Ex Parte Falkman

Patent Trial and Appeal Board

Feb 6, 2017

12596675 (P.T.A.B. Feb. 6, 2017)

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.
12/596,675 07/06/2011 Fredrik Falkman 16068-12068 3557
90042 7590 02/08/2017
MANET T T NFT TFR PT T C EXAMINER
1725 I Street, N.W. VASUDEVA, AJAY
Suite 300
Washington DC, DC 20006 ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
melcher @ mdslaw .com
j effsmelcher @ att. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIK FALKMAN
Appeal 2015-003100
Application 12/596,675
Technology Center 3600
Before: MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 12—19 and 21—23.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 As the rejection of claims 12—23 under 35 U.S.C. § 112, second paragraph
has been withdrawn, claim 20 is no longer under rejection. Ans. 5.
Appeal 2015-003100
Application 12/596,675
CLAIMED SUBJECT MATTER
The claims are directed to a naval rescue vessel. Claim 12,
reproduced below, is illustrative of the claimed subject matter:
12. A naval rescue vessel comprising:
a propulsion unit powered by a water jet;
a hull unit; and
an interconnection,
wherein said hull unit is at least partly flexible, and
wherein said propulsion unit is arranged to form a rigid
unit, and
wherein said hull unit and said propulsion unit are
interconnected by said interconnection to form said naval rescue
vessel which is constructed and arranged to be handled or
maneuvered by a single rescuer, and
wherein said interconnection is arranged to provide a
releasable connection of the units, said hull unit is at least partly
flexible, said hull unit comprises a central portion with upper
bottom surfaces shaped to correspond to the shape of a
corresponding outer surface of said propulsion unit to provide
contact between the propulsion unit and the upper bottom
surfaces when interconnected to form a naval rescue vessel and
thereby providing for stability/rigidity of the vessel.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Robbins et al. US 5,184,564 Feb. 9, 1993
(“Robbins”)
Beaulac et al. US 5,746,150 May 5, 1998
(“Beaulac”)
Miller US 6,135,047 Oct. 24, 2000
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Application 12/596,675
REJECTIONS
Claims 12—14, 16, 17, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miller.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Miller and Robbins.
Claims 18, 19, and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller and Beaulac.
OPINION
Claims 12—14, 16, 17, and 21
The Examiner finds that Miller teaches all of the features of sole
independent claim 12, with the exception of the “propulsion unit as forming
a rigid unit” which the Examiner takes Official notice “is old and well
known in the art.” Final Act. 3. The Examiner determines “it would have
been obvious for a person skilled in the art at the time of the invention to
make the propulsion unit bottom as a rigid structure comprising reinforced
fiberglass.” Id.
Appellant first argues that the claim requires a “naval rescue vessel
which is constructed and arranged to be handled or maneuvered by a single
rescuer” while Miller “discloses an add-on second hull for a single user
personal watercraft so that the personal watercraft with the second hull
attached can be used by multiple riders.” App. Br. 4.
Appellant’s argument is not commensurate with the scope of claim
12. The claim does not limit the number of riders that can “use” the vessel.
Further, as shown by the Examiner, Miller discloses that “the handling/
maneuvering of the watercraft is undertaking only by a single operator/
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Application 12/596,675
driver, as evidenced by presence of a single handle.” Ans. 7. Thus, we are
not informed of error in the Examiner’s rejection.
Appellant next argues that “[t]he claimed propulsion unit (100) is not
a personal watercraft and cannot even be used as a watercraft,” while “the
Miller watercraft already has a hull and is a fully operational craft without
the added second hull.” App. Br. 4.
Claim 12 recites “[a] naval rescue vessel comprising: a propulsion
unit powered by a water jet. . . [and] arranged to form a rigid unit. . . when
interconnected to form a naval rescue vessel,” among other features. The
transitional term “comprising”, which is synonymous with “including,”
“containing,” or “characterized by,” is inclusive or open-ended and does not
exclude additional, unrecited elements or method steps. Mars Inc. v. H.J.
Heinz Co., L.P., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Further, “[t]he word
‘comprising’ transitioning from the preamble to the body signals that the
entire claim is presumptively open-ended.” Gillette Co. v. Energizer
Holdings Inc., 405 F.3d 1367, 1371-73 (Fed. Cir. 2005). Thus, this
argument is also not commensurate with the scope of the claim. Nothing in
the claim would appear to exclude the claimed propulsion unit from being
“used as a watercraft.” See also, Ans. 7.
Appellant emphasizes the claimed rigidity of the propulsion unit, but
no evidence is offered as to why this would exclude the propulsion unit from
being “used as a watercraft” as in Miller. The Examiner found that it was
“old and well known in the art” to use “rigid materials such as reinforced
fiberglass” for a hull structure for a watercraft which Appellant does not
contest. Final Act. 3; see also, Ans. 7. Thus, we are not informed of error in
the Examiner’s rejection.
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Application 12/596,675
Appellant also argues that “the propulsion unit is arranged to be fitted
into the hull unit by horizontal insertion into a recess (interlocking device)”
which is different from Miller. App. Br. 5. Claim 12 requires “an
interconnection” “arranged to provide a releasable connection of the units,”
but does not otherwise limit what is required by the interconnection. As
claim 12 does not require connection of the units by “horizontal insertion
into a recess,” Appellant’s argument is not commensurate with the scope of
the claim. Thus, we are not informed of error in the rejection of claim 12.
As claims 13, 14, 16, 17, and 21 are not separately argued they fall
with claim 12. See 37 C.F.R. § 41.37(c)(l)(vii).
Claim 22
Claim 22 depends from claim 12 and further requires “an open able,
sealable box” among other features.
Concerning claim 22 Appellant states: “The Examiner admits that
Miller does not disclose the claimed propulsion unit having an openable,
sealable box enclosing the electrical components. For this additional reason,
the Section 103 rejection should be withdrawn.” App. Br. 5.
The Examiner found that the claimed “sealable box” “is well known
in the marine art” and that “it would have been obvious for an artisan to
provide the propulsion unit of Miller with a watertight openable box.” Final
Act. 4.
Thus, though Appellant’s statement is true it does not inform us of
error in the Examiner’s rejection because it does not address the substance of
the rejection or identify errors in the rejection.
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Application 12/596,675
Claim 15
Claim 15 depends from claim 14 which depends from claim 13.
These claims recite:
13. A naval rescue vessel according to claim 12, wherein said
interconnection comprises a flange device on one of the units and
a recess device on the other unit.
14. A naval rescue vessel according to claim 13, wherein said
recess device at least partly presents a wedge shaped cross-
sectional area and that said flange device presents an interlocking
means arranged to interlock within said wedge shaped cross-
sectional area.
15. A naval rescue vessel according to claim 14, wherein the
interlocking means does not extend along all of said flange
device.
The Examiner determined that though Miller taught the claimed
interlocking means and flange device of claims 13 and 14, it did not teach an
“interlocking means [that] does not extend along all of said flange device.”
Final Act. 4. The Examiner found that this feature is taught by an eye bolt
23 in Robbins and that the combination would be obvious. Id.', see also,
Robbins col. 2:54—57 and Figure 2.
Appellant argues that “Robbins, does not disclose [an interlocking
means with] a ‘wedge shaped cross-sectional area’” and that the
combination does not provide the claimed “interlocking means [that] does
not extend along all of said flange device.” App. Br. 6. Appellant further
points to the Specification for examples of the disclosed interlocking means
with a recess having a wedge shaped cross-sectional area and a flange with a
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Application 12/596,675
corresponding shape. Id. (citing e.g., Specification 5,11. 11—20 and Fig. 5
reference no. 223A).
The broadest reasonable interpretation of a “means or step plus
function” limitation in a claim under 35 U.S.C. 112, sixth paragraph, is the
structure, material or act described in the specification as performing the
entire claimed function and equivalents to the disclosed structure, material or
act. In re Donaldson Co., 16 F.3d 1189, 1194 (Fed. Cir. 1994) (en banc).
Accordingly, the eye bolt 23 of Robbins is not a “flange device [with]
an interlocking means arranged to interlock within said wedge shaped cross-
sectional area” in accordance with teachings of the Specification. See e.g.,
Specification 5,11. 11—20 and Fig. 5 reference no. 223A. Nor can the eye
bolt 23 be considered an “interlocking means that does not extend along all
of said flange device” as required by claim 15. For this reason we do not
sustain the Examiner’s rejection of claim 15.
Claims 18, 19, and 23
Appellant argues that claims dependent claims 18, 19, and 23 are
allowable over Miller because “[t]here is no reason for the second hull of
Miller to have multiple sealed enclosures because the watercraft of Miller is
a fully operational, floating craft.” App. Br. 7.
The Examiner found that:
It would have been obvious for a person skilled in the art to
provide the hull unit of Miller with a plurality of isolated
portions, each one sealingly enclosing an individual volume, as
taught by Beaulac et al. Having such an arrangement would have
provided extra structural strength and storage space within the
hull unit. Further, it would have been obvious for an artisan to
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Application 12/596,675
use welds at the bulkheads in order to provide watertight
connection at the seams.
Final Act. 5.
The Examiner’s reasoning addresses why a fully operational, floating
craft would have multiple sealed enclosures and Appellant’s argument does
not explain why the Examiner’s reasoning is deficient. Thus, we are not
informed of error in the rejection.
DECISION
The Examiner’s rejection of claims 12—19 and 21—23 is affirmed.
The Examiner’s rejection of claim 15 is reversed.
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)(l)(iv).
AFFIRMED-IN-PART
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