Ex Parte Chen

Board of Patent Appeals and Interferences

Jul 26, 2010

11524096 (B.P.A.I. Jul. 26, 2010)

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.
11/524,096 09/20/2006 Wen-Yun Chen TACH-001-US 7431
61215 7590 07/27/2010
DAVID I. ROCHE
BAKER & MCKENZIE LLP
130 EAST RANDOLPH DRIVE
CHICAGO, IL 60601
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
07/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WEN-YUN CHEN
____________

Appeal 2009-007205
Application 11/524,096
Technology Center 3600
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007205
Application 11/524,096

2
STATEMENT OF THE CASE
Wen-Yun Chen (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 6-9, 11-15, and 17-19 under
35 U.S.C. § 102(b) as being anticipated by Azima (US 5,937,777, issued
Aug. 17, 1999). Claims 1-5, 10, and 16 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to boat hull designs. Spec.,
para. 1.
Claim 19, reproduced below, is representative of the claimed subject
matter.
19. A hull structure for a water vessel comprising:
a hull body including two lateral flanks linked by a
bottom surface;
a keel extending along the centerline of the bottom
surface and protruding therefrom below a water plane;
at least two propulsion compartments provided in bulges
protruding below the bottom surface of the hull body and
arranged between said two lateral flanks of the hull body and
symmetrically with respect to the centerline of the bottom
surface separated by the keel, each of said bulges having a
streamlined profile and each bulge extending into a tapered tail
end;
wherein the bottom surface of the hull body includes
concave portions extending lengthwise along the keel for
receiving said at least two propulsion compartments
symmetrically at two sides of the keel on the bottom surface of
the hull body; and
wherein each propulsion compartment lodges a
propulsion engine located below the concave portions of the
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Application 11/524,096

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bottom surface of the hull body and between said two lateral
flanks of the hull body such that the center of inertia of the
vessel is displaced downward and toward the middle of the hull
body.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
At issue in this appeal is whether the Examiner erred in finding that
Azima anticipates the subject matter of claim 19. Appellant does not present
any separate arguments for claims 6-9, 11-15, 17, and 18, which depend
from claim 19. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2009), claims 6-9, 11-15, 17, and 18 stand or fall with representative claim
19.

DISCUSSION
Appellant argues that in contrast to the propulsion compartments of
the present invention, which are always under the water plane, the pods of
Azima may be clear of the water during normal operation. App. Br. 8; see
Azima, col. 5, l. 66 to col. 6, l. 3; col. 6, ll. 49-53. This argument does not
convince us that the rejection should be reversed, because, as correctly
pointed out by the Examiner (Ans. 5), claim 19 does not require that the
bulges and propulsion compartments always be under water. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
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Appellant’s argument that Azima is not “the same type of monohull
craft as the one [described] by the present invention” (App. Br. 8) also is not
convincing. First, claim 19 does not require a “monohull” structure.
Moreover, in any event, Azima’s title of invention “MONOHULL
WATER-BORNE CRAFT” and repeated use of the term “monohull” to
describe the craft (e.g., col. 2, l. 1; col. 5, ll. 7 and 19; col. 6, l. 9; claims 1-
47) belie any argument that a person of ordinary skill in the art would not
consider the craft described by Azima to be a “monohull” craft.
Furthermore, the protrusion of pods 8 of Azima’s craft from the main
portion of the hull is consistent with a monohull structure as described by
Appellant, inasmuch as Appellant’s craft likewise has bulges 112 defining
propulsion compartments 114, protruding from a main portion (lateral flanks
105 and bottom surface 108). Azima, e.g., figs. 1-11, 13C, 19, 20, 32-34;
Appellant’s figs.1-6.
Appellant’s argument that the Examiner’s rejection does not address
the “concave portions” limitation of claim 19 (Reply Br. 1) is incorrect. The
Examiner found that Azima describes concave portions of the bottom
surface above the tail ends of the bulges in Figures 1 and 2. Ans. 5; Final
Rej. 3. Appellant has not pointed out why that finding is in error.
Appellant’s argument that the Examiner does not show any evidence
showing that Azima discloses a keel (Reply Br. 1) is not convincing. The
Examiner found that Azima discloses “a keel (centerline ridge).” Ans. 3.
Azima explains that a craft “at least substantially without a ballast keel is
one in which the ballast keel represents less than 25% of the total weight of
the boat.” Azima, col. 3, ll. 8-10. Consequently, Azima’s disclosure that the
invention is “at least substantially without a ballast keel” does not support
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Appellant’s argument that Azima lacks a keel, as called for in claim 19,
which does not require a “ballast keel.” Indeed, Azima explicitly discloses
that the main hull may be formed with a “fin keel.” Azima, col. 5, ll. 37-39;
col. 6, ll. 20-22.
Appellant asserts that the weight and balance of Azima’s craft can be
distributed by means of propulsion means, active ballast, etc. carried by the
pods, and maintained separately, and that such distribution is different from
the present invention. Reply Br. 3. Appellant has not explained, however,
how such distinction relates to any claimed limitation of claim 19. See In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the game is
the claim”). Thus, Appellant’s assertion does not convince us the rejection
of claim 19 should be reversed. To the extent that Appellant may be
alluding to the fact that Azima describes means for moving the pods (see,
e.g., Azima, figs. 20-34; col. 8, l. 33 to col. 9, l. 26) to redistribute the weight
and balance of the vessel, rather than providing the engines in a fixed
position, we note that claim 19 does not exclude means for adjusting the
weight and balance of the vessel.
Appellant also points out that Azima’s pods may carry propulsion
means, etc. so as to “provide optimally distributed ballast positioned remote
from the centre line of the craft,” and that Appellant’s invention discloses
the propulsion compartments entirely lodging the engines below the bottom
surface of the hull, “which displaces the center of inertia of the boat
substantially downward so that the propulsion compartments can move the
center of inertia of the vessel toward the middle of the hull body.” App. Br.
9. We do not discern in those descriptions of Azima’s invention and
Appellant’s invention any argument as to why Azima’s craft does not
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anticipate the subject matter of claim 19. Azima describes a craft having
pods 8 extending downwardly below the bottom of the main portion of the
hull, and propulsion units and their associated fuel tanks accommodated in
the pods, providing “optimally distributed ballast positioned remote from the
centre line of the craft, i.e., at or near to the beam extremities, to increase
inertia about the longitudinal axis of the craft and thereby reduce roll angle.”
See, e.g., Azima, col. 6, ll. 31-39; figs. 1-9 and 32-34. The location of heavy
equipment, such as the propulsion units and associated fuel tanks, below the
main portion of the hull of the vessel will displace the center of inertia of the
vessel downward and toward the middle of the vessel, as claimed. See
Spec., para. 32 and App. Br. 9, noting that the propulsion compartments
lodging the engines below the bottom surface of the hull will achieve such
result.

CONCLUSION
Appellant has not convinced us that the Examiner erred in finding that
Azima anticipates the subject matter of claim 19.

DECISION
The Examiner’s decision is affirmed.
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) (2007).

AFFIRMED

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Application 11/524,096

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hh

DAVID I. ROCHE
BAKER & MCKENZIE LLP
130 EAST RANDOLPH DRIVE
CHICAGO, IL 60601