Ex Parte Bouyoucos

Board of Patent Appeals and Interferences

Mar 19, 2003

09594532 (B.P.A.I. Mar. 19, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN V. BOUYOUCOS
____________
Appeal No. 2002-2194
Application No. 09/594,532
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 9,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/594,532
Page 2
BACKGROUND
The appellant's invention relates to a towed acoustic source array of marine
sources such as vibrator sources and is especially suitable for use as a towed
geophysical array for underwater geophysical exploration applications (specification, p.
1). A copy of the claims under appeal is set forth in the appendix to the appellant's
brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Lefebvre 3,469,551 Sept. 30, 1969
Spink et al. 3,560,912 Feb. 2, 1971
(Spink)
Chaverebiere de Sal et al. 3,987,745 Oct. 26, 1976
(Chaverebiere de Sal)
Bjerkoy 5,157,636 Oct. 20, 1992
Elholm 5,532,975 July 2, 1996
Deplante et al. 5,784,335 July 21, 1998
(Deplante)
Claims 1, 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Spink in view of Elholm and Lefebvre.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over Spink
in view of Elholm and Lefebvre and Deplante.
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Application No. 09/594,532
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Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over Spink
in view of Elholm and Lefebvre and Bjerkoy.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Spink in view of Elholm and Lefebvre and Chaverebiere de Sal.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Spink in view of Lefebvre and Chaverebiere de Sal.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the first
Office action (Paper No. 3, mailed June 4, 2001) and the answer (Paper No. 12, mailed
April 10, 2002) for the examiner's complete reasoning in support of the rejections, and
to the brief (Paper No. 11, filed March 25, 2002) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
Appeal No. 2002-2194
Application No. 09/594,532
Page 4
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 9 under 35 U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
All the claims under appeal recite a towed array system comprising, inter alia, a
plurality of tow bodies having positive buoyancy. In all the rejections before us in this
appeal the examiner ascertained that the towed vehicle system of Spink lacked both
positive buoyancy and a plurality of tow bodies. The examiner then concluded that it
would have been obvious to one of ordinary skill in the art at the time of the invention to
have modified (1) the towed vehicle of Spink to have positive buoyancy based upon the
positive buoyancy of Lefebvre's tow buoy and (2) the towed vehicle system of Spink to
Appeal No. 2002-2194
Application No. 09/594,532
Page 5
1 U.S. Patent No. 3,434,446 to Cole and U.S. Patent No. 4,197,491 to Hagemann both appear to
teach a positively buoyant towed underwater vehicle. See column 3, lines 1-3, of Cole and column 3, lines
10-21, of Hagemann.
include a plurality of tow bodies based upon Lefebvre's teaching of a plurality of tow
buoys.
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree. Specifically, it is our opinion that there is no suggestion in
any of the applied prior art for a person of ordinary skill in the art at the time the
invention was made to have modified the towed vehicle of Spink to have positive
buoyancy. In that regard, while Lefebvre's tow buoys do have positive buoyancy,
Lefebvre does not teach or suggest using or making a towed underwater vehicle, such
as taught by Spink, positive buoyant since a buoy is designed to float on the surface of
the water and an underwater vehicle is designed to be beneath the surface of the
water.1 Thus, it is our view that the only suggestion for modifying Spink in the manner
proposed by the examiner to meet the above-noted limitations stems from hindsight
knowledge derived from the appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
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For the reasons set forth above, the decision of the examiner to reject claims 1
to 9 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 9 under
35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-2194
Application No. 09/594,532
Page 7
MARTIN LUKACHER
HYDROACOUSTICS INC
999 LEHIGH STATION ROAD
P O BOX 23447
ROCHESTER, NY 14692-3447
JVN/jg