Ex Parte Baylor

Board of Patent Appeals and Interferences

Jul 8, 2010

11109572 (B.P.A.I. Jul. 8, 2010)

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.
11/109,572 04/19/2005 Wesley Terran Baylor 3054 1078
7590 07/09/2010
WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
SUITE B
2372 S.E. BRISTOL STREET
NEWPORT BEACH, CA 92660-0755
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
07/09/2010 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 WESLEY TERRAN BAYLOR
____________

Appeal 2009-007575
Application 11/109,572
Technology Center 3600
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The 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 on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007575
Application 11/109,572

2
STATEMENT OF THE CASE
Wesley Terran Baylor (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1, 3-8, and 10-14
under 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Claims 2 and 9 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appellant's claimed invention is directed to a non-planing boat hull
wherein the hull forms a "teardrop shaped waterline defined by a plane curve
given by the formula y2 = x4(1-x)[,] where y is a beam axis, and x is a keel
axis." See Claims 1, 8.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
Independent claims 1 and 8 recite a boat hull having a teardrop shaped
waterline defined by a particular formula. The Examiner found that the
claimed teardrop equation was not described in the Specification as
originally filed in such a way as to reasonably convey to one skilled in the
art that the inventors had possession of the claimed invention at the time of
filing. Ans. 3. Appellant argues that figure 4, item 50, and the Specification
at page 6 describe the hull as having a teardrop-shaped waterline. Appeal
Br. 5. Appellant notes that the teardrop formula is well known, as
demonstrated by two references provided in the Evidence Appendix to
Appellant's Appeal Brief, and that line 50 in figure 4 "corresponds
identically to the referenced definition of a teardrop with a value of 'n' of
Appeal 2009-007575
Application 11/109,572

3
'4.'" Id. at 6. Appellant does not separately argue claims 3-7 or 10-14,
which stand or fall with claims 1 and 8. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Therefore, the issue on appeal is whether the Specification, as originally
filed, fulfills the written description requirement of 35 U.S.C. § 112, first
paragraph, for the limitation in claims 1 and 8 of a "teardrop shaped
waterline defined by a plane curve given by the formula y2 = x4(1-x)[,]
where y is a beam axis, and x is a keel axis."

PRINCIPLES OF LAW
"[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
This test "requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art."
Id. "Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Id. This inquiry is a question of fact. Id.
(citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985)).

ANALYSIS
Appellant argues that line 50 "corresponds identically" to an n=4
teardrop curve2, such as depicted in the www.2dcurves.com reference

2 The parametric equation for a teardrop curve is:
x = cos(t); y = sin(t)sinn-1(t/2). See Evidence Appendix to Appeal Brief.
Appeal 2009-007575
Application 11/109,572

4
provided by Appellant. Appeal Br. 6; see also id. at Evidence Appendix.
However, as pointed out by the Examiner, the stern portion of line 50 in
figure 4 has a significant flat portion, whereas an n=4 teardrop curve does
not have a flat portion. See Ans. 4; see also Evidence Appendix to
Appellant's Appeal Brief (noting the Wolfram MathWorld reference,
depicting curves representing values of n from 0 to 7, each without a flat
portion). Thus, Appellant's assertion that line 50 is an n=4 teardrop curve is
incorrect.
Furthermore, the Examiner notes that there is no indication that figure
4 is drawn to scale. Ans. 4. In addition, the Examiner adds that variations in
parameter n provide different curves, and that the n=4 curve very closely
resembles the n=6 and n=2 curves provided by Appellant in the Evidence
Appendix. Id. Thus, line 50 in figure 4 could just as easily be said to
represent, for example, an n=5 curve (notwithstanding the flat portion that
automatically prevents it from being an n=5 teardrop curve).
Appellant has provided no evidence that one of ordinary skill in the
art would understand that line 50, or any other section of the hull described
in the Specification, is defined by a particular mathematical equation.
Appellant has argued that "teardrop" is well known in the "mathematical
arts," but not the present field of endeavor. Appeal Br. 7. Given that the
word "teardrop" has a common, lay meaning3, it is not clear that one of
ordinary skill would understand "teardrop" to specifically refer to a precise
family of mathematical curves, much less a particular curve (n=4) from this

3 "teardrop," meaning "1. A single tear. 2. A tear-shaped object." The
American Heritage Dictionary of the English Language (2007) (retrieved
from http://www.credoreference.com/entry/hmdictenglang/teardrop) (last
viewed Jun. 30, 2010).
Appeal 2009-007575
Application 11/109,572

5
family of mathematical curves, as opposed to a general shape. Thus, we do
not find that the "four corners of the specification from the perspective of a
person of ordinary skill in the art" describes a hull defined by a teardrop
curve defined by the particular mathematical equation recited in claim 1.

CONCLUSION
The Specification, as originally filed, does not fulfill the written
description requirement of 35 U.S.C. § 112, first paragraph, for the
limitation in claim 1 of a "teardrop shaped waterline defined by a plane
curve given by the formula y2 = x4(1-x)[,] where y is a beam axis, and x is a
keel axis." Therefore, we sustain the Examiner's rejection of claims 1 and 8
as lacking written description, and of claims 3-7 and 10-14, which fall with
claim 1.

DECISION
We affirm the Examiner's decision as to claims 1, 3-8, and 10-14. 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) (2007).

AFFIRMED

Appeal 2009-007575
Application 11/109,572

6
hh

WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
SUITE B
2372 S.E. BRISTOL STREET
NEWPORT BEACH, CA 92660-0755