Aqua-Leisure Industries, Inc.

Patent Trials and Appeals Board

Oct 26, 2020

2020002856 (P.T.A.B. Oct. 26, 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.
15/947,316 04/06/2018 Scott R. de Grasse A2010.70824US01 6816
23628 7590 10/26/2020
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
POLAY, ANDREW
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT R. de GRASSE
____________

Appeal 2020-002856
Application 15/947,316
Technology Center 3600
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Aqua-Leisure
Industries, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1 and 3 are independent claims. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A self-inflating, buoyant swim aid comprising:
a core element of open cell foam having a compressed
state and an expanded state;
an impermeable, flexible casing enclosing said core
element; and
a valve affixed to said casing and communicating with
said core element, whereby the opening of the valve allows the
flow of air into said casing to cause the core element to expand
from its compressed state to its expanded state.
Appeal Br. 9 (Claims App.).

REJECTIONS ON APPEAL
Claims 1 and 2 are rejected under 35 U.S.C. § 102(a)(2) as anticipated
by Corlett (US 2003/0200910 A1, published Oct. 30, 2003).
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable
over Hurt (US 2,550,562, issued Apr. 24, 1951) and Corlett.

ANALYSIS
Claims 1 and 2 as anticipated by Corlett
Claim 1
The Examiner construes the preamble of claim 1, which recites “[a]
self-inflating, buoyant swim aid,” as an intended use. Final Act. 2 (citing
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“‘[W]here a patentee
defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation’”)). The Examiner finds that Corlett
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discloses a self-inflating fender that is capable of this intended use. Id. The
Examiner further finds that Corlett discloses all the limitations recited in the
claim body, including a core element (foam core 27) of open cell foam, an
impermeable, flexible casing (air tight bladder 28) enclosing the core
element, and a valve (air valve 23) affixed to the casing and communicating
with the core element. Id. at 2–3.
Appellant contests the Examiner’s finding that Corlett anticipates
claim 1. Appeal Br. 5. Appellant contends that Corlett is directed to a
marine or boat fender (id.) and “a boat fender is not a swim aid” (id. at 6).
Appellant notes that Corlett discloses that the fender is “‘used to protect a
boat’s hull from damage when tied to shore or to another boat,’” and
contends that, according to Corlett, “‘[i]n order for fenders to be effective in
protecting the boat, they have to be large and numerous.’” Id. at 5 (citing
Corlett ¶ 4). Appellant asserts that Corlett does not mention “the possibility
of using a fender as a ‘swim aid.’ Indeed, the fact that fenders have to be
‘large,’ according to Corlett, makes it highly unlikely that a fender would be
used as a ‘swim aid.’” Id. Appellant also contends that the Examiner does
not explain how Corlett’s “large” boat fenders would be capable of use as a
swim aid. Id.
In response, the Examiner clarifies that:
a “swim aid” is not a term of art referring to a well-defined
category in the art, but rather refers to the broad category of
“things that are capable of aiding in swimming.” This broad
category would include things like life vests, kickboards,
goggles, inflatable truck inner tubes, and lifeguard buoys.
Ans. 5. The Examiner explains that “inflatable fenders fall within the
category of things that float that would aid in swimming” and “the broadest
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reasonable interpretation of ‘swim aid’ includes an inflatable marine fender
capable of floating that can aid a swimmer.” Id. at 6.
Appellant replies that the Examiner’s interpretation of “swim aid” is
unreasonable. Reply Br. 1. Appellant contends that “in the context of the
subject application, the term ‘swim aid’ means a flotation device that assists
in teaching a child to swim.” Id. at 2.
Appellant’s contentions are unpersuasive. As for the limiting effect of
a claim preamble, “[i]n general, a preamble limits the invention if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002). Conversely, a preamble “generally is
not limiting when the claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect the structure . . . of
the claimed invention.” Id. at 809. Additionally, a preamble is generally not
limiting when it only states a purpose or intended use for the invention. Id.
“[D]ependence on a particular disputed preamble phrase for antecedent basis
may limit claim scope because it indicates a reliance on both the preamble
and claim body to define the claimed invention.” Id. at 807. See also Bell
Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620
(Fed. Cir. 1995).
First, Appellant does not contend that Corlett fails to disclose a self-
inflating buoyant device, or any limitation recited in the body of claim 1.
Second, we agree with the Examiner that the preamble does not limit
claim 1. The claim body describes a structurally complete device, and, as
such, deletion of the preamble does not affect the claimed structure. Also,
the preamble does not provide antecedent basis for any limitation in the
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claim body, and Appellant does not contend that understanding any
limitation in the body requires reliance on the preamble. We agree with the
Examiner that the preamble only states a purpose or intended use for the
self-inflating, buoyant device having a structure as recited in the claim body.
Appellant appears to contend that Corlett’s fender is necessarily
“large,” which, by itself, makes it highly-unlikely that the fender would be
used as a “swim aid.” However, claim 1 does not recite any limitation as to
the size of the “self-inflating, buoyant swim aid.” And although Corlett
describes prior art fenders as “large,” Corlett does not indicate that its self-
inflating marine fender must be at least a specific size, let alone “large.”
Although Corlett does not explicitly describe its marine fender as a
“swim aid,” or that the fender can be used as one, there is no requirement
that Corlett contain this disclosure. “It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.” See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (the manner in which a
device is to be used is not germane to the issue of patentability of the device
itself). Appellant does not explain persuasively why Corlett’s fender could
not be used to “aid,” at least to some extent, a swimmer in the water. As to
Appellant’s construction of a “swim aid” as “a flotation device that assists in
teaching a child to swim” (Reply Br. 2), this construction corresponds to a
more-specific intended use of the claimed device. It is not apparent why the
device must be used to teach a child in particular to swim.
For the above reasons, we sustain the rejection of claim 1 as
anticipated by Corlett.

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Claim 2
Claim 2 depends from claim 1 and recites, “further comprising a body
portion having a pocket therein, said flexible casing being held in said
pocket and said inflation valve projecting outwardly through an aperture in
said body portion.” Appeal Br. 9 (Claims App.) (emphasis added). The
Examiner finds that Corlett’s swim aid includes a pocket (fending cover 21)
therein, where the flexible casing (bladder 28) is held in the pocket and the
inflation valve projects outwardly through an aperture in the device. Final
Act. 3 (citing Corlett Fig. 8).
Appellant contends that the term “body portion” in claim 2, when read
in the context of the disclosure, “clearly refers to a portion that is in close
contact with the body of the user of the device.” Appeal Br. 6. In support,
Appellant notes: the title of the invention is “Self-Inflating Swim Aid”; the
“Field of the Invention” describes “‘flotation devices used to teach
swimming, such as vests, arm bands, waist bands, and the like . . . .’”; “the
specification refers to the many devices that are ‘attached to the child’” and
the “‘Detailed Description of the Invention’ refers to one construction of the
swim aid that ‘wraps around the upper torso of the user’”; and Figure 1
“illustrates the swim aid in place on a child.” Id. Thus, Appellant contends,
the recited “‘body member’ [sic] . . . refers to the portion of the swim aid
that is worn on the body of the user.” Id. Appellant contends that a user
could not wear Corlett’s boat fender on the user’s body. Id.
The Examiner notes that the term “body portion” is not found in
Appellant’s disclosure. Ans. 8. We note that the term “body” also is not
disclosed. The Examiner determines that Appellant’s construction of a body
portion, as “clearly refer[ring] to a portion that is in close contact with the
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body of the user of the device” and “refer[ring] to the portion of the swim
aid that is worn on the body of the user,” is unreasonable and does not fall
within the broadest reasonable interpretation of this term. Id.
The Examiner has a better position as to claim 2. Appellant’s
contention that a “body portion” “clearly refers to a portion that is in close
contact with the body of the user of the device” (Appeal Br. 6) pertains to
use of the device, not to the structure of the body portion. Appellant does
not contend persuasively that Corlett’s device lacks any structural limitation
of the “body portion” recited in claim 2. And because the term “body
portion” is not found in Appellant’s original disclosure, the disclosure does
not define this term as having a particular structure. Further, the Examiner
determines the body of Corlett’s swim aid is capable of being in “close
contact” with a human body. Ans. 8. Appellant does not apprise us of error
in this determination. As for Appellant’s contention that the body portion
“refers to the portion of the swim aid that is worn on the body of the user”
(Appeal Br. 6), again Appellant does not contend persuasively that the
claimed body portion has certain structure that allows it to be worn on a
user’s body, whereas Corlett’s device lacks that structure.
For the above reasons, we sustain the rejection of claim 2 as
anticipated by Corlett.

Claims 3 and 4 as unpatentable over Hurt and Corlett
For claim 3, the Examiner finds that Hurt discloses a flotation vest
comprising a core element of air having a compressed and an expanded
state; an impermeable, flexible casing (inflatable rubber bladder 21)
enclosing the core element; a body portion formed in the shape of a vest and
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having a pocket for receipt of the core element enclosed in the casing (front
face 10, rear face 11, edge strip 12) and a valve (mouth piece 28) affixed to
the casing in communication with the core element to allow air into said
casing to expand the core element. Final Act. 3. The Examiner concedes
that Hurt does not disclose that the core element comprises open cell foam.
Id.
The Examiner relies on Corlett as disclosing that a basic inflatable
bladder in a casing can be substituted with a bladder containing an open cell
foam core. Final Act. 4 (citing Corlett ¶¶ 4, 15). The Examiner determines
that it would have been obvious to a person of ordinary skill in the marine
art to add open cell foam to Hurt’s bladder, where the motivation is, as
disclosed by Corlett, “‘[o]pening the air valve 12 will release the restriction
of atmospheric air pressure and the fender 10 will expand back to its
uncompressed size because of the expansion of the open cell foam core 15.’”
Id. (citing Corlett ¶ 15).
Appellant contends that the Examiner has not provided any
articulation or factual analysis as to why a person of ordinary skill in the art
would have combined Hurt and Corlett to result in the invention of claims 3
and 4. Appeal Br. 7. Appellant disputes that the claimed floatation vest falls
within the “marine art.” Appellant contends that the Examiner has not
explained why a person of ordinary skill in the art would look to Corlett
when considering the construction of a swim aid. Id.
The Examiner states, “[a]iding in expansion is the same advantage of
open cell foam cited . . . in [Appellant’s Specification].” Ans. 9. The
Examiner also submits that “the problem to be solved faced by Applicant’s
specification, making the inflatable object self-inflating, is squarely cited as
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the improvement of Corlett that motivates the modification to traditional
inflating floatation vest of Hurt.” Id.
Appellant does not explicitly contend that Corlett is non-analogous
prior art, but rather, that Corlett is not in the field of swim aids, but in the
field of boat fenders, and, as such, one of ordinary skill in the art would not
have looked to Corlett to modify Hurt’s inflatable life preserver. Reply Br.
4–5. However, the Examiner’s position is that Corlett addresses the problem
of making an inflatable object self-inflating, which provides sufficient
motivation for the proposed modification of Hurt’s inflatable life preserver.
Corlett describes, “[t]he self[-]inflating fender of the present invention
addresses the problem mentioned in prior art by providing both a savings on
space and manpower.” See Corlett ¶ 5. As for the prior art, Corlett
describes that “re-inflation requires an external source of air or a pump with
dedicated man power for operation.” See id. ¶ 4. Corlett addresses this re-
inflation requirement by providing a self-inflating fender.
Hurt discloses that in the life preserver construction shown in Figure
1, “the front bladder 21 may be quickly inflated by a high pressure gas
inflating device 24 of well[-]known construction and which is commonly
referred to as a CO2 holder.” See Hurt col. 3, ll. 55–59, Fig. 1. Hurt also
discloses that, “[i]n addition to the high pressure gas inflating means 24 and
24’ for inflating the front and rear bladders, oral means is provided whereby
each of the three bladders may be independently inflated.” See id. col. 4, ll.
4–8.
We note, “[u]nder the correct analysis, any need or problem known in
the field of endeavor at the time of the invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). And, “[w]hen a
work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one.” Id. at 417. In light of these principles, we are unpersuaded
by Appellant that one of ordinary skill in the art would not have looked to
Corlett to modify Hurt’s inflatable life preserver. We also disagree with
Appellant that the Examiner has failed to provide articulated reasoning with
a rational underpinning to support the conclusion of obviousness.
The Examiner’s proposed modification applies the known solution to
a re-inflation requirement, as disclosed in Corlett, to Hurt’s life preserver.
The proposed modification would result in Hurt’s life preserver being self-
inflating. As noted, the Examiner relies on Corlett for teaching the
substitution of a basic inflatable bladder in a casing with a bladder
containing an open cell foam core. Final Act. 4. The Examiner’s
combination proposes to replace one known element (i.e., Hurt’s inflatable
core element) with another element (i.e., Corlett’s bladder), relying on a
simple substitution rationale. According to this rationale, “when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR, 550 U.S. at 416.
Appellant does not contend that one of ordinary skill in the art would have
lacked the requisite skill to achieve this substitution, or that the results of the
substitution would have been unpredictable. Appellant does not apprise us
of error in the Examiner’s substitution rationale.
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For the above reasons, we sustain the rejection of claim 3, and
dependent claim 4, which is not separately argued, as unpatentable over Hurt
and Corlett.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 102 Corlett 1, 2
3, 4 103 Hurt, Corlett 3, 4
Overall
Outcome
1–4

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