Ex Parte Barney

Board of Patent Appeals and Interferences

Mar 15, 2011

11458429 (B.P.A.I. Mar. 15, 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.
11/458,429 07/19/2006 Robert Barney 8769
60333 7590 03/16/2011
EDWIN D. SCHINDLER
4 HIGH OAKS COURT
P.O. BOX 4259
HUNTINGTON, NY 11743-0777
EXAMINER
AVILA, STEPHEN P
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
03/16/2011 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
____________

Ex parte ROBERT BARNEY
____________

Appeal 2009-010284
Application 11/458,429
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Robert Barney (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 7-9. Appellant cancelled claims 1-6. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to a body surfing article having a chest plate
with opposing, inwardly curved fins extending outwardly and downwardly.
Claim 7, reproduced below, with emphasis added, is representative of
the subject matter on appeal.
7. A body surfing article, comprising:
a chest plate having opposing fins on either
lateral side of a surface directed away from a
user’s body, said opposing fins being inwardly
curved toward a central region of said chest plate
and extending outwardly and downwardly for
defining a planing channel that allows fluid flow
therethrough for permitting both lateral and
forward movement of the user's body across a face
of a wave; and,
means for securing said chest plate to the
user’s body.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 7 and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Lizarazu (U.S. Patent No. 5,106,331, issued Apr. 21, 1992).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Barsdorf (U.S. Patent No. 5,569,057, issued Oct. 29, 1996) and Webber
(U.S. Patent No. 6,322,413 B1, issued Nov. 27, 2001).

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SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
(1) Whether Lizarazu’s opposing, inwardly curved fins 48 satisfy the
claim language of “extending outwardly and downwardly for defining a
planing channel that allows fluid flow therethrough for permitting both
lateral and forward movement of the user’s body across a face of a wave.”
(2) Whether it would have been obvious to a person of ordinary skill
in the art to modify the opposing fins 70 of Barsdorf to be inwardly curved
and extend “outwardly and downwardly” by the teachings of Webber.
Analysis
Issue (1)
Appellant contends that the opposing, inwardly curved fins 48 of
Lizarazu do not define a planing channel because of the longitudinal fins 50
and extensions 52 situated between the fins 48. App. Br. 7. Appellant also
contends Lizarazu’s disclosure, at column 4, line 31, that the low shore
hardness material of its outer shell provides “good abrasion resistance,” is
entirely distinct from the provision of a planing channel because a planing
channel “is intended to minimize resistance and allow for an almost
resistance-free surfing experience.” App. Br. 7-8. Appellant also contends
that although Lizarazu’s device is intended to provide lift, the rather small
size and complicated surface structure of Lizarazu’s device renders it less
like a boogy board which would be better suited for body surfing. App. Br.
8. In other words, Appellant contends that Lizarazu’s arrangement of
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longitudinal fins 50 and extensions 52 and disclosure of good abrasion
resistance and lift are all “contrary to the construction, purpose and
provision of a ‘planing channel.’” Id. Appellant also contends that
Lizarazu’s fins 46, 48, 50, and 52 are all positioned solely for forward
movement, as opposed to lateral movement, because the substantially
parallel orientation of the fins of Lizarazu would only allow water to channel
from the front to the back of the device, not sideways, so that a user of
Lizarazu’s body surfing device could not readily move laterally. Reply Br.
1-2. Appellant also contends that Lizarazu’s opposing fins 48 are simply
inwardly curved and extending downwardly, but do not extend outwardly in
order to be able to permit both lateral and forward movements of the user.
Reply Br. 2-3.
The Examiner’s position is that Lizarazu’s body surfing device
anticipates claims 7 and 9. Ans. 3. In response to Appellant’s arguments,
the Examiner posits that “the channel of Lizarazu clearly meets the broad
functional claimed recitation of allowing fluid flow and permitting both
lateral and forward movement.” Ans. 5. The Examiner also posits that a
user of Lizarazu’s body surfing device clearly must have both lateral and
forward movement because Lizarazu does not disclose that fluid flow is
prevented along the channel or that the user is incapable of both lateral and
forward movements. Id. The Examiner also posits that Lizarazu’s good
abrasion resistance and lift do not prevent either fluid from flowing along
the channel or the user from lateral and forward movements. Id.
Lizarazu discloses an apparatus 40 including an outer shell which is
bonded to a neoprene wetsuit. Fig. 6 and col. 4, ll. 11-13, 44-45, and 60-61.
The outer shell is semi-flexible to conform to the shape of the wearer’s torso
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and is preferably formed of a self-skinning closed cell polyurethane foam
such as a two component polyurethane Shore A elastomer having a low
shore hardness for a soft feel, yet nevertheless having a good abrasion
resistance. Col. 4, ll. 23-31. A shield portion 42 of the outer shell has a
central section 44 and flared lateral sections 46. Col. 4, ll. 15-16. Each
lateral section 46 includes a longitudinally disposed fin 48 for directional
control and stabilization and each fin 48 projects outwardly at an angle to an
adjacent lateral portion of the user’s upper torso. Col. 4, ll. 19-22. Lizarazu
shows that fins 48 extend both outwardly and downwardly from the chest
plate. Fig. 7. To further enhance controllability, additional fins 50 may be
utilized on shield portion 42. Col. 4, ll. 34-35. Additionally, extensions 52
of the outer surface of the shield 42 form a part of the lateral sections 46 and
function as fins. Col. 4, ll. 35-38.
We agree with the Examiner that Lizarazu anticipates claims 7 and 9.
We are not persuaded by Appellant’s arguments that the arrangement of
Lizarazu’s fins 50 and extensions 52 between and somewhat parallel to
Lizarazu’s fins 48 prevents the fins 48 from defining a planing channel. To
the contrary, when viewing figures 6 and 7, we find that because the fins 50
and extensions 52 are substantially parallel to fins 48, these fins 50 and
extensions 52 do not prevent a planing channel allowing fluid flow
therethrough from being formed by Lizarazu’s fins 48. We are also not
persuaded that Lizarazu’s disclosure of good abrasion resistance and lift is
contrary to the provision of a planing channel. Lizarazu’s good abrasion
resistance appears to be a reference to the ability of the low shore hardness
material of the outer shell to withstand being damaged during use while still
providing “a soft feel” (see column 4, line 30). The fact that Lizarazu’s
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apparatus 40 provides lift is also not seen as being contrary to the provision
of a planing channel as suggested by Appellant. We are not persuaded by
Appellant’s suggestion because no evidence is provided to support the
suggestion. We are also not convinced by Appellant’s contention that
Lizarazu’s fins 46, 48, 50, and 52 are all positioned solely for forward
movement, as opposed to lateral movement. Since the fins 48 are curved
inwardly, their curvature must allow for some lateral movement in addition
to forward movement. Finally, we do not agree with Appellant’s contention
that Lizarazu’s opposing fins 48 are simply inwardly curved and extending
downwardly, but do not extend outwardly. We find Lizarazu’s fins 48 as
having an outwardly extending component in order to be able to permit both
lateral and forward movements of the user.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 7 and 9 under 35 U.S.C. § 102(b) as anticipated by Lizarazu.
Issue (2)
Appellant contends that Webber is not particularly relevant to the
present claimed invention because it fails to disclose any type of body suit
having fins and instead discloses a fin for attachment to a surf board which
could not reasonably be said to be downwardly positioned. App. Br. 9.
Appellant also contends that modifying Barsdorf by Webber would only
teach a body surfing apparatus having fins that are opposing, but in no way
curved or downwardly shaped because Webber’s fins are for a surf board,
not a body suit, and are not downwardly positioned. App. Br. 9-10.
Appellant also contends that the fin of Webber is not to be positioned in
such a manner that it is extending outwardly so that even if a person of
ordinary skill in the art combined Barsdorf and Webber in the manner
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suggested by the Examiner, “the result would not be a body surfing article
having ‘opposing fins’ that define a planing channel via an ‘outwardly’ and
downwardly extending orientation. Reply Br. 3.
The Examiner’s position is that Barsdorf discloses the invention
substantially as claimed, except that Barsdorf does not disclose the opposing
fins as being inwardly curved toward a central region of the chest plate.
Ans. 3-4. The Examiner posits that Webber teaches inwardly curved fins 10
in Figures 5-10B. The Examiner concludes that it would have been obvious
to modify the fins 70 of Barsdorf by making the fins 70 curved as taught by
Webber in order to provide improved performance characteristics, such as
taught at column 3, lines 1-3 of Webber, namely, improving grip or hold
against the wave face, greater ease of maneuverability, and substantial
improvement in speed generated. Ans. 4. In response to Appellant’s
argument that Webber is not relevant to Barsdorf, the Examiner states that a
person of ordinary skill in the art would indeed look to the surfboard art and
see the improvements in performance characteristics that would be provided
by in the inwardly curved fins of Webber. Ans. 6. The Examiner also notes
that contrary to Appellant’s allegation that Webber does not teach fins that
are downwardly positioned, the fins of Webber are downwardly positioned
as they extend downwardly from the bottom of the surfboard. Id.
Barsdorf discloses a body surfing device 10 including a board 12 and
a harness 14 secured to the board 12 for strapping the board 12 to the front
torso of a user’s body. Abstract. The body surfing device 10 has two fins
70 which are secured to the board 12 at opposing locations to extend from
the lower face 18 thereof proximate the trailing end 22 of the board 12. Fig.
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3-5 and col. 4, ll. 62-65. The fins 70 assist in enhancing the maneuverability
and directional control of the board 12 in use in the water. Col. 4, ll. 65-67.
Webber discloses opposing, inwardly curved side fins 10 for the
bottom of a surf board. Fig. 1, 3, and 4 and col. 2, ll. 25-31. The fins 10
have mounting spigots 19 for mounting the fins 10 on the bottom of the
surfboard. Figs. 2, 3, 6, 8, and 9 and col. 2, ll. 44-49. The fin base portion
17 extends outwardly from the mounting spigots 19 and downwardly from
the bottom of the surfboard. Id. Experienced surfboard users have found
that surfboards with side fins, such as 10, have improved performance
characteristics, including improved grip or hold against the wave face,
greater ease of maneuverability, and a substantial improvement in generated
speed. Col. 2, l. 65 through col. 3, l. 3.
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to modify the opposing fins 70 of Barsdorf
to be inwardly curved by the teachings of Webber and that the modified fins
would extend outwardly and downwardly because a person of ordinary skill
in the art of designing a surfing garment would be very familiar with surfing
and surfboards and would appreciate that the improvements the curved fins
provided to the surfboard of Webber would likewise improve the surfing
garment of Barsdorf in the same manner. Ans. 6. We are not persuaded by
Appellant’s argument that Webber is not particularly relevant to Barsdorf
because Webber does not disclose any type of body suit or swimwear and
because the fin is for attachment to the surf board. The Examiner found that
Webber is relevant to Barsdorf and that a person of ordinary skill in the art
would modify Barsdorf by the teachings of Webber in order to improve
performance characteristics citing to column 3, lines 1-3 of Webber. For the
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reasons provided supra, we agree that a person of ordinary skill in the art
wanting to improve a body surfing device would look to the surfboard art in
order to improve performance characteristics. In addition, we agree with the
Examiner that Webber teaches fins 10 that extend outwardly from where the
mounting spigot 19 is attached to the bottom of the surfboard, as clearly
shown in Figure 3, and downwardly from the bottom of the surfboard, as
clearly shown in Figs. 10A and 10B.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Barsdorf and
Webber.

CONCLUSIONS
Lizarazu’s opposing, inwardly curved fins 48 satisfy the claim
language of “extending outwardly and downwardly for defining a planing
channel that allows fluid flow therethrough for permitting both lateral and
forward movement of the user’s body across a face of a wave.”
It would have been obvious to a person of ordinary skill in the art to
modify the opposing fins 70 of Barsdorf to be inwardly curved and extend
“outwardly and downwardly” by the teachings of Webber.

DECISION
We affirm the Examiner’s rejections of claims 7 and 9 under 35
U.S.C. § 102(b) as being anticipated by Lizarazu and of claims 7 and 8
under 35 U.S.C. § 103(a) as unpatentable over Barsdorf and Webber.
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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

Klh

EDWIN D. SCHINDLER
4 HIGH OAKS COURT
P.O. BOX 4259
HUNTINGTON, NY 11743-0777