Ex Parte Brown et al

Board of Patent Appeals and Interferences

Apr 30, 2008

10889624 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RALPH BROWN and MARIN SAVOV
____________

Appeal 2007-3431
Application 10/889,624
Technology Center 3600
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Decided: April 30, 2008
____________

Before WILLIAM F. PATE, III, HUBERT C. LORIN, and JENNIFER D.
BAHR, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from the final rejection of claims 1-10. These are the
only claims in the application. We have jurisdiction under 35 U.S.C. §§ 134
and 6.
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Application 10/889,624

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The claimed invention is directed to a boat hull which has two
channels allowing water flow through the channels from bow to stern. An
intermediate tunnel is juxtaposed between the two channels. A propulsion
unit having at least a propeller is contained within this intermediate tunnel.
This hull design is said to overcome difficulties when running in very
shallow water.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter:
1. A boat, comprising:
a. a hull having two channels allowing water flow
through the two channels substantially from bow to stern, and
an intermediate tunnel passing through only a portion less than
50% of the length from bow to stern,
b. a propulsion unit having at least a propeller contained
within the intermediate tunnel.

The references of record relied upon by the Examiner as evidence of
anticipation and obviousness are:
Higgins US 2,234,899 Mar. 11, 1941
Stuart US 3,626,894 Dec. 14 1971
Fehn US 4,091,761 May 30, 1978

Claims 1-10 stand rejected under 35 U.S.C. § 102 as being anticipated
by Higgins.
Claims 1-10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Fehn in view of Stuart.
FINDINGS OF FACT
The patent to Higgins discloses an air cushioned boat hull. The hull
bottom is provided with a pair of outer rails 7 and 8 at the forward part of the
hull, with the front end of rails at 9 and 10 converging toward the keel line
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well above the water line. The water line is shown in Figure 3. The rails 7
and 8 diverge with a smooth curvature so that their rear portions 11 and 12
lie adjacent and preferably parallel to the chines (Higgins, p. 1, col. 2, ll. 36-
45). The function of the channels provided between the rails is to catch the
frothy portion of the bow wake and to tuck it under the forefoot of the hull to
confine the aerated water so that practically none of the aerated water will be
lost until it reaches the mid-ship region of the boat. At the mid-ship region,
however, gaps 19 and 20 are provided so that the aerated water escapes
transversely from under the hull. (Higgins, p. 2, col. 1, ll. 23-40). Based on
this disclosure of Higgins, it is our finding that that Higgins does not
disclose two channels that pass substantially from bow to stern as required in
claim 1, nor does Higgins disclose a tunnel less than 50% of the length of
the boat and containing a propeller. While Higgins does disclose channels
formed by rails 7 and 8 extending approximately half the length of the hull,
these channels direct aerated water and do not contain propellers.
Stuart discloses that a “tunnel stern,” previously used in displacement
hulls, my also find utility in a planing boat hull. The propeller is placed in a
tunnel that opens to the transom end of the boat. The tunnel 10 is illustrated
in Figs. 1-5. A propeller 12 mounted on shaft 13 is supported in the tunnel
10. The tunnel gradually enlarges in cross-sectional area as it proceeds aft
towards propeller 12. (Stuart, col. 1, ll. 68-70).
Fehn discloses a modified tunnel hull boat in which there are
downward extending sponsons 20, 21 defining tunnels between inner walls
and the center rib 25 of the boat. (Fehn, col. 2, ll. 28-47). Center rib 25, in
the middle of the hull, is provided as a planing surface 36 so that the boat
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may plane on this surface at high speed. (Fehn, col. 2, ll. 48-56; col. 1, ll.
33-47).
PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002), cert. denied, 538 U.S. 907 (2003).
Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled
that a prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it.” Id.
A claimed invention is unpatentable if the differences between it and
the prior art are “such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966).
In Graham, the Court held that that the obviousness analysis is
bottomed on several basic factual inquiries: “[(1)] the scope and content of
the prior art are to be determined; [(2)] differences between the prior art and
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR at 1739.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
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need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id., at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.

ANALYSIS
We will not affirm the rejections on appeal. With respect to the
rejection under § 102 based on Higgins as the prior art evidence, we agree
with the Appellants that Higgins teaches that the flow of water through the
channels ends amidship where the water and entrained air exits the channels
transversely. Thus, Higgins does not disclose channels allowing water flow
through the two channels substantially from bow to stern, as required in
claim 1. We further agree with the Appellants that Higgins does not disclose
at least one channel near and substantially parallel to the tunnel, inasmuch as
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the channels of Higgins eject their contents and thus functionally terminate
amidships.
Turning to the obviousness rejection, again we are in agreement with
the Appellants that it would not have been obvious to combine the Stuart and
Fehn disclosures. We agree that the purpose of the bottom surface 36 of the
center rib 25 of Fehn is to provide a planing surface. If the tunnel from
Stuart were placed therein there would be practically no planing surface
anywhere on the Fehn boat hull, and its planing nature would be
compromised. Therefore, we agree with the Appellants that it would not
have been obvious to place a tunnel as taught by Stuart into the boat hull of
Fehn.
CONCULUSION
The rejection of claims 1-10 under 35 U.S.C. § 102 is reversed. The
rejection of claims 1-10 under 35 U.S.C. § 103 is reversed.
REVERSED

hh

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