Ex Parte Berg

Board of Patent Appeals and Interferences

Sep 29, 2009

10454879 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORMAN O. BERG
____________

Appeal 2009-004994
Application 10/454,879
Technology Center 3600
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Decided: September 29, 2009
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Norman O. Berg (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final decision rejecting claims 2, 4, 5, 9, 10, 27, 28, 30-32,
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and 35-43.1 Claims 1, 3, 6-8, 11-24, 26, and 29 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention relates to apparatus for traversing
challenging terrain with a recreational vehicle. Spec. 2:12-14. Claims 9 and
38, reproduced below, are representative of the subject matter on appeal.
9. An all terrain vehicle comprising:
a chassis including a front portion and a rear
portion;
a first front wheel coupled to the front portion of
the chassis by a first front suspension;
a first front tire coupled to the first front wheel;
a second front wheel coupled to the front portion
of the chassis by a second front suspension;
a second front tire coupled to the second front
wheel;
a seat attached to the chassis between the front and
rear portions of the chassis; and
a shell attached to the rear portion of the chassis,
the shell defining a sealed cavity and including an outer surface
including an upper portion having a depression formed therein;

1 In the Status of Claims, the Appellant lists claims 25, 33, and 34 as
objected to, and as appealed; however, the Appellant fails to present any
arguments concerning claims 25, 33, and 34. App. Br. 2, passim. As such,
the objection to these claims is not before us for our review.
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the sealed cavity isolated from the seat and the first
and second front tires and having a portion extending above the
rear portion of the chassis; and
almost an entirety of the sealed cavity being
confined to a zone defined by the rear portion of the chassis.

38. An all-terrain vehicle, comprising:
a chassis;
at least two ground engaging members to support a
first end portion of the vehicle relative to the ground; each
ground engaging member being coupled to the chassis and
having a surface adapted to engage the ground;
at least a third ground engaging member to support
a second end portion of the vehicle relative to the ground; the
third ground engaging member being coupled to the chassis and
having a surface adapted to engage the ground; and
a seat disposed between the first end portion of the
vehicle and the second end portion of the vehicle;
wherein one of the first end portion and the second
end portion includes a sealed enclosed space associated with
each respective ground engaging member which provides
generally an entire buoyancy force associated with the
respective end portion of the vehicle when the vehicle is
partially immersed in a fluid and the other of the first end
portion and the second end portion includes a separate sealed
enclosed space not associated with the respective ground
engaging member or ground engaging members which provides
generally an entire buoyancy force associated with the
respective end portion of the vehicle when the vehicle is
partially immersed in the fluid.

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THE EVIDENCE
The Examiner relies upon the following evidence:
Smith US 4,893,692 Jan. 16, 1990
Doyon US 5,400,734 Mar. 28, 1995

THE REJECTIONS
The Appellant seeks review of the following rejections by the
Examiner:
1. Rejection of claims 38-42 under 35 U.S.C. § 102(b) as anticipated by
Smith.
2. Rejection of claims 2, 4, 5, 9, 10, 27, 28, 30-32, and 35-43 under
35 U.S.C. § 103(a) as unpatentable over Smith and Doyon.

ISSUES
The Appellant argues that the Examiner erred in finding that Smith
discloses skis that provide generally an entire buoyancy force associated
with the first end portion, as called for in claim 38. App. Br. 6.
The first issue before us is:
Has the Appellant shown the Examiner erred in finding that the skis of
Smith provide generally an entire buoyancy force associated with the first
end portion of the snowmobile?
The Examiner found that Doyon discloses the elements of claims 9
and 28 including a shell that displaces water. Ans. 4. The Examiner further
found Doyon does not disclose the particular configuration of the rear shell
cavity portion. Ans. 4, 8. The Examiner found that Smith discloses a shell
that is a sealed cavity with a depression in the upper portion of the outer
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surface that provides a buoyancy force that permits the vehicle to float high
in the water. Ans. 4, 8. The Examiner concluded it would have been
obvious to replace the open top shell of Doyon with a sealed cavity with a
depression in the upper surface as taught by Smith, in order to provide
increased buoyancy. Ans. 4-5. The Examiner elaborated that “it is known
in the art that a sealed object (like a pontoon or closed shell body portion,
like that taught by Smith buoyant objects) obviously have a greater
buoyancy force acting on it than an open object when being submersed into
water and would obviously further eliminate the chance for water to gather
in a depression formed by an open shell.” Ans. 8.
The Appellant argues the Examiner has not provided a sufficient
reason to combine the references. App. Br. 9, 11; Reply Br. 7.
The second issue before us is:
Has the Appellant demonstrated that the Examiner failed to provide a
sufficient reason with a rational underpinning to explain why one having
ordinary skill in the art would have modified Doyon’s vehicle by replacing
the open top shell of Doyon with a sealed cavity as disclosed by Smith?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellant’s Specification does not provide a lexicographic
definition of the phrase “generally an entire buoyancy force,” or
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any of the terms within that phrase, as used in claim 38. Spec.
passim.
2. The word “generally” is commonly understood to mean “for the
most part.” THE AMERICAN HERITAGE DICTIONARY (2d College
ed. 1982) (“generally,” adverb, definition 2b).
3. The word “entire” is commonly understood to mean “the entire
amount or extent: the whole.” THE AMERICAN HERITAGE
DICTIONARY (2d College ed. 1982) (“entire,” noun, definition 2).
4. Smith discloses a personal snowmobile 10, capable of floating on
water and supporting a rider out of the water, comprised of a
molded elongated body 14 of rigid plastic material (skin S) filled
with an expanded closed cellular floatable material C providing
floatation (as it is lighter than water). Smith, col. 1, ll. 6-8, 37-38,
49-51; col. 2, ll. 39-40; col. 4, ll. 7-8. Various parts of the body are
increased in volume to provide greater buoyancy, such as: the area
of the engine compartment surrounding the engine recess, and the
area of the cargo support section, and the sidewalls 74 and 76. Id.
at col. 2, ll. 10-14; col. 4, ll. 10-16; figs. 1, 2.
5. Smith discloses a pair of skis 22 may be mounted under the engine
compartment 18. Skis 22 are of similar construction to the vehicle
body, comprised of plastic shells containing expanded foam core
C. Smith, col. 3, ll. 56-62; figs. 1, 2.
6. Smith does not explicitly recite the volume of the vehicle body 14
as compared to the skis 22. Smith, passim.
7. Figure 2 of Smith is a side elevation, partial cross-sectional view.
Smith, col. 2, ll. 26-27; fig. 2.
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8. Doyon discloses an amphibious vehicle 20 with a buoyant chassis
22 designed so that even when fully loaded, the vehicle will float
with the water at an intermediate height and cockpit 26 out of the
water. Doyon, col. 1, ll. 43-46; col. 2, ll. 44-47; col. 4, ll. 6-13;
figs. 1-3, 11.
9. Doyon depicts an alternate embodiment, vehicle 20’, with a cargo
bed on the back part of the vehicle above the rear track, depicted as
floating with the waterline mid-height on the cargo bed. The cargo
bed appears to be open at the top, with the top of the walls above
the waterline so that buoyancy is produced by water displacement.
Doyon, fig. 15.

ANALYSIS
Claim Construction
Before addressing the issue presented, we must first construe the
phrase “generally an entire buoyancy force” as used in the claims. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Independent claim 38 contains the limitation that the two ground
engaging members of the first end portion provide “generally an entire
buoyancy force,” for the first end portion. The Appellant’s Specification
describes the first buoyancy force FB as disposed on the front side of a
centroid 670 of vehicle 600, and describes an embodiment where the front
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tires provide the front buoyancy force. Spec. 10:8-10; fig. 10. The
Appellant’s Specification does not describe any other portions of the vehicle
providing this first buoyancy force. Spec. passim.
The Appellant’s Specification does not provide a lexicographical
definition for the phrase “generally an entire buoyancy force,” or any of the
terms within that phrase (Fact 1). The term “generally” is commonly
understood to mean “for the most part,” and “entire” is commonly
understood to mean “the whole” (Facts 2, 3). This suggests “generally an
entire buoyancy force” is commonly understood to mean a force that for the
most part, provides the whole buoyancy force, or, in other words, nearly all
of the buoyancy force.
The Federal Circuit has interpreted “generally parallel” to broaden the
claim from parallel to include some amount of deviation from exactly
parallel. Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d
1298, 1311 (Fed.Cir. 2003) (“Because the claim language itself expressly
ties the adverb ‘generally’ to the adjective ‘parallel,’ the ordinary meaning
of the phrase ‘generally parallel’ envisions some amount of deviation from
exactly parallel.”). Similarly, “generally flat” included configurations that
are not perfectly flat. Schoell v. Regal Marine Industries, Inc., 247 F. 3d
1202, 1208 (Fed. Cir. 2001) (noting that “generally” means “mostly” and
interpreting “generally flat” as embracing configurations not perfectly flat).
With this guidance in mind, we look to the construe the claim.
The claim does not require the ground engaging members to provide
all of the buoyancy force because “generally an entire buoyancy force”
allows for some small deviation from providing the entire buoyancy force.
Further, “generally” does not modify the buoyancy force, but rather more
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narrowly, “generally” modifies “entire.” By comparison, if “generally the
buoyancy force” would require most of the buoyancy force, then “generally
an entire buoyancy force” requires a larger percentage of force than most of
the force. Further supporting this interpretation, the Appellant’s
Specification does not describe any other portion of the device as providing
buoyancy force to the first end portion. Giving the claim the broadest
reasonable interpretation consistent with the Specification, a person of
ordinary skill in the art would interpret the claim to require the two ground
engaging members of the first end portion to provide nearly all of the
buoyancy force of the first end portion.

Rejection of claims 38-42 under 35 U.S.C. § 102(b) as anticipated by Smith
Smith discloses a personal snowmobile capable of floating on water
and supporting a rider out of the water comprised of a molded elongated
body (shell) filled with material to provide flotation (foam) (Fact 4). Smith
discloses that skis mounted under the front end of the snowmobile are also
designed as foam-filled shells (Fact 5). Smith does not explicitly disclose
the volume of foam in the skis or the volume of foam in the front portion of
the snowmobile body (Fact 6). The Examiner places excessive weight on
Figure 2 of Smith. See Ans. 6. This side elevation, two-dimensional view
ignores the three-dimensional aspect of the vehicle (see e.g. figs. 1 and 3),
and should not be considered in isolation (Fact 7). Based on Smith’s
disclosure as a whole, we cannot find by a preponderance of the evidence
that Smith’s skis provide nearly all of the buoyancy force provided to the
front end of the vehicle.
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Smith does not disclose two ground engaging members of the first end
portion (skis) that provide “generally an entire buoyancy force” to the first
end portion. Because Smith does not disclose every limitation of the claim,
Smith does not anticipate claim 38. We also reverse the rejection of claims
39-43 by virtue of their dependence from claim 38.

Rejection of claims 2, 4, 5, 9, 10, 27, 28, 30-32, and 35-43 under 35 U.S.C.
§ 103(a) as unpatentable over Smith and Doyon
Independent claims 9 and 28 each calls for a vehicle including a shell
that defines a sealed cavity.
The Appellant argues that the Examiner has not provided a sufficient
reason to combine the references. App. Br. 9, 11; Reply Br. 7. We look first
to the scope and content of the references, and then evaluate the Examiner’s
rationale.
Doyon discloses an amphibious vehicle with a buoyant chassis for the
water displacement of the vehicle so that the vehicle floats with the water at
roughly mid-height on the shell (Fact 8). Doyon’s shell, which is open at the
top, creates buoyancy force because the weight of the volume of water
displaced by the shell is greater than the weight of the shell (Fact 9). Smith
discloses a vehicle body may be constructed of a sealed skin filled with
expanded foam so that it floats high in the water (Fact 4).
We agree with the Appellant that the rationale provide by the
Examiner is insufficient to explain why a person of ordinary skill modify
Doyon’s open top shell with the sealed skin of Smith. First, the Examiner’s
rationale that replacing the shell of Doyon with a sealed cavity as taught by
Smith would provide increased buoyancy is not supported by the references.
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Buoyancy force is a function of the volume of water displaced and the
weight of the device that is displacing the water. The rejection does not
mention a change to the volume of the shell of Doyon when it is modified to
be a sealed cavity as disclosed by Smith, nor does the rejection address the
weight of the shell as compared to the weight of the sealed cavity. Ans.
passim. The Examiner has thus failed to provide evidence to support his
finding that Smith’s sealed cavity will produce a greater buoyancy force than
Doyon’s shell. Further, the Examiner has pointed to no disclosure of Doyon
suggesting additional buoyancy force is needed.
The Examiner’s second rationale is quite similar, and also does not
support a conclusion of obviousness. The Examiner stated that it is known
in the art that a closed object produces greater buoyancy than an open object
when both are submerged in water. Ans. 8. This rationale is irrelevant as
Doyon’s apparatus floats so that the cargo bed is above the waterline (i.e. is
not submerged) (Fact 9).
Absent hindsight, we see no reason, and the Examiner has not
provided an adequate articulation of a reason, why a person of ordinary skill
in the art would have been led to replace the shell of Doyon with the sealed
cavity vehicle body of Smith. The Appellant has demonstrated the
Examiner erred in the rejection of claims 9 and 28. We also cannot sustain
the rejection of claims 2, 4, 5, 10, 25, and 36 by virtue of their dependence
from claim 9 or the rejection of claims 30-32, 35, and 37 by virtue of their
dependence from claim 28.
Claims 38-43
As we determined in the analysis of the rejection of claim 38 as
anticipated by Smith, supra, Smith does not disclose two ground engaging
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members of the first end portion (skis) that provide nearly all of the
buoyancy force to the first end portion. Because the Examiner’s conclusion
of obviousness is based on an underlying erroneous finding of fact, the
Appellant has demonstrated the Examiner erred in the rejection of claim 38.
The rejection of claims 39-43 is also in error by virtue of their dependence
from claim 38.

CONCLUSIONS
The Appellant has shown the Examiner erred in finding that the skis
of Smith provide generally an entire buoyancy force associated with the first
end portion.
The Appellant has shown that the Examiner provided an insufficient
rationale to combine the teachings of Doyon and Smith to result in the
claimed invention.

DECISION
We REVERSE the Examiner’s decision to reject claims 2, 4, 5, 9, 10,
27, 28, 30-32, and 35-43.

REVERSED

Vsh

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