Ex Parte Baruh

Patent Trial and Appeal Board

Sep 17, 2014

11788785 (P.T.A.B. Sep. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRADFORD G. BARUH
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Appeal 2012-006716
Application 11/788,785
Technology Center 3600
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Before SALLY G. LANE, JOHN G. NEW, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant files this appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 27–35 under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement. Claims 1–26 were
previously canceled. Appellant also seeks review of the Examiner’s
objection to the drawings under 37 C.F.R. § 1.83(a) for failing to disclose
every feature of the invention specified in the claims, and from the
Examiner’s objection to the Specification as failing to provide proper
antecedent basis for the claimed subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
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We affirm.
Claimed Subject Matter
The claims are directed to a sailboat with a foresail beam and foresail
track that allows for adjusting the location and position of the foresail on the
sailboat. App. Br. 2 and Claims Appendix – 1. Claim 27, reproduced
below, is representative:
27. A sailboat comprising:
a hull;
a mast;
a plurality of sails, wherein at least one of the plurality of sails
is a foresail; and
a system for sailing windward comprising:
a foresail beam attached to the mast of a sailboat at a
mast end of the foresail beam and receives a leading edge
of the foresail at a bow end of the foresail beam; and
a foresail track system, which extends from a starboard
side to a port side of the sailboat and assists the foresail
beam in movement from side to side.

ISSUE
The issue presented on appeal is whether the Specification describes a
foresail beam that “receives a leading edge of the foresail at a bow end of the
foresail beam,” as recited in claim 27. The resolution of this issue is
determinative of the objections to the Specification and drawings.

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Application 11/788,785
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ANALYSIS
Rejection of Claims 27–35 Under 35 U.S.C. § 112, First Paragraph
(Written Description)
Appellant’s Appeal Brief and the Examiner’s Answer focus on
different aspects of the limitation requiring that the foresail beam “receives a
leading edge of the foresail at the bow end of the foresail beam.” Appellant
essentially argues that one of ordinary skill in the art would recognize that it
must be the leading edge of the foresail that is received by the foresail beam,
in light of the “objectives of the invention.” App. Br. 6. The Examiner’s
rejection, however, is based on a lack of descriptive support for the foresail
beam to “receive[]” the foresail, not which edge it receives. See Ans. 6. We
agree with the Examiner that the Specification does not describe a foresail
beam that “receives” a leading edge of the foresail as recited in amended
claim 27.
In the Final Rejection dated March 10, 2011, the Examiner
emphasized that the newly amended claim 27 lacked written description
support because it recited a foresail beam “receiving a leading edge of the
foresail” at a bow end of the foresail beam. Final Rej. 3. The Examiner
went on, however, to explain that the Specification “only discloses that the
foresail is attached to the forestay.” Id. The forestay, in turn, is attached to
the foresail beam. Id. “Nowhere does the specification disclose that a
leading edge of the foresail, or any other portion of the foresail, is received
at a bow end of the foresail beam.” Id.
Appellant’s citations to the Specification support the Examiner’s
position that the foresail is described as being secured along its leading edge
to the forestay, and not directly to the foresail beam. See, e.g., Spec. ¶¶ 40,
42, 48. Appellant points out that the Specification in one instance describes
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that “the foresail 40 can be attached to a track system 100” as shown in
Figure 2, Spec. ¶ 42, and that original claim 10 similarly recited that “the
leading edge of the foresail is attached to the track fixture.” App. Br. 7.
Attachment to the track system in one embodiment does not address whether
the foresail beam is described as receiving the foresail, as recited in claim
27.
The Examiner found that the Specification “discloses that the foresail
is secured along its leading edge to the forestay, and that the forestay itself is
received at the bow end of the foresail beam.” Ans. 7. The Examiner also
describes a conventional arrangement in which a foresail beam is provided,
and describes the foresail beam (or boom) as “a horizontal pole that is
attached near the base of the mast and extends along a lower edge of the
foresail.” Id. Thus, the Examiner appears to agree with Appellants that the
Specification would convey to one of ordinary skill in the art that at least the
lower portion of the leading edge, rather than the trailing edge, of the
foresail is relatively aligned with the bow end of the foresail beam, as
opposed to the mast end. The claim, however, recites that the foresail beam
“receives” a leading edge of the foresail at a bow end of the foresail beam.
We do not agree with Appellant that the term “receives” only “recites a
relative position of the bow end of the foresail beam to the leading edge of
the foresail.” Reply Br. 4. We agree with Appellant to some extent that “the
term ‘receives a leading edge’ does not limit or define an exact location or
position of the leading edge of the foresail,” id., because the leading edge
need only be received “at a bow end” of the foresail beam and not at a
precise location along the bow end of the foresail beam. It is still the
foresail beam that “receives” the foresail, however, and in the context of
claim 27, the term “receives” indicates that the bow end of the foresail beam
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has some shape or structure for grasping or attaching to the leading edge of
the foresail. A mere indirect connection of the foresail and foresail beam via
the forestay as described in the Specification is insufficient to describe the
foresail beam as receiving the foresail.
The Examiner found that one of ordinary skill in the art would
understand that a forestay commonly extends beyond the lower corner of the
foresail, and that the foresail could be slideably engaged with the forestay
using hooks or rings. Ans. 6. In such arrangements, which are consistent
with and not precluded by Appellant’s Specification, the lower corner of the
leading edge of the foresail could be spaced a significant distance away from
the foresail beam. The Examiner found that one of ordinary skill in the art
would, therefore, not interpret the Specification’s description of the foresail
being attached to the forestay and the forestay attached to the bow end of the
foresail beam to implicitly describe the foresail beam as “receiv[ing]” the
leading edge of the foresail. See id. at 6–7. Although Appellant’s disclosure
may support a claim broad enough to encompass a foresail beam that
“receives” the leading edge of the foresail, the claim may not recite such a
feature that is not described.
For the foregoing reasons, we affirm the Examiner’s rejection of
claim 27 under 35 U.S.C. § 112, first paragraph, for failing to comply with
the written description requirement. Dependent claims 28–35 all depend,
directly or indirectly, upon claim 27 and are not argued separately by
Appellant. We, therefore, affirm the rejection of dependent claims 28–35
for the same reasons.
Objections to the Specification and Drawings
Although objections are generally petitionable, and not appealable,
objections that are involved in a rejection of claims to be reviewed on appeal
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may be considered by the Board. See 37 C.F.R. 1.113(a) (2011) (“Petition
may be taken to the Director in the case of objections or requirements not
involved in the rejection of any claim (§ 1.181).” (emphasis added)); Ex
Parte Frye, No. 2013-001300 (PTAB June 11, 2013), available at http://e-
foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013001300-06-
11-2013-1. Here, the objections are related to the Examiner’s rejection on
written description grounds. We affirm the objections for the same reasons
that we affirm the rejection of claims 27–35.

DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence, we affirm the
Examiner’s decision to reject claims 27–35. We also affirm the Examiner’s
related objections to the Specification and drawings.
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)(iv) (2011).

AFFIRMED

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