Ex Parte Butters

Patent Trials and Appeals Board

Sep 25, 2013

12125125 - (D) (P.T.A.B. Sep. 25, 2013)

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.
12/125,125 05/22/2008 Robert C. Butters BBR100A US 3976
21133 7590 09/26/2013
VAN OPHEM & VANOPHEM, PC
REMY J VANOPHEM, PC
51543 VAN DYKE
SHELBY TOWNSHIP, MI 48316-4447
EXAMINER
OLSON, LARS A
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
09/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT C. BUTTERS
____________

Appeal 2011-011843
Application 12/125,125
Technology Center 3600
____________

Before WILLIAM V. SAINDON, NEIL T. POWELL, and JILL D. HILL
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011843
Application 12/125,125

2
STATEMENT OF THE CASE
Robert C. Butters (Appellant) appeals under 35 U.S.C. § 134 from a
final rejection of claims 1, 2, 4, 6-8, 11, 13-15, and 17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a trim member having a
configuration that operates to control the fluid flow path and direct fluid
water away from the hull of the watercraft.” See Spec., para. [0004]. Claim
1 illustrates the subject matter on appeal and is reproduced below.
1. An apparatus for use with a watercraft
comprising:
a trim member, said trim member having a
rear surface and a front surface;
said trim member including an upper surface
and a lower surface, said upper surface extending
between and connecting said front and rear
surfaces, said upper surface tapering downwards
toward said lower surface, as it extends from said
rear surface to said front surface;
a collecting surface disposed between said
front surface and said lower surface, said
collecting surface extending outwardly from said
lower surface, at least a portion of said collecting
surface spaced horizontally below said lower
surface to define a fluid discharge area; and
said upper surface, front surface and
collection surface cooperating to form an
uninterrupted fluid path wherein fluid flowing
along said upper surface flows on said front
surface to said collection surface and falls off said
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trim member at said discharge area such that said
collection surface causes fluid flowing downward
along the upper surfaces of said watercraft to fall
off said trim member such that said fluid does not
come in contact with the lower surfaces of said
watercraft below said trim member to prevent
unsightly streaking water stains.
EVIDENCE
The Examiner relies on the following evidence:

Boyer US 4,084,533 Apr. 18, 1978
Abe US 6,776,114 B2 Aug. 17, 2004

REJECTION
Claims 1, 2, 4, 6-8, 11, 13-15, and 17 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Boyer and Abe. Ans. 3.
ANALYSIS
The Examiner finds that Boyer’s Figure 6 discloses a rub rail trim
member 50 including a lower surface 58 configured to form a collection
surface having an arcuate cross-section that extends outwardly from the
lower surface and includes a discharge area. Ans. 3. The Examiner also
finds that Boyer discloses the trim member’s upper surface, front surface 54
and 56, and collection surface cooperating to form an uninterrupted fluid
path allowing fluid to flow from the upper surface along the front surface 54
and 56, and to the collection surface that collects fluid flowing over the trim
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Application 12/125,125

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member and discharges the fluid away from said hull at a discharge area.
Ans. 3-4.
The Examiner finds that Abe’s Figure 4b discloses a trim member 40
having a lower surface 46 with a bulbous collection surface spaced
horizontally below the lower surface and defining a discharge area allowing
water to flow away from a hull surface 14, and that Abe teaches adding a
bulbous portion to the lower surface of the Figure 4a embodiment, such that
its lower surface includes a bulbous collection surface. Ans. 4, 6.
The Examiner concludes that it would have been obvious, to one of
ordinary skill in the art at the time of the invention, to utilize Abe’s bulbous
collection surface on the lower surface of Boyer’s trim member, and that
Abe’s discharge area would have the expected result of directing water to
flow away from the watercraft hull. Ans. 5, 6.
Appellant argues that the water path flow over Boyer’s rub rail cannot
be the same as that of Appellant’s invention and therefore cannot obviate
Appellant’s invention, and that Boyer does not disclose a rub rail having a
collection surface disposed between its front surface and its lower surface,
wherein the collecting surface extends outwardly from the lower surface and
a portion of the collecting surface is spaced horizontally below the lower
surface to define a discharge area, such that Boyer fails to recognize the
problem of water draining over the rub rail and down the side of the hull and
fails to teach the claimed discharge area. App. Br. 11-12. Appellant goes on
to argue that neither Boyer nor Abe, nor the combination thereof, teaches a
rub rail causing fluid draining from the watercraft to flow down the upper
portion of the watercraft, dripping off at the rub rail instead of flowing down
the bottom side of the watercraft. App. Br. 19-20.
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The Examiner, however, finds only that Boyer discloses a lower
surface 58 configured to form a collection surface having an arcuate cross-
section that extends outwardly from the lower surface and includes a
discharge area. It is Abe that is found to teach the collecting surface
extending outwardly from the lower surface and spaced horizontally below
the lower surface to define a discharge area.
The language in claim 1 regarding fluid flow over the trim member is
a functional recitation. Functional recitations limit the structure defined by
an apparatus claim, insofar as the structure must be capable of performing
the recited function in order to satisfy the functional limitation. However,
where there is reason to conclude that the structure of the prior art is
inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). The Examiner found that at least Abe’s
discharge area would have the expected result of allowing water to flow
away from the watercraft hull as claimed. Ans. 6. Thus, the Examiner
found that the combination of Boyer and Abe would have been capable of
creating the claimed fluid flow path over the trim member. Appellant has
not provided any arguments convincing us that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
Appellant also argues that “[t]he solutions taught by each of the
references are directed to problems completely different than that described
in Appellant's invention” because Boyer and Abe are directed to problems
associated with rub rails being difficult to assemble, not with Appellant’s
stated problem of hull staining. App. Br. 14-15. Appellant then argues that
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one skilled in the art would have no basis for combining the teachings of
Boyer and Abe, because neither reference is directed to Appellant’s stated
problem of avoiding unsightly streaks and/or stains on a watercraft hull.
App. Br. 16.
These arguments rest on the incorrect assumption that a person of
ordinary skill in the art would look only to prior art directed to the same
problem. The fact that Boyer and Abe do not address the specific problem
Appellant endeavored to solve does not negate the fact that Boyer and Abe
disclose watercraft rub rails that include every element of the claimed
invention. To the extent that Appellant is alleging patentability based on
discovery of the source of a problem (i.e., runoff fluid staining watercraft
hulls), appellants alleging that they discovered the source of a problem must
provide evidence substantiating the allegation, either by way of affidavits or
declarations, or by way of a clear and persuasive assertion in the
specification. In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).
Appellant has not provided such evidence and we are therefore not
persuaded by these arguments.
Appellant further argues that combining the teachings of Boyer and
Abe would result in a rub rail that provides a protector strip mountable by a
limited number of steps to minimize outlay of time and material expense.
App. Br. 15. This argument erroneously looks to the problems solved by
Boyer and Abe rather than the structure of Boyer and Abe, and is therefore
not persuasive. That the combination of Boyer and Abe’s disclosures might
address some problems different than that the Appellant endeavored to solve
does not negate that Examiner’s determination that the combination would
meet the limitations of Appellant’s claims.
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Appellant questions whether it would be technically feasible to
combine the teachings of Boyer and Abe, because the resulting structure
might be incompatible with itself in terms of the objectives of each
reference. App. Br. 15-16. The test for obviousness, however, “is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant merely questions the feasibility of combining Boyer and Abe, and
does not explain why it would not be technically feasible to combine their
teachings or what the combined teachings of the references would have
suggested to those of ordinary skill in the art. We therefore are not
persuaded by this argument.
Appellant argues that Abe does not disclose where the rub rail cross
section of its Figure 4b is taken and whether the cross section shown in
Figure 4b is present throughout the length of the rub rail. App. Br. 16-17.
Even if Abe failed to teach that the cross section of Figure 4b extends
throughout the entirety of its rub rail, the claims do not recite that the
collection surface and discharge area exist at a specific area of the length of
the rub rail or over an entire length of the rub rail. This argument is
therefore not persuasive.
Appellant argues that Abe provides “not a single word of disclosure
with respect to the bulbous collection surface pointed to by the Examiner in
Figure 4b to propose to a person skilled in the art to combine this feature
with the teachings of Boyer.” App. Br. 16-17. Continuing this line of
reasoning, Appellant contends, “there is absolutely not a single word of
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enablement with respect to this bulbous section as to its purpose.” App. Br.
17. As such, Appellant contends that “the resulting combination does not
teach how to make and use the claimed invention . . . in order to solve the
problem experienced with the prior art.” App. Br. 18. However, Appellant
admits that “a reference need not be enabled to be prior art.” Id. As such,
we are not persuaded by Appellant’s line of reasoning at these pages.1
Appellant presents no separate arguments regarding claims 2, 4, 6-8,
11, 13-15, and 17. Claims 2, 4, 6-8, 11, 13-15, and 17 therefore fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We sustain the rejection
of claims 1, 2, 4, 6-8, 11, 13-15, and 17 under 35 U.S.C. § 103(a)2.
DECISION
We AFFIRM the rejection of claims 1, 2, 4, 6-8, 11, 13-15, and 17
under 35 U.S.C. § 103(a).
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).

AFFIRMED

hh

1 We note that Appellant does not argue the Examiner’s reason for
combination at these pages but rather argues the enablement of the prior art.
We do not address arguments not made.
2 Claim 15 depends from claim 12, which has been canceled. Claim 15 may
therefore additionally be indefinite under 35 U.S.C. § 112, second
paragraph.