Ex Parte 6234853 et al

Board of Patent Appeals and Interferences

Jun 22, 2011

95000346 (B.P.A.I. Jun. 22, 2011)

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.
95/000,346 02/13/2008 6234853 000009-196 8790
7590 06/22/2011
William D. Lanyi
Mercury Marine Division of Brunswick
W6250 Pioneer Road
P.O. BOX 1939
Fond du Lac, WI 54936-1939
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

VOLVO PENTA OF THE AMERICAS, INC.
Requester and Respondent

v.

BRUNSWICK CORPORATION
Patent Owner and Appellant
____________

Appeal 2011-006902
Reexamination Control 95/000,346
Patent 6,234,853
Technology Center 3900
____________

Before JAMESON LEE, DANIEL S. SONG, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
United States Patent No. 6,234,853 (“‘853 Patent”), which is the
subject of the current inter partes reexamination, issued to Lanyi et al. on
May 22, 2001 and is assigned to Brunswick Corporation (“Brunswick”)1.
Patent Owner Brunswick appeals under 35 U.S.C. §§ 134(b) and 315(a)
from the Examiner’s rejection of claims 21-26.2 Third-Party Requester and
Respondent Volvo Penta of the Americas, Inc. (“Volvo”) urges that the
Examiner’s rejection must be affirmed.3 We have jurisdiction under 35
U.S.C. §§ 134(b) and 315(a).
We affirm.

References Relied on by the Examiner
Noguchi et al. (“Noguchi”) 3,976,023 Aug. 24, 1976
Nilsson 5,031,561 Jul. 16, 1991

The Rejections on Appeal
The Examiner rejected claims 21-26 under 35 U.S.C. § 102(b) as
anticipated by Nilsson.

1 See Patent Assignment Abstract of Title, Reel 010608 Frame 0689
which was entered into the record of this proceeding as “Title Report” on
February 21, 2008.

2 See Brunswick’s “Appellant Owner’s Brief on Appeal” filed June 7,
2010 (hereinafter “App. Br.”).

3 See Volvo’s “Respondent’s Brief” filed June 16, 2010 (hereinafter
“Resp. Br.”).

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The Examiner rejected claims 21-26 under 35 U.S.C. § 103(a) as
unpatentable over Nilsson and Noguchi.

The Invention
The invention relates to the maneuvering of marine vessels using two
or more propulsion systems. (‘853 Patent 1:7-10.)
Claim 21 is reproduced below (App. Br. 25 Claims App’x.):
21. A method for maneuvering a marine vessel, comprising the
steps of:

providing a first marine propulsion unit which is attachable to a
transom of said marine vessel;

providing a second marine propulsion unit which is attachable
to said transom of said marine vessel;

receiving a maneuver command from a manually controllable
device; calculating a first magnitude of thrust for said first marine
propulsion unit as a function of said maneuver command; and

calculating a second magnitude of thrust for said second marine
propulsion unit as a function of said maneuver command, said first
and second magnitudes of thrust being calculated to create a resultant
force vector imposed on said marine vessel and a resultant moment
about an instantaneous center of turn of said marine vessel which will
achieve said maneuver command, said first and second magnitudes of
thrust being unequal to each other in order to create a magnitude of
said resultant moment about said instantaneous center of turn which is
unequal to zero,

wherein said first and second marine propulsion units have
steering angles selected from a group of possibilities having both
symmetric and asymmetric angles relative to each other.
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B. ISSUES
1. Did the Examiner correctly find that Nilsson discloses first and
second marine propulsion units with steering angles which are selected from
a group of possibilities having both symmetric and asymmetric angles
relative to each other?
2. Did the Examiner correctly determine that the combined
teachings of Nilsson and Noguchi teach first and second marine propulsion
units with steering angles which are selected from a group of possibilities
having both symmetric and asymmetric angles relative to each other?
C. FINDINGS AND ANALYSIS
Volvo proposed two grounds of rejection of claims 21-26 which were
adopted by the Examiner. In particular, the Examiner adopted; (1) a
rejection of claims 21-26 as anticipated by Nilsson (RAN4 10:11-15), and
(2) an alternative rejection of claims 21-26 as unpatentable over Nilsson and
Noguchi (id. at 12:2-6).
Anticipation
Each of claims 21-26 is an independent claim. We address the claims
in two groupings based on common claim features which are in dispute; (1)
claims 21-23, and (2) claims 24-26.

4 The Examiner’s Answer mailed September 27, 2010 incorporates by
reference the “grounds of rejection… and explanations set forth in the”
Right of Appeal Notice (“RAN”) mailed March 5, 2010. (Ans. p. 1.)
Accordingly, this opinion makes reference to page and line numbers of the
RAN in connection with the Examiner’s rejections and explanations that are
advanced in the Examiner’s Answer.
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Claims 21-23
Claim 21 is drawn to a method for maneuvering a marine vessel and
claims 22 and 23 are directed to an apparatus for maneuvering a marine
vessel. Each of claims 21-23 includes recitation of “a first marine
propulsion unit” and “a second marine propulsion unit.” (App. Br. 25-26
Claims App’x.) Each of the claims also includes the following feature
which is at issue in this appeal (id.):
wherein said first and second marine propulsion units have
steering angles selected from a group of possibilities having both
symmetric and asymmetric angles relative to each other.

The Examiner found that Nilsson discloses a method and apparatus
for maneuvering a marine vessel including first and second marine
propulsion units. With respect to the above-quoted feature, the Examiner
determined that the propulsion units of Nilsson may be “individually turned”
such that the steering angles of the units may be oriented symmetrically or
asymmetrically. (RAN 11:14-16.) The Examiner, therefore, concluded that
Nilsson contemplates that the respective steering angles for its propulsion
units may be selected from a group of angles which include both
symmetrical and asymmetrical angles. (Id. at 11:16-18.)
Brunswick challenges the Examiner conclusion on the theory that
Nilsson’s teachings are limited strictly to selecting steering angles for its
propulsions units that are symmetric relative to one another. As support for
that theory, Brunswick points to portions of Nilsson’s disclosure describing
a mode of operation in which the turning angles of propulsion units are
described as being symmetrical. (App. Br. 13:24-14:8.) Based on those
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portions of Nilsson’s disclosure, Brunswick contends that Nilsson “teaches
away” from orienting its propulsion units at any angles that are other than
symmetrical, e.g., asymmetrical. (Id. at 15:3-5.)
Brunswick’s contention is unpersuasive. The portions of Nilsson’s
disclosure on which Brunswick relies for its “teaching away” argument
simply describe one embodiment of Nilsson’s steering involving merely one
particular mode of operation. A reference, however, must be evaluated for
all its teachings and is not limited to what is disclosed in one particular
embodiment. See In re Bode, 550 F.2d 656, 661 (CCPA 1977).
Nilsson discloses a steering and maneuvering system for marine
vessel incorporating “two individually turnable propulsion units.” (Nilsson
1:7-10.) Nilsson describes that steering of the vessel may be accomplished
in a variety of modes, including a “normal steering mode” and “at least one
special manoeuvering [sic] mode.” (Id. at 2:5-8.) When the system is
configured to normal steering mode, movement ahead and astern as well as
simple maneuvers are performed through control of the propulsion units,
which includes that the “direction of the respective propulsion unit can be
set individually[.]” (Id. at 3:56-58.) The disclosure of “individually
turnable” propulsion units whose directions may be “set individually” means
that their directions are adjusted independently of one another and thus
include angular orientations for the units that that are both symmetric and
asymmetric with respect to each other.
As is further described in Nilsson, other types of special steering
modes, e.g., a “turning mode” or an “athwartships mode,” involve toggling
“preselection buttons” of a control system, which, in some circumstances,
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configure the propulsion units to specifically assume “symmetrical turning
angles” with respect to one another and to maintain symmetry while in the
mode. (Id. at 3:61-4:20.) Those steering modes allow a person of lesser
experience in the practice of marine vessel steering to execute complicated
special maneuvers with only minimal training. (Id. at 1:60-2:18.)
Thus, Nilsson contemplates that the relative angles of two propulsion
units are, in the normal course of operation, set so as to assume individually
selected angles irrespective of one another, i.e., the relative angles may be
either symmetric or asymmetric. However, in some circumstances, such as
when seeking to execute complicated maneuvers, a marine vessel pilot may
opt to selectively engage a particular type of operational mode in which, out
of those angles that are known and available, the respective angles of the
propulsion units are chosen to be symmetric. Nilsson’s disclosure thus
satisfies the requirement of Brunswick’s claims 21-23 that the steering angle
of a first marine propulsion unit relative to a second may be selected from
both symmetric and asymmetric angles. Brunswick’s argument to the
contrary, that Nilsson “teaches away” or “precludes” (App. Br 15:3-5) the
possibility of both symmetric and asymmetric angles as between its two
propulsion units, is inconsistent with the express teachings of Nilsson. We
reject Brunswick’s argument.
For the foregoing reasons, we sustain the rejection of claims 21-23 as
anticipated by Nilsson.
Claims 24-26
Claim 24 is directed to a method for maneuvering a marine vessel.
Claims 25 and 26 are each directed to an apparatus for maneuvering a
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marine vessel. Each of claims 24-26 includes first and second marine
propulsion units having, respectively, first and second steering angles which
operate to maneuver a marine vessel in response to a maneuver command.
Each claim also requires that the steering angles are selected in a particular
manner. But for minor differences in terminology, the requirement is the
same for each claim. The requirement as it appears in claim 24 is
reproduced below (App. Br. 27 Claims App’x.):
a) selecting any steering angle for said first steering angle; and
b) determining said second steering angle from a group of possible
second steering angles which together with said selected first steering
angle cumulatively satisfy said maneuver command by vector
resolution.

According to Brunswick, Nilsson does not anticipate its claims
because Nilsson (id. at 22:9-14) (emphasis in original):
cannot select any steering angle for the first steering angle in
combination with determining the second steering angle from a group
of possible second steering angles which together with the selected
first steering angle cumulatively satisfy the noted maneuver command
by vector resolution, because Nilsson ‘561 is limited to symmetric-
only steering angles, as noted at Col. 2, line 36, turning angles are
changed symmetrically in opposite directions while retaining
symmetry[.]

However, as discussed above with respect to claims 21-23,
Brunswick’s assessment of Nilsson’s teachings is incorrect. The teachings
are not limited solely to selecting “symmetric-only” steering angles for its
propulsion units to the exclusion of other angles. Nilsson expressly
discloses that its propulsion units are “individually turnable” (Nilsson
Abstract) and that the directions of its propulsion units are “set individually”
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to perform certain desired steering and maneuvering operations (id. at 3:56-
60). That Nilsson also additionally provides for selecting symmetric angles
for the propulsion units as one available option in some modes of operation
does not somehow operate to strictly limit Nilsson’s teachings in every
circumstance to the selection of only symmetrical angles. Brunswick’s
argument in that regard is based on an inaccurate and incomplete evaluation
of Nilsson’s teachings that is undermined by Nilsson’s own express
disclosure. We reject the argument.
For the foregoing reasons, we sustain the rejection of claims 24-26 as
anticipated by Nilsson.
Obviousness
The Examiner alternatively rejected claims 21-26 as unpatentable over
Nilsson and Noguchi. Noguchi discloses an apparatus for maneuvering a
ship, which, like Nilsson, includes two propellers or propulsion units.
(Noguchi Abstract.) The Examiner pointed to Noguchi’s Figure 7 as
illustrating that it is understood in the art that ship steering operations
involve orienting propulsion units at a variety of angles with respect to one
another, including those that are asymmetrical. (RAN 12:7-9.) In light of
the teachings of Nilsson and Noguchi, the Examiner reasoned it would have
been obvious that during maneuvering actions for a marine vessel, two
propulsion units may be positioned so as to have symmetrical and
asymmetrical steering angles relative to one another. (Id. at 12:9-12.)
The Examiner’s position is reasonable. Noguchi’s Figure 7 depicts a
multitude of recognized propulsion unit positions including those in which
the units are angled each of asymmetrically and symmetrically with respect
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to one another. One with ordinary skill in the art would have readily
appreciated from the combined teachings of Nilsson and Noguchi that
symmetrical and asymmetrical orientations for two propulsion units are
known and viable configurations when steering a marine vessel.
Brunswick does not address the teachings of Noguchi other than to
urge that Noguchi provides only that “the steering angles of the propellers
are swung through the same angle, in opposite directions or in the same
direction,” pointing to Noguchi’s column 3, lines 52-57. (App. Br. 15:17-
19, emphasis in original.) Brunswick’s assertion is misplaced. The
referenced portion of Noguchi simply establishes that in one embodiment,
Noguchi contemplates that its propulsion units may indeed move through the
same angle. That, however, is not the limit of Noguchi’s teachings. As is
clear from Noguchi’s Figure 7, during maneuvering operations, the direction
of the propellers may be set or swung through other angles that are not the
same. (Noguchi 4:62-65; Figure 7.) Brunswick’s argument is unpersuasive
as it does not adequately account for all of Noguchi’s teachings.
For the foregoing reasons, we sustain the rejection of claims 21-26
over Nilsson and Noguchi.
D. CONCLUSION
1. The Examiner correctly found that Nilsson discloses first and
second marine propulsion units with steering angles selected from a group of
possibilities having both symmetric and asymmetric angles relative to each
other.
2. The Examiner correctly determined that the combined teachings
of Nilsson and Noguchi teach first and second marine propulsion units with
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steering angles which are selected from a group of possibilities having both
symmetric and asymmetric angles relative to each other.
E. ORDER
The rejection of claims 21-26 under 35 U.S.C. § 102(b) as anticipated
by Nilsson is affirmed.
The rejection of claims 21-26 under 35 U.S.C. § 103(a) as
unpatentable over Nilsson and Noguchi is affirmed.

AFFIRMED

Patent Owner:

William D. Lanyi
Mercury Marine Division of Brunswick
W6250 Pioneer Road
P.O. Box 1939
Fond du Lac, WI 54936-1939

Third Party Requester:

Harold R. Brown III, Esq.
WRB-IP LLP
801 N. Pitt St., Suite 123
Alexandria, VA 22314