which Wundt considers instability and low performance attributable. Ans. 12. At most, the cited portion of Wundt identifies generally undesirable hull characteristics. Merely identifying undesirable characteristics with a high level of generality is not the same as “teaching away” from a proposed combination, particularly where, as here, there is no showing that the proposed combination would necessarily result in those characteristics. “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Just because “better alternatives” may exist in the prior art that “does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation omitted). Appeal 2020-001098 Application 15/851,006 6 CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 1, 2, 7, 8, 11 103 Wundt, Mayer 1, 2, 7, 8, 11 4 103 Wundt, Mayer, Czarnowski 4 5 103 Wundt, Mayer, Hope 5 6 103 Wundt, Mayer, Pepper 6 9 103 Wundt, Mayer, Horan 9 10 103 Wundt, Mayer, Klare 10 12, 14 103 Wundt, Mayer, Shimiozo 12, 14 3, 13 103 Wundt, Mayer, Gonzales 3, 13 Overall Outcome 1–14 TIME PERIOD FOR RESPONSE 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