Ex Parte Bernloehr et al

Patent Trial and Appeal Board

Feb 29, 2016

13292147 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/292,147 11/09/2011
53609 7590 03/02/2016
REINHART BOERNER VAN DEUREN P,C
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Darrel A. Bernloehr
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
507630-CON 5135
EXAMINER
WIEST, ANTHONY D
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
03/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREL A. BERNLOEHR, GREGORY PAUL BEAMER, and
DAVID M. SAMEK
Appeal2013-005846
Application 13/292, 147
Technology Center 3600
Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darrel A. Bemloehr et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting 3, 6-8, 10, 17, 19, 20, and
25-39, which are all the pending claims. Appeal Br. 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the real party in interest is Johnson Outdoors
Inc. Appeal Br. 2.
Appeal2013-005846
Application 13/292,147
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "generally relates to anchors for
watercraft and more particularly to anchors used in shallow water
conditions." Spec. i12. Claims 3, 6, 10, 17, 25, and 33 are independent.
Claims 3 and 25, reproduced below with emphasis added, are illustrative of
the subject matter on appeal.
3. A shallow water anchor for a watercraft, comprising:
a first anchor;
a mount operably mounting the first anchor to the
watercraft, the first anchor movable relative to the mount from
a retracted position to an extended position, and from an
extended position to a retracted position;
a remote control including a user interface and a
transmitter arrangement for communicating with the first
anchor; and
wherein actuation of at least one control of the user
interface sends a control signal from the transmitter
arrangement to the first anchor to transition the first anchor
from at least one of the retracted pos1t10n to the extended
position and from the extended position to the retracted
position; and
wherein the control is a depressible button and the
actuation is more than one depression of said button in
succession.
25. A shallow water anchor system for a watercraft,
compnsmg:
a plurality of shallow water anchors, each including a
receiver;
a remote control including a transmitter arrangement; and
wherein the transmitter arrangement is configured to pair
with each one of the receivers of the plurality of shallow water
anchors to control each one of the plurality of shallow water
anchors independently.
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Application 13/292,147
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Oliverio us 6,041,730 Mar. 28, 2000
Brianza US 7,104,212 B2 Sept. 12, 2006
Matthews US 7, 186,002 B2 Mar. 6, 2007
Salmon US 2009/0037040 Al Feb. 5,2009
Bemloehr US 2011/0209656 Al Sept. 1, 2011
REJECTIONS
The following rejections are before us for review: 2
I. Claims 3, 6-8, 10, 17, 19, 20, and 25-39 stand provisionally
rejected on the basis of obviousness-type double patenting as
being unpatentable over claims 1-11 ofthen-copending U.S.
Patent Application No. 12/714,588. Final Act. 3.
II. Claims 3, 6-8, 10, and 17, 19, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Oliverio,
Brianza, and Salmon. Id. at 4--5.
III. Claims 25-39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Salmon and Matthews. Id. at 6-7.
2 We note that the Examiner included claim 18 in Rejections I and II.
See Final Act. 3-5. Claim 18 has been canceled. Appeal Br. 2. We treat
this discrepancy as an inadvertent and harmless error for purposes of the
present appeal.
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Application 13/292,147
ANALYSIS
Rejection I - Claims 3, 6-8, 10, 17, 19, 20, and 25-39 as provisionally
unpatentable based on obviousness-type double patenting
The Examiner provisionally rejected claims 3, 6-8, 10, 17, 19, 20, and
25-39 on the basis of obviousness-type double patenting as being
unpatentable over then-copending claims 1-11 of U.S. Patent Application
No. 12/714,588 ("the '588 application"). Final Act. 3. Appellants present
no argument against this provisional rejection, submitting instead that we
need not reach it. Appeal Br. 15; see also Reply Br. 15. We agree with
Appellants.
The '588 application has since issued as U.S. Patent No. 8,776,712 B2
on July 15, 2014. Because the circumstances surrounding the claims of the
'588 application have changed since the presentation of the provisional
obviousness-type double patenting rejection in the instant application, we
decline to reach this undisputed provisional rejection. See Ex parte Moncla,
95 USPQ2d 1884 (BP AI 2010) (precedential).
Rejection II - Claims 3, 6-8, 10, and 17, 19, and 20 as unpatentable
over Oliverio, Brianza, and Salmon
Claims 3. 17. 19. and 20
Appellants present argument against the rejection of these claims
together, where the claims all require actuation of an anchor control by
depressing a button multiple times "in succession." See Appeal Br. 6-9;
Reply Br. 6-8. In particular, independent claim 3 recites, in relevant part, an
anchor with a remote control, wherein actuation of the control, which is a
depressible button, transitions the anchor between extended and retracted
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Application 13/292,147
positions, and where "the actuation is more than one depression of said
button in succession." Appeal Br., Claims App. (emphasis added).
Similarly, independent claim 17 recites, in relevant part, a method for
controlling an anchor system that includes actuating a control of a remote
control of the anchor system to change the position of an anchor, where the
actuating step "includes depressing a button of the remote control multiple
times in succession." Id. Appellants argue that the cited references relied on
in the rejection do not teach or suggest this feature of actuation by
depressing a button multiple times "in succession." See Appeal Br. 6-9;
Reply Br. 6-8. We agree with Appellants.
In rejecting these claims, the Examiner found that Oliverio, Brianza,
and Salmon each teaches a control for a marine device, but the Examiner did
not establish any factual finding regarding a teaching of actuation of the
control. See Final Act. 4--5. Upon review of the record before us, we agree
with Appellants that the cited references of Oliverio, Brianza, and Salmon
do not teach that actuation of the control would involve any more than a
single press of the button, while the claims specifically require multiple
button presses "in succession," as discussed above. See Appeal Br. 6-7.
In response to Appellants' arguments on this point, the Examiner
states, without providing evidentiary support, that "[t]he buttons of the prior
art are capable of being pressed multiple times in succession and causing an
actuation," and that "each of the remote devices of the prior art have buttons
and that if the button is pressed several times in succession an actuation will
occur." Ans. 4. However, rejections based on obviousness must rest on a
factual basis; in making such a rejection, the Examiner has the initial burden
of supplying the requisite factual basis and may not, because of doubts that
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Application 13/292,147
the invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Consequently, the lack of
sufficient evidentiary support from the cited references of Oliverio, Brianza,
and Salmon regarding actuation of the control is fatal to the rejection of
these claims.
We also note that the Examiner states for the first time in the Answer
that Matthews teaches actuation of a flashlight control involving multiple
depressions of a button in succession. Ans. 4. Although this statement
appears to be accurate, Appellants are correct to point out that teachings
from Matthews are not germane to the rejection of record, which does not
include Matthews, and from which the present appeal is taken. Reply
Br. 7-8. We further note that the Patent Trial and Appeal Board is a place
for appellate review of rejections, rather than a place for initial examination,
and we therefore decline to make a determination of what one of ordinary
skill in the art may conclude based on teachings from a reference that is not
part of the rejection before us for review.
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that a combination of Oliverio, Brianza,
and Salmon teaches actuation of an anchor control by depressing a button
multiple times "in succession," as recited in the claims. See Appeal Br. 6-9;
Reply Br. 6-8.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we cannot sustain the rejection of claims 3, 17, 19, and 20 as being
unpatentable over Oliverio, Brianza, and Salmon.
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Application 13/292,147
Claims 6-8
Appellants present argument against the rejection of these claims
together, where the claims all require an input signal generated by a
proximity sensor. See Appeal Br. 9--11; Reply Br. 8-10. In particular,
independent claim 6 recites, in relevant part, an anchor control interface with
a receiver that is configured to receive a first signal that corresponds to a
retracted position of the anchor, where "the first signal is generated by a
proximity sensor configured to detect when a portion of the anchor is in
proximity therewith." Appeal Br., Claims App. (emphasis added).
Appellants argue that the cited references relied on in the rejection do not
teach or suggest this feature of a proximity sensor for generating a signal
that corresponds to a retracted position of the anchor. See Appeal Br. 9--11;
Reply Br. 8-10. We agree with Appellants.
In rejecting these claims, the Examiner found that Oliverio teaches
load sensing means 62 that is used to stop downward motion of anchor/pole
24 when significant resistance to further motion is encountered, such as
when the lower end of anchor/pole 24 engages a hard bottom. Final Act. 4
(citing Oliverio, col. 4, 11. 12-28). The Examiner also made the general
statement that "proximity sensors, Hall effect sensors, and count signal
indicators for motor revolutions are ... well known in the control and
mechanical arts," but did not explain any modification to the teachings of the
cited references that might be made based on such a general statement. Id.
at 5. Upon review of the record before us, we agree with Appellants that
Oliverio's load sensing means 62 does not detect when a portion of the
anchor is in proximity therewith, but instead detects when the anchor has
contacted an obstruction. Appeal Br. 9--10.
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Application 13/292,147
In response to Appellants' arguments on this point, the Examiner
states that "a 'load sensing means' can be broadly interpreted as a proximity
sensor." Ans. 5. Initially, we agree with Appellants that such an
interpretation is an overreach of Oliverio's teaching regarding load sensing
means 62, which detects resistance to motion of anchor/pole 24 during the
anchoring process, such as when the anchor contacts a hard bottom. Reply
Br. 9. Moreover, even if such an interpretation were reasonable, the
evidence indicates that any detection made by load sensing means 62 would
correspond to an extended position of the anchor (as it is sensing load during
deployment of the anchor), whereas the claims require that the proximity
sensor detect proximity of the anchor therewith to generate a first signal
corresponding to a retracted position. See id. at 10.
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that a combination of Oliverio, Brianza,
and Salmon teaches generation by a proximity sensor of a first input signal
that corresponds to a retracted position of the anchor, as required by the
claims. See Appeal Br. 9-11; Reply Br. 8-10.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we cannot sustain the rejection of claims 6-8 as being unpatentable
over Oliverio, Brianza, and Salmon.
Claim 10
Independent claim 10 recites, in relevant part, an anchor control
interface with a receiver that is configured to receive a control signal from a
transmitter arrangement, where "the control interface is operably configured
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Application 13/292,147
to associate a unique control signal in a respective one-to-one relationship
with a plurality of remotes." Appeal Br., Claims App. (emphasis added).
Appellants argue that the cited references relied on in the rejection do not
teach or suggest this feature of "a unique control signal" in a "one-to-one
relationship" for each of a plurality of remotes. See Appeal Br. 11-12;
Reply Br. 10-11. We agree with Appellants.
In rejecting this claim, the Examiner found that Brianza teaches a
wireless remote control for an anchor and generally stated that "controlling a
plurality of anchors would be an obvious alteration of the device of Brianza
and well within the capabilities of one of ordinary skill in the art," but did
not assert that controlling a plurality of anchors would involve a unique
control signal in a one-to-one relationship for each remote as claimed. Final
Act. 5. The Examiner also found that Salmon teaches bidirectional wireless
controls for various marine devices, and explained that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify Oliverio's anchor system by controlling multiple anchors through
a "known wireless remote control transmitter/receiver arrangement as
disclosed by Salmon and Brianza to allow optimum functional control of the
shallow water anchoring system whereby the operator can control the
deployment and retraction of the anchors simultaneously or individually."
Id. Upon review of the record before us, we agree with Appellants that,
although Brianza and Salmon teach the general concept of control by
multiple remotes, the cited references fall short of teaching the specific
implementation of such control associating a unique signal in a one-to-one
relationship for each remote. Appeal Br. 11-12.
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Application 13/292,147
In response to Appellants' arguments on this point, the Examiner
clarifies that the rejection is based on Salmon's purported disclosure of "the
same functionality claimed," specifically referencing Salmon's embodiment
where "a device controller can be associated with multiple remote controls."
Ans. 6 (citing Salmon i-f 27). From our review of this cited portion of
Salmon, we agree with Appellants that Salmon teaches only that "its
controller can be associated with multiple remote controls," but "makes
absolutely no reference to the assigning of a unique control signal in a
respective one-to-one relationship to each one of the contemplated multiple
remote controls." Appeal Br. 12. In other words, Salmon's silence as to any
unique control signal being associated in a one-to-one relationship with a
plurality of remotes, as required by the claim, teaches no more detail than
that "a plurality of remotes could be associated with a device controller with
each remote utilizing the same signal frequency, and thus there would not be
a unique one-to-one relationship for each remote." Id.
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that a combination of Oliverio, Brianza,
and Salmon teaches association of "a unique control signal" in a "one-to-one
relationship" for each of a plurality of remotes, as recited in the claim. See
Appeal Br. 11-12; Reply Br. 10-11.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we cannot sustain the rejection of claim 10 as being unpatentable over
Oliverio, Brianza, and Salmon.
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Application 13/292,147
Rejection III- Claims 25-39 as unpatentable
over Salmon and Matthews
Appellants present argument against the rejection of these claims
together, where the claims all require multiple anchors that each include a
receiver. See Appeal Br. 14; Reply Br. 13-14. In particular, each of
independent claims 25 and 33 recites, in relevant part, an anchor system that
includes "a plurality of shallow water anchors, each including a receiver," a
remote control with a transmitter, where the transmitter is configured to pair
with each of the receivers. Appeal Br., Claims App (emphasis added).
Appellants argue that the cited references relied on in the rejection do not
teach or suggest this feature of an individual receiver included with each
anchor. See Appeal Br. 14; Reply Br. 13-14. We agree with Appellants.
In rejecting these claims, the Examiner found that Salmon teaches a
plurality of marine devices, such as anchors/downriggers 224, 226, "each of
which can include a transceiver and remote control including a transmitter."
Final Act. 6 (emphasis added). The Examiner also found that Salmon
teaches various control features for selectively controlling the plurality of
anchors/downriggers, including controlling each one individually or
simultaneously. Id. (citing Salmon i-fi-f 124, 127, 131-133). Upon review of
the record before us, we agree with Appellants that, although Salmon
teaches the general concept of various control over a plurality of anchors/
downriggers, the cited references fall short of teaching the specific
implementation of such control system including an individual receiver with
each anchor/downrigger. Appeal Br. 14.
In response to Appellants' arguments on this point, the Examiner
clarifies that the rejection is based on Salmon's purported disclosure of "a
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Application 13/292,147
remote control including a transmitter arrangement that is configured to pair
with each one of the receivers of a plurality of shallow water anchors."
Ans. 7 (citing Salmon, Figs. 9--13, i-fi-f 117-138). The Examiner also states
that Salmon's remote is capable of selecting a desired anchor/downrigger
and operating it independently of the others, or selecting all the anchors/
downriggers and operating them simultaneously. Id. From our review of
these cited portions of Salmon, even though we appreciate that Salmon may
teach similar functionality, we agree with Appellants that Salmon teaches
only "a common control unit 228 that is hard wired to each one of the
individual Salmon downriggers, and controls the operation thereof." Appeal
Br. 14. In other words, although Salmon discloses a common control
receiver 228 that works to control both anchors/downriggers 224, 226, the
Examiner does not identify, nor do we discern, where Salmon purportedly
discloses an individual receiver included with each anchor/downrigger. Id.;
Reply Br. 14.
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that a combination of Salmon and
Matthews teaches the structural arrangement of the plurality of anchors/
downriggers "each including a receiver," as recited in the claims. See
Appeal Br. 14; Reply Br. 13-14.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we cannot sustain the rejection of claims 25-39 as being unpatentable
over Salmon and Matthews.
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Application 13/292,147
DECISION
We REVERSE the Examiner's decision rejecting claims 3, 6-8, 10,
and 17, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over
Oliverio, Brianza, and Salmon.
We REVERSE the Examiner's decision rejecting claims 25-39 under
35 U.S.C. § 103(a) as being unpatentable over Salmon and Matthews.
REVERSED
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