Ex Parte Barr

Patent Trial and Appeal Board

Sep 19, 2012

12015857 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/015,857 01/17/2008 Dale C. Barr DB1-0001US 3130
7590 09/20/2012
Dale C. Barr
5818 Nora Dr. NW
Bremerton, WA 98311
EXAMINER
STELLING, LUCAS A
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
09/20/2012 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 DALE C. BARR
____________

Appeal 2011-003878
Application 12/015,857
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
GRACE KARAFFA OBERMAN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claim 20 and its dependent claims 21, 22, 25-38, and 132-137.
We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claims 20, 21, 22, 32, 35, and 37 are representative of the subject
matter on appeal and are set forth below:

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20. A watercraft, comprising:

a structure;

a propulsion system operatively coupled to the structure and
configured to propel the structure through a marine environment; and

a dispensing device operatively coupled to at least one of the structure
and the propulsion system and configured to dispense an enhancement
substance into the marine environment proximate at least one propeller blade
of the propulsion system such that the enhancement substance interacts with
the at least one propeller blade to become at least partially mixed into the
marine environment during operation of the propulsion system.

21. The watercraft of claim 20, wherein the wake includes a
propulsive portion, and wherein the dispensing device is further configured
to dispense the enhancement substance so that the enhancement substance at
least partially mingles with the propulsive portion of the wake.

22. The watercraft of claim 20, wherein the dispensing device is
further configured to dispense the enhancement substance into the marine
environment at a location slightly upstream of the at least one propeller
blade such that the enhancement substance interacts directly with the at least
one propeller blade.

32. The watercraft of claim 20, wherein the propulsion system
includes at least one of an outboard engine, an inboard engine, and a jet
drive propulsion system.

35. The watercraft of claim 33, wherein the dispensing device is
further configured to dispense the enhancement substance upstream of the
propeller assembly.

37. The watercraft of claim 33 wherein the structure includes a hull,
and wherein the propeller assembly is disposed external to the hull.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
Lapworth 3,595,190 Jul. 27, 1971
Stuart 3,659,547 May. 2, 1972
Rymal 4,732,682 Mar. 22, 1988
Karliner 5,744,072 Apr. 28, 1998
Aulniers US 2006/0011555 A1 Jan. 19, 2006

Definition of “hull” Merriam-Webster Online Dictionary 2009, available at
http://www.merriam-webster.com/dictionary/hull

THE REJECTIONS
1. Claims 20, 21, 25, 29, 31, 33, 34, 36, and 132-136 are rejected under
35 U.S.C. §102(b) as being anticipated by Karliner.
2. Claims 22 and 35 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Karliner in view of Rymal.
3. Claims 26-28, 30, and 38 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Karliner in view of Aulniers.
4. Claims 32 and 37 are rejected under 35 U.S.C. §102(b) as anticipated
by or, in the alternative, under 35 U.S.C. §103(a) as obvious over Karliner as
evidenced by Lapworth and also as evidenced by the definition of "hull"
from the Merriam-Webster online Dictionary.
5. Claim 137 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Karliner in view of Stuart.
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ANALYSIS
As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Any claim not separately argued will stand or
fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
With regard to the prior art rejections, we essentially adopt the
Examiner’s findings pertinent to the issues raised by Appellant for these
rejections. We, therefore, incorporate the Examiner’s position as set forth in
the Answer. We add the following for emphasis only.

Rejection 1

Issue: Did the Examiner err in determining that the applied art suggests the
claimed subject matter, in particular the aspect of claim 20 pertaining to a
watercraft having a propulsion system “configured to propel the structure
through a marine environment”?
We answer this question in the negative and AFFIRM.
Appellant’s basic position is that the Examiner’s interpretation of the
claim is unduly broad for the reason stated on pages 14-17 of the Brief,
which we do not repeat here.1 We disagree with Appellant’s position for the
reasons explained by the Examiner in the Answer, and particularly as set
forth in the paragraph bridging pages 13-14 of the Answer. Therein, the
Examiner explains that the claimed phrase of “configured to propel the
structure through a marine environment" was fully considered by the

1 Appellant also attached articles as listed in the Evidence Appendix, and
we defer to the Examiner’s comments on these articles as set forth on page
15 of the Answer.
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Examiner and the Examiner correctly recognized such language as
functional language.
The Examiner then states that if the prior art structure is capable of
performing the intended use, then it meets the claims. We agree for the
following reasons. We note that choosing to define an element of an
apparatus functionally, i.e., by what it does, carries with it a risk: Where
there is reason to conclude that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981). The Examiner finds that Karliner is capable of propelling using the
standard ship propeller attached to a shaft and motor. Ans. 13-14. Appellant
has not shown that the claimed function patentably distinguishes the claimed
structure from the prior art structure; hence we agree with the Examiner’s
position.
Appellant then argues that Karliner does not teach the aspect of
dependent claim 21 regarding “operation of the propulsion system produces
a wake including a propulsion portion.” Br. 17-18. However, again, the
Examiner is correct that the apparatus of Karliner is capable of producing a
wake, and therefore anticipates the claim in this regard. Ans. 15-16.
In view of the above, we affirm Rejection 1.

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Rejection 2

Claims 22 and 35 recite:
22. The watercraft of claim 20, wherein the dispensing device
is further configured to dispense the enhancement substance into the
marine environment at a location slightly upstream of the at least one
propeller blade such that the enhancement substance interacts directly
with the at least one propeller blade.
35. The watercraft of claim 33, wherein the dispensing device
is further configured to dispense the enhancement substance upstream of
the propeller assembly.

Appellant partially relies upon the same arguments for this rejection
as they did for Rejection 1 (Br. 19), which, as explained supra, are
unconvincing.
Appellant then argues that there is no motivation to combine Karliner
and Rymal, for the reasons expressed on pages 18-22 of the Brief, which we
do not repeat here.
For the reason stated by the Examiner on pages 16-18 of the Answer,
we are not convinced by such argument. We add that "[a] reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The Examiner’s reference to Karliner’s teaching at column 6, lines 43-57 on
page 17 of the Answer adequately demonstrates that one skilled in the art
would not have been discouraged from following the path set out in Rymal.
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Appellant then argues that the principle of operation of Karliner
would be destroyed if modified according to Rymal. Br. 21-22. For the
reasons stated by the Examiner on pages 17-18 of the Answer, we are not
convinced by such argument. We add that it is well established that “it is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). In addition, “[c]ombining the teachings of references
does not involve an ability to combine their specific structures.” In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis in original).
In view of the above, we affirm Rejection 2.

Rejection 3
Appellant partially relies upon the same arguments for this rejection
as they did for Rejection 1 (Br. 22), which, as explained supra, are
unconvincing of error.
Appellant then argues that there is no motivation to combine Karliner
and Aulniers because to do so would destroy the principle of operation of
Karliner, for the reasons expressed on page 23 of the Brief, which we do not
repeat here. However, Appellant’s argument on page 23 of the Brief does
not address the Examiner’s rejection as set forth on page 8 of the Answer.
The § 103(a) rejection on appeal is based on Karliner in combination with
Aulniers. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (the test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art). Appellant does not explain, in
any detail, why the Examiner's conclusion of obviousness, which is based on
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the combined teachings is in error. In this context, we agree with the
Examiner’s response to Appellant’s arguments on pages 18-19 of the
Answer.
In view of the above, we affirm Rejection 3.

Rejection 4
Appellant partially relies upon the same arguments for this rejection
as they did for Rejection 1 (Br. 23-24), which, as explained supra, is
unconvincing of error.
Appellant then argues that there is no motivation to combine Karliner
as evidenced by Lapworth, and also as evidenced by the definition of "hull"
from the Merriam-Webster online Dictionary, because to do so would have
destroyed the principle of operation of Karliner, for the reasons expressed on
pages 24-25 of the Brief, which we do not repeat here. However,
Appellant’s response does not address the Examiner’s rejection as set forth
on pages 10-11 of the Answer. Appellant does not explain, in any detail,
why the Examiner's conclusion of obviousness, which is based on Karliner
as evidenced by Lapworth, and also as evidenced by the definition of "hull"
from the Merriam-Webster online Dictionary, is in error. In this context, we
agree with the Examiner’s response to Appellant’s arguments on pages 19-
20 of the Answer.
In view of the above, we affirm Rejection 4.

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Rejection 5
Appellant partially relies upon the same arguments for this rejection
as they did for Rejection 1 (Br. 25), which, as explained supra, are
unconvincing.
Appellant then argues that the combination of Karliner and Stuart
would require prohibited modification for either of these references for the
reasons expressed on pages 25-26 of the Brief, which we do not repeat here.
However, Appellant’s response on pages 25-26 of the Brief does not explain,
in any detail, why the Examiner's conclusion of obviousness, which is based
on the combined teachings of Karliner in view of Stuart is in error. In this
context, we agree with the Examiner’s response to Appellant’s arguments on
pages 20-21 of the Answer.
In view of the above, we affirm Rejection 5.

CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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